The Beijing High Court has confirmed that a single, symbolic use of a trademark for the mere purpose of maintaining its registration could not protect the mark against cancellation.

Facts

General Mills is a US multinational company that manufactures and markets branded consumer goods sold through retail stores. The company markets many well-known brands, such as Betty Crocker, Yoplait, Colombo, Totino's, Pillsbury, Green Giant, Old El Paso, Häagen-Dazs, Cheerios, Trix and Lucky Charms. Its brand portfolio includes more than 89 other leading US brands and numerous category leaders around the world.

On March 31 2000 a local caterer in Zhongshan, Guangdong Province, filed an application for the registration of the trademark depicted below ('Wanchai Ferry' in Chinese) with the China Trademark Office (CTMO) for services in Class 42 ("café, cafeteria, restaurant, bar, fast-food restaurant, etc"):

Click here to view image.

The trademark was approved for registration on June 21 2001. On August 13 2009 the trademark was assigned to a natural person named Cheng Chao.

On August 21 2009 General Mills applied for cancellation of the trademark on the grounds that it had not been used for three consecutive years (under Article 44.4 of the Trademark Law 2001) – that is, for the period from August 21 2006 to August 20 2009.

On October 17 2011 the CTMO issued a cancellation decision in favour of General Mills, finding Cheng's evidence of use invalid. On December 5 2011 Cheng appealed to the Trademark Review and Adjudication Board (TRAB), which upheld the CTMO's cancellation decision on June 24 2013. The TRAB found that the evidence adduced by Cheng failed to prove that the mark had been put into actual commercial use in respect of the designated services.

Cheng appealed to the Beijing Number 1 Intermediate Court and on April 18 2014 the court overturned the TRAB decision. General Mills then appealed to the Beijing High Court.

Decision

The Beijing High Court held that the evidence adduced by Cheng was flawed and insufficient to prove that the trademark had been put into genuine and effective commercial use in respect of the designated services during the specified three-year period. The court further found that the fact that Cheng had registered more than 50 trademarks that were either identical or similar to well-known third-party trademarks indicated that it was highly unlikely that Cheng had filed those trademarks with the intention of putting them into actual use. The evidence of use adduced by Cheng suggested that it was a single, symbolic use for the mere purpose of maintaining the trademark registration. The court therefore overturned the first-instance decision and upheld the TRAB decision.

The Beijing High Court thus took into account:

  • the maliciousness of the registrant, which was indicated by the fact that he had filed more than 50 trademarks that were either identical or similar to well-known third-party trademarks; and
  • the flawed evidence of use, which could not prove the genuine commercial use of the mark.

The court confirmed that use of the trademark was purely symbolic for the purpose of maintaining its registration and did not reflect the registrant's real intention to use the mark. The court thus ruled that such use could not protect the mark against cancellation.

For further information on this topic please contact Mingming Yang or Nan Jiang at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email (yangmingming@wanhuida.com or jiangnan@wanhuida.com). The Wan Hui Da Law Firm & Intellectual Property Agency website can be accessed at www.wanhuida.com.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.