Evidence Collection is the first step.
The aim is to collect relevant facts, evidence and prepare the rights holder for right protection actions. Trademark evidence collection is the investigation on the status of a specific trademark for the needs of counterfeit crackdowns or administrative procedures (including but not limited to trademark dispute, opposition review, 3-year non-use cancellation and invalidation).
Changzhou RJ Wood Company (hereinafter referred to as “RJ Wood”) applied the registration of a trademark (hereinafter referred to as “the disputed mark”) in 2004, designated to the goods of “wood, plywood, three-ply board, floor, fiberboard, resin compound board and wood floor” under Class 19. The disputed mark passed the preliminary examination and was announced in 2006. The disputed mark is identical with the well-known mark in Chinese (hereinafter referred to as “the cited mark”) owned by a famous cosmetic brand (hereinafter referred to as “FCB”), though designated to goods completely different from cosmetics FCB is famous for.
Besides, having entered the Chinese market in the 1980’s, FCB had developed their business in China for 20 years up to the time the disputed mark was applied. Making the cited trademark and the trade name of the FCB reach a well-known status. Given the uniqueness and high reputation of the cited trademark of FCB, RJ Wood obviously applied the disputed mark to take advantage of the well-known trademark.
The FCB filed an opposition and an opposition review against the disputed mark, but due to a lack of evidence, the claims of the FCB were not supported by CTMO and TRAB, and the disputed mark received approval for registration.
In the period of administrative litigation, the FCB instructed HFG to perform a trademark investigation into RJ Wood. It was found that RJ Wood’s business license was cancelled as early as March, 2006. The cancellation date was 6 months’ earlier than the announcement date (Sep, 2006) when the disputed mark passed preliminary examination. HFG acquired documents on the basic information of RJ Wood from the local AIC, and submitted them to the court (the case is still in trial).
In fact, if the investigation was carried out earlier and evidence on the cancellation of RJ Wood’s business license was submitted in the opposition period, CTMO would have had supported FCB’s claim. Given the cancellation of RJ Wood’s business license and its failing to appoint other civil entities to perform inherited reply in the due period (RJ Wood didn’t reply either in the opposition period or in the opposition review period), it could be deduced that the opposed party terminated or relinquished the right to the disputed mark, which could be further concluded that the right holder of the disputed mark no longer existed.
Therefore, CTMO would have supported FCB’s claim. To acquire cross-class protection, the opposer has to prove that its owned mark has reached the wellknown status before the application of the disputed mark, this is very difficult.
By comparison, it is quite easy to find and prove that the opposed party no longer has operation qualifications. With strong evidence, there is no need to proceed with an opposition review or administrative litigation, and in this case the rightprotection expenses could have been greatly reduced.