CPA Wins Second-Instance Administrative Case Involving Trademark Cancellation Disputes

Recently, China Patent Agent (H.K.) Ltd. (CPA) successfully represented its client in a second-instance administrative case involving disputes over trademark cancellation decision. The second-instance court supported the arguments of our litigation team and ruled that the disputed trademark is not in effective use, thus reversing the first-instance judgment and ordering cancellation of the trademark.

The disputed trademark in this case was registered for use on "sales promotion for others" in Class 35, which has long been a difficult issue of much discussion and wide controversy in the industry. In respect of this, the Guidelines of the Beijing Higher People's Court for Adjudication of Administrative Cases Involving Granting and Affirmation of Trademark Rights have provisions listing the trademark use behaviors that can be deemed as "sales promotion for others", and the Guidelines on Application for Registration and Use of Class 35 Service Trademarks were issued by the China National Intellectual Property Administration (CNIPA) to clarify the original intent of "sales promotion for others" and its distinction from other services.

In this case, the trademark owner is an authorised dealer of a well-known mobile phone brand, operating a physical store selling mobile phones and spare parts through its trademark licensee. The licensee has published promotional articles related to the said goods via its WeChat official account, and one of the points of dispute in this case is whether the promotional WeChat articles constitutes "sales promotion for others" in the sense of the Trademark Law.

CPA litigation team, citing laws and regulations and referencing previous cases, clearly explained the differences between "sales promotion for others" and "general distribution", and pointed out that the trademark owner and the licensee have no agreement with the mobile phone brand owner on sales promotion service, nor is there any payment of fees for such service. Our litigators further emphasised that ownership of relevant goods has already been substantially transferred upon the purchase of goods from the mobile phone brand owner and paying for the goods, therefore the licensee's posting promotional WeChat articles is not sales promotion for "others". The second-instance court adopted our litigation team's arguments, and determined that the licensee's said behavior belongs to sales promotion for goods of its own, thus not constituting "sales promotion for others" in the sense of the Trademark Law.

In this trademark cancellation dispute case, CPA litigation team fully capitalised on their legal expertise and solid practical experience to protect the lawful interests of our client.