Does it fall into the scope of trademark use required in the Chinese Trademark Law when the trademark is marked on export products? Centering on the question, a German firm called Aldi GmbH & Co. KG had a rift with Yijia Import and Export Trade Co.Ltd. from Zhangjiagang, Jiangsu Province.
No. 6261353 trademark "CRESTON" (trademark in dispute) was filed for registration by Yijia Company on September, 2007 and would be approved on March, 2010, certified to be used on Class 9 products such as gauges. In March 2015, Aldi filed for revocation of the trademark in dispute to the former Trademark Office (TMO) on the ground that the trademark was not in actual use for three consecutive years from March, 2012 to March, 2015 (the designated period). After examination, TMO rejected Aldi's request. In January 2016, Aldi took the issue to the former Trademark Review and Adjudication Board (TRAB).
In response, Yijia furnished evidences of trade transactions, supplier contracts, customs declaration documents and exhibition attendance documents to prove actual use of the trademark in dispute in the designated period. TRAB held that the materials submitted by Yijia has formed a chain of evidences, which can prove that it has used the trademark in dispute on the approved products in the designated period. In November 2016, TRAB decided to uphold the trademark in dispute.
The disgruntled Aldi then brought the case to Beijing IP Court and would be denied later. The company then appealed to Beijing High People's Court, claiming that the materials submitted by Yijia Company could only prove it produced products with "CRESTON" trademark outsourced for manufacturing by foreign clients and could not prove the products marked with the trademark in dispute were sold at home.
After hearing, Beijing High held that, although the documented evidences reveal the products marked with the trademark in dispute were for export eventually, Yijia had true intent to use the trademark in dispute and it made the trademark known by the public through advertisement, meeting the requirement of trademark use for publicity. Meanwhile, setting up the system of revocation of the trademark not used for three consecutive years is to activate trademark resources and refresh idle trademarks. The ultimate purpose is to push the owners to actively use trademarks instead of punishing the trademark owners. Based on nature of export trade, Yijia's relevant products cannot be exported if the trademark in dispute is revoked, which will make the trademark in dispute fail to be maintained though the company's real use of the trademark. The result will run counter to the policy of trade encouragement and the purpose of setting up the system of revocation of the trademark not used for three consecutive years.
In this connection, Beijing High rejected Aldi's appeal and affirmed the IP court judgment.
Source: China Intellectual Property News, CNIPA
