In the administrative case of revocation of trademark, the determination of the use of the evidence is the critical point, that is, whether the disputed trademark has been used on the designated goods in sense of trademark law in the course of the designated period. As a result, in the administrative case of revocation of trademark, how to ensure that the use of evidence provided by the party concerned is evidentiary, this is the top priority of attorneys handling case. Now, we will take a case as an example to share relevant experience.

In the administrative lawsuit under No. (2018) Jing 73 Xing Chu 10923, FENDER MUSICAL INSTRUMENTS CORPORATION,the complaint,  has filed the lawsuit to Beijing Intellectual Property court against the review decision on the revocation of the Reg. No. 814705 trademark “BASSMAN” under Shang Ping Zi [2018] No. 93938 made by the defendant, the National Intellectual Property Administration, PRC. The approved goods to be used of the reviewed trademark in the case is under Class 0913 “amplifier”. At the stage of review, the plaintiff has already submitted the license contract which approved the domestic distributor to use the reviewed trademark, while has submitted the products catalogue that used by the plaintiff and its distributors in the designated period, as well as the evidence of special VAT invoices for the sales of “amplifiers”, “bass amplifiers” in the course of designated period. However, the defendant has challenged that in this case, the goods involved in the evidence submitted by the respondent are all power amplifier and boxes, the goods should be categorized as audio-visual equipment, however, the designated goods “amplifier” of the reviewed trademark in this case should be classified as goods, i.e. crystal and carbon materials for electrical appliances, general components of electronics and electrical goods, they are not identical or similar goods. As a result, the evidence on record cannot be recognized that the reviewed goods has conducted an open, real and legal business usage in the designated period, so, the registration of the reviewed trademark should be revoked.

It is known from above case, the evidence presented by the plaintiffat the examination stage was in the opinion of the defendant to prove the use of “power amplifier”, not an “amplifier” under the class 0913, as a result, the reviewed trademark should be revoked. In the course of handling the case, in the opinion of the attorney, how to shape a coherent chain of evidence by matching the goods involved in existing evidence with the description of the goods in the classification, is the top focus of the case. In this case, the main ideas are as follows:

1. To prove “power amplifier” is one kinds of amplifier, also is the subordinate concept of the goods “amplifier”.

According to Article 19.8 of Guidance of Reviewing Trademark’s Authorization and Confirmation Cases released by Beijing High People’s Court, where the goods actually used do not belong to the standard goods names in the classification table, however, is only different from the name of the approved goods of the disputed trademark, and essentially belong to the identical goods, or the goods actually used pertain to the subordinate concept of the approved goods, then, it could be considered as the usage of approved goods.

In this case, “amplifier” is short for “power amplifier”, pertains to one kinds of amplifiers. As a result, the attorney collected the explanation from the dictionary, collected kinds of professional literature from the National Library, also requested the professional engineer from the subsidiary of plaintiff to present the professional statement, in order to prove the working principle of the “power amplifier” is actually the same as the amplifier, and pertains to the subordinate concept of “amplifier”.

2. To link the specific evidence of usage to the specific goods
Although valid invoices and goods catalogue have been presented by the plaintiff in the period of examination, if two groups of evidence cannot shape effective chain of evidence, they also cannot prove anything. Generally speaking, the trademark may not appear on invoices during the commercial transactions, if it cannot be supported by other evidence, then it may be difficult to be recognized as evidence of effective use. However, the goods catalogue pertains to self-made evidence, it may have weaker probative force by using separately. As a result, these two groups of evidence can be effective based on combination. In this case, the attorney determined firstly the whole models of amplifiers using the reviewed trademark by the mode number in the goods catalogue, and then, to determine which type of “amplifier” has been sold according to the type listed in invoices, subsequently, the purpose of reviewed trademark accessing to the market is realized.

3. To confirm the time and scale covered by the using evidence based on ensuring the above 2 steps

In the sense of trademark law, the use of trademark means the use is continuous and has a certain scale. Therefore, after the evidence of effective use has been confirmed through above 2 steps, it is necessary to check whether this evidence of use is within the designated period, and whether to form a certain scale. Ideally, the evidence could have one or two large sale records in any one year within a designated period of three years, however, the characters of the goods should be considered, if it is bulk commodity, it is likely that there will be only one or two sale records within 3 years, in such circumstances, we should claim accordingly to the court that such use matches the actual market. Meanwhile, various media reports can be presented to prove the reviewed trademark has continuously used.

Finally, through the supplementary evidence of use, and sorted out the evidence of use via above 3 steps. Beijing Intellectual Property Court held that in the first instance, In this case, the defendant recognized the use of disputed trademark on the goods “amplifier and box” within the given period, the power amplifier and box only to be identified as the goods of sound equipment, however, “amplifier” pertains to crystal and carbon material for electrical appliances, electronic and electrical general components, they are not similar goods. The court held that, the amplifier is short for the power amplifier, is a kind of electronic device at the end of drive to enhance the signal power, is one kind of amplifiers. Although there is no classification regarding the goods of “amplifier” in the “Classification Table of Similar Goods and Services”, however, considering the goods’ function, purpose, manufacturer, sale channels and consumers, the goods of power amplifier and amplifier has strong relevance, as a result, the use of disputed trademark on the goods “power amplifier” should be considered the use on the goods “amplifier”. Therefore, the comprehensive documented evidence can prove the disputed trademark has conducted real, legal and effective commercial use on the approved goods “amplifier” within given period.

From the handle of the case, we can conclude that, for administrative case of trademark revocation, it is necessary to discover the connections among each pieces of evidence, organically combine these pieces of evidence to complete the evidence chain, and carefully sort out and submit to the judge, aiming to reach the best proof effects.

Ms. LI Shuhua, the attorney from Beijing Janlea Law Firm, leaded the legal service team to provide FENDER MUSICAL INSTRUMENTS CORPORATION with whole legal service during the first instance.