Cancellation review of 3D TM
How to Strengthen the Evidence of Use to Support a 3D Trademark Involved in a Non-use Cancellation Action
Co-Author: Bob Zhang, Joffy Li
Case No.:
First instance: Administrative Judgment No. 2595 [2018], First, Administrative Division, 73, Beijing Intellectual Property Court.
Second instance: Administrative Judgment No. 4124[2019], Final, Administrative Division, Beijing Higher People’s Court.
Case Brief:
DIAGEOBRANDS B.V. (hereinafter as “DIAGEO BRANDS”) is the owner of the trademark No.5876007 (hereinafter as the “Disputed Trademark”) which was filed on January 29, 2007, as a three-dimensional trademark and approved for use in goods such as whisky in Class 33.
Shantou PaiSiDun Wine Co., Ltd. (hereinafter as“PaiSiDun Co.”) applied with the Trademark Office for the cancellation of the Disputed Trademark on the ground that it was not used for three consecutive years without good reasons during the period from March 14, 2013, to March 13, 2016 (hereinafter as the “Prescribed Period”). The Trademark Office issued Decision [2016] No. Y010059 (hereinafter as the “Cancellation Decision”) and upheld the registration of the Disputed Trademark on all the approved goods.
PaiSiDunCo. was not satisfied with the Cancellation Decision and filed an appeal with the Trademark Review and Adjudication Board (hereinafter as the “TRAB”), requesting the cancellation of the registration of the Disputed Trademark. On November 15, 2017, the TRAB issued the decision on cancellation Review of the disputed Trademark (hereinafter as the “Cancellation Review Decision”) and ruled that the registration of the Disputed Trademark should be withdrawn as the evidence submitted by DIAGEO BRANDS was insufficient to establish that the disputed Trademark had been used commercially on the approved designated goods during the Prescribed Period. DIAGEO BRANDS was dissatisfied with the Cancellation Review Decision and filed an administrative lawsuit with the Beijing Intellectual Property Court. The Court held that the Disputed Trademark had been used in an authentic, true, legal, and effective manner on the goods within the prescribed period, and revoked the Cancellation Review Decision made by TRAB in the first instance. The case was brought to the 2nd instance, while Beijing High People’s Court rejected the appeal by TRAB and upheld the judgment of the first instance.
The Practice:
The case is the first case in China regarding an administrative dispute over cancellation review of a three-dimensional trademark, which is of high importance and guidance on how to evaluate and determine evidence of the use of three-dimensional trademarks, also for future cases. As three-dimensional trademarks are different from two-dimensional trademarks, the evidence regarding the use of three-dimensional trademarks is difficult to be directly reflected in the product packaging or transaction documents such as contracts and invoices, and thus the distinctive features of three-dimensional trademarks shall be summarized first and then bonded into the product that the three-dimensional trademark used in.
In addition to the physical product, it is particularly important to collect evidence of the use of the three-dimensional trademark in advertising or publicity. Furthermore, by bonding the connection between the name of the product in which the three-dimensional trademark is actually used and the product, and by proving that the product in which the three-dimensional trademark is used has been produced or sold, this indirectly proves that the three-dimensional trademark has been used in a genuine, legal and effective manner.
In this case, the TRAB considered the Disputed Trademark as a device trademark and ruled the cancellation of the Disputed Trademark considering that DIAGEO BRANDS had stopped using the Disputed Trademark for three consecutive years. While in the first instance and the second instance, the Courts summarized the distinctive features of the Disputed Trademark as a three-dimensional trademark and compared these distinctive features with the products sold on the online platform submitted by DIAGEO BRANDS, confirming that the products showed the same bottle shape and label position as the Disputed Trademark in a three-dimensional way.
Moreover, the name of the product, “Johnnie Walker Black Label” Scotch whisky, along with the inspection and quarantine certificates and the sales invoices submitted by DIAGEO BRANDS could be proved that the “Johnnie Walker Black Label” Scotch whisky using the Disputed Trademark was continuously imported and sold in large quantities during the Prescribed Period. In addition, by searching the corresponding keywords “Johnnie Walker’s bottles”, the promoting info can be obtained to prove that the use of the Disputed Trademark on the product “Johnnie Walker Black Label” Scotch whisky within the Prescribed Period.
Therefore, the Courts of the first and second instance found that the evidence submitted by DIAGEO BRANDS was sufficient to prove that the Disputed Trademark had been used on the approved designated goods in a genuine, legitimate, and effective manner during the Prescribed Period.
As emphasized by the Court of the second instance, the use of a trademark is not only a realization of the function in distinguishing the source of goods but also a term for maintaining the validity of the registered trademark. In other words, the use of a trademark is to make the relevant public identify it as a trademark, thus producing the effect of distinguishing the source of goods.
In this case, the Disputed Trademark was approved for registration by proving that the three-dimensional trademark had achieved distinctiveness through long-term and extensive actual use and promotion, thus producing the function of identifying the source of goods. Therefore, in proving whether the three-dimensional trademark has been used effectively and legally, it is necessary to first explain the distinctive features of the three-dimensional trademark, and then compare the products that have actually used the three-dimensional trademark with the distinctive features of the three-dimensional trademark, so as to prove that the products with the distinctive features of the three-dimensional trademark are the actual use of the three-dimensional trademark.
The Courts of the first instance and second instance also adopted such trial criteria by comparing the shape of the wine bottle and the position of the label attached to the product that showed on the online sales web pages with the three-dimensional Disputed Trademark, confirming that the two shared the same distinctive features. What is more, the use of a three-dimensional trademark is difficult to reflect directly in contracts, invoices, and other transaction documents.
As such, it is, therefore, possible to establish a link between the name of the product or the customary name of the product (i.e. the name of the product on the back label of the product or the name of the product on the sales page of the online platform) and the name of the product as recorded in the invoices and other transaction documents, to form a chain of evidence that supports the fact that the products with the three-dimensional trademark have entered into commercial circulation in an effective way.
HFL’s insights:
As three-dimensional trademarks are different from two-dimensional trademarks, evidence of the use of three-dimensional trademarks is difficult to be directly reflected in the packaging of products, contracts, invoices, and other transaction documents as well. Therefore, in addition to the physical product, it is of great importance to prove the use of a three-dimensional trademark among the advertising or publicity.
Regarding this case, HFL represents DIAGEO BRANDS, summarized the distinctive features of the Disputed Trademark as a three-dimensional trademark, such as the cubic bottle shape, the curved neck label, the oblique label, and the rectangular bottom label, which are the distinctive parts of the three-dimensional trademark that can distinguish it from other product shapes or packaging. As such, consumers can identify the source of the product by identifying the aforesaid features.
Also, HFL collected and provided corresponding web pages concerning the products’ publicity and sales on the e-commerce platforms that the Disputed Trademark used. Through the comparison of the pictures of the products sold on the e-commerce platforms, it was confirmed that the shape of the bottle and the position of the label attached to the sold products were the same as the Disputed Trademark in a three-dimensional manner, thus confirming that the three-dimensional Disputed Trademark has been used in a true, open, effective and legitimate manner.
HFL made the bond between the product name that the three-dimensional trademark used and the product, then provided the product’s inspection and quarantine certificates and the sales invoices submitted by DIAGEO BRANDS, proving that the product “Johnnie Walker Black Label ” Scotch whisky using the Disputed Trademark was continuously imported and sold in large quantities during the Prescribed Period, which could mirror that the Disputed Trademark has been used in a true, open, effective and legitimate manner.
Authors:
