There are a total of 45 classes in the international classification of goods and services for trademark registration in China, covering almost all the products or services required for production and operation in the market. Recently, the Beijing Intellectual Property Court heard an administrative dispute case involving Class 35 service trademarks.
The plaintiff, Wisdom (Rizhao) Garden Machinery ***, is the owner of the trademark No. 6436450 "Wisdom de Wild and Figure" (hereinafter referred to as the Disputed Trademark). The defendant, the State Intellectual Property Office, revoked the Disputed Trademark on the grounds that the evidence on record failed to form an effective chain of evidence to prove that the Disputed Trademark had been used as a trademark in Class 35 of services such as "import and export**, sales for others" (hereinafter referred to as the "Disputed Services") between January 15, 2018 and January 14, 2021 (hereinafter referred to as the "Designated Period").
The plaintiff believed that the evidentiary materials submitted by the plaintiff could prove that the plaintiff had true, lawful and effective use of the disputed trademark in the disputed services within a specified period of time, and filed an administrative lawsuit with the Beijing Intellectual Property Court, requesting that the respondent be revoked in accordance with the law and that the defendant be ordered to make a new decision.
After the trial, the Beijing Intellectual Property Court rendered a judgment and found that the defendant State Intellectual Property Office's conclusion that the disputed trademark did not constitute the use of the disputed services was correct and should be upheld. The judgment rejected the plaintiff Willed (Rizhao) Garden Machinery ***'s claim.
After trial, the Beijing Intellectual Property Court held that:The focus of the dispute in this case is whether the Disputed Trademark has been used in a true, lawful and effective commercial manner in the disputed services within the specified period.
Article 49 of the Trademark Law of the People's Republic of China provides
If a registered trademark becomes the generic name of the goods approved for use or is not used for three consecutive years without justifiable reasons, any unit or individual may apply to the Trademark Office for cancellation of the registered trademark.
The exclusive right of a registered trademark is limited to the trademark approved for registration and the goods or services approved for use. The registration of a trademark cannot be maintained only if the use is outside the scope of the approved use of goods or services. Therefore, the trademark owner should submit relevant evidence of the use of the disputed trademark on the goods or services approved for use.
The main purpose of Class 35 services is to assist others in the operation or management of their business, in the management of their business activities or business functions, and in providing others with advertising to the public through various means of communication. The most important features of this type of service are:The relevant services are provided to others, not for the relevant acts that the right holder's own business needs to engage in. Category 35 "Selling for others" refers to providing specific advice, planning and consulting services to help others increase the sales or demand of goods or services in the marketThe simple act of selling goods to consumers' own goods or services, or selling other people's goods or services to earn the price difference, does not belong to the scope of selling services for others.
In this case, all the evidence submitted by the plaintiff in the administrative procedure and the evidence submitted in the litigation only showed the logo of the Disputed Trademark in the self-made contracts, purchase orders, order confirmation letters and commercial invoices issued by the plaintiff, and the display form was relatively simple, and the authenticity was doubtful, which was insufficient to prove the true use of the Disputed Trademark within the specified period in the absence of other objective evidence. In addition,The above-mentioned evidence submitted by the plaintiff can only prove that it has export behavior, and it is not sufficient to prove that the plaintiff has engaged in services such as providing specific advice, planning, and consulting to help others increase the sales or demand of goods or services in the market, nor is it sufficient to prove that the plaintiff has engaged in import and export services to help others increase sales. The Disputed Trademark displayed at the top of the Plaintiff's official website in Exhibit 3 could not prove that it was related to the Disputed Service, nor did it show the time of formation. The logo of the Disputed Trademark displayed in Exhibit 4 of the Plaintiff's Litigation cannot prove that it is related to the Disputed Service. Combined with the booth advertising slogan in Exhibit 4, the plaintiff's product catalog and promotional content in Exhibit 5, and the plaintiff's registration of No. 41702499" on goods such as "lawn cutters, thick stem grinders, and grinders" in Exhibit 7
The fact of the trademark cannot prove that the above evidence is the actual use of the disputed trademark in the disputed service. Therefore, the evidence on record was insufficient to prove that the Disputed Trademark had made true, lawful and effective commercial use of the Disputed Services during the designated period.
In recent years, a large number of applications for trademark registration have emerged in Class 35 services, accounting for the highest number of applications for all classes of goods and services. One of the reasons for the huge number of applications for Class 35 trademarks is the misunderstanding that there is a misunderstanding among the public about the "omnipotence theory" of Class 35 trademarks. There are a large number of comments on the Internet that the trademark in Class 35 is a "universal trademark", which leads many operators to blindly apply for trademark in the case of misunderstanding of the trademark in Class 35, which not only causes a waste of administrative and judicial resources, but also brings the cost of trademark maintenance and the legal risk of trademark cancellation or invalidation.
In this case, the plaintiff applied for the registration of the Disputed Trademark in Class 35 services, but the evidence submitted by the plaintiff did not reflect the characteristics of Class 35 services "for others", and some of the evidence even reflected the content of the plaintiff's publicity and promotion for itself.
On 7 December 2022, the China National Intellectual Property Administration (CNIPA) issued the Guidelines on the Application for Registration and Use of Class 35 Service Marks, in order to enable relevant market entities to correctly understand the connotation and extension of Class 35 service items and to reasonably apply for trademark registration.
Class 35 services mainly include services related to the management, operation, organization and administration of business of commercial or industrial enterprises, as well as advertising, marketing and ** services.
The main purpose of Class 35 services is to assist others in the operation or management of their business, in the management of their business activities or business functions, and in providing others with advertising to the public through various means of communication. The most important feature of this type of service is that the relevant service is provided to others, rather than the relevant acts that the right holder needs to engage in for its own business. General types of commodity production enterprises that only manufacture or sell their own goods as their business scope are not required to apply for registered trademarks for related services in Class 35, and their sales of their own goods are not regarded as such services.
For advertising companies, planning companies, business management consulting services, etcMarket entities that are indeed engaged in Class 35 service items should do a good job of retaining evidence after applying for registration of Class 35 service marks, so as to cope with the risk of the trademark being revoked.
Specifically, the following four points should be noted:
The service contract should clearly stipulate the content of the service and reflect its own trademark logo.
To standardize the issuance and custody of invoices, fill in the trademark name or trademark number at the same time as filling in the service name, and the service content, time, and amount of the invoice or payment voucher should be able to correspond one by one.
Pay attention to the retention of evidence of the promotion of the service mark through the Internet, newspapers, etc., and try to choose notarization or timestamp authentication when collecting evidence.
If the trademark logo is the same as the enterprise trade name, it can be distinguished by marking " " in the upper right corner of the logo when used as a trademark.
Class 35 service marks are not "universal trademarks", and market operators should rationally understand the characteristics and connotations of such service items, apply for them as needed, and actively preserve evidence of use, so that Class 35 registered trademarks can better play their functions.
*: Intellectual Property Beijing.
Editor: Sharon