1. Introduction

(1) According to the instructions of Strellson AG, we filed a non-use cancellation against the subject mark owned by Huang Ruilin.

(2) The Trademark Office made its decision on the non-use cancellation, by which the registration of the subject mark is maintained.

(3) We made counter-arguments in the review filed before the Trademark Review and Adjudication Board (hereinafter referred to “TRAB”). Our counter-arguments are summarized as the following:

      A. The use by Assignee occurred before the recordal of the assignment should not be regarded as valid use.

      B. There is no evidence proving the license relationship between the registrant and the user.

      C. The use proofs cannot compose a complete chain of evidence proving the actual and valid use of the subject mark.

      D. All the use proofs are only related to goods in sub-class 2501. They should not be regarded as use proofs on other different sub-classes in Class 25.

(4) The TRAB supported all our above counter-arguments and cancelled the registration of the subject mark.

(5) The registrant of the subject mark filed an appeal before First Intermediate Court of Beijing. We attended the hearing as a third party. In the hearing, in addition to insisting our counter-arguments in the review, we also made counter-arguments against the use proofs newly submitted in the appeal.

(6) The Court of first-instance cancelled the TRAB’s review decision. In the Judgment, the Court did not comment on the use proofs submitted in the review procedure, but only made comment on the use proofs newly submitted in the appeal. Moreover, the Court held that the use proofs related to goods in sub-class 2501 are sufficient to maintain the registration of the subject mark on the other different sub-classes in Class 25.

      In consideration of the defects in the Court’s Judgment in finding of facts and appliance of law, we suggested our client filing a further appeal before Beijing Higher Court.

(7) We attended the hearing of second-instance. We further pointed out the defects in the Judgment made by the Court of first-instance. We made strong counter-arguments to challenge the accuracy and validity of the use proofs. For instance, we claimed that notarization made in Hong Kong does not prove that the invoice is a true and accurate copy of the original. It only states that “The provider is responsible for the content of the document”. All our counter-arguments are completely accepted by the Court of second-instance.

(8) The Court of second instance overthrew the Judgment of first-instance and maintained the TRAB’s review decision. This means the registration of the subject mark is cancelled. The subject mark no longer holds any bar for our client’s younger mark.

2. The Significance of the Case.

(1) The Courts of first instance and second instance are cautious in canceling the registration of a registered mark. Submission of new evidences in litigation procedure is acceptable.

(2) The use by Assignee occurred before the recordal of assignment is not regarded as valid use.

(3) If license relationship between registrant and producer/distributor is not proved, the use by the later is not regarded as valid use by the registrant.

(4) The buying and selling between Licensor and Licensee is not regarded as valid use of the mark.

(5) The use on specific goods is insufficient to maintain registration of the mark on dissimilar goods in the same class.




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