As per Article 44 of Chinese Trademark Law 2001, the registered trademark has been suspended for the use for three consecutive years, the Trademark Office shall instruct the deadline for the correction or revoke the registered trademark. The purpose of this article aims to activate resource and to clean the idle resource, furthermore, to urge the trademark owner actively use the trademark for giving a play to identification function of the trademark. Revocation only is a kind of means rather than the purpose. Judgement on whether the disputed trademark has been used in the sense of trademark law during the specified period, shall follow the principle of overall consideration and comprehensive judgement, not only considering the subjective will and objective performance of the trademark owner in the actual use of the disputed trademark, but also considering and evaluating the characteristics of approved goods or services themselves, as well as the market features. 

The trademark “海泉湾及图”(Hai Quan Wan in Pinyin and device) with the trademark number 7479227, which belongs to HKCTS (Zhuhai) Haiquanwan Co., Ltd., has been filed application for revocation for non-use for three consecutive years by Tai Si Te Wa Company on 4th April 2014, the case has been reviewed by China National Intellectual Property Administration, the first instance of Beijing Intellectual Property Court, the second instance of Beijing Higher People’s court, finally, the trademark “海泉湾及图”(Hai Quan Wan in Pinyin and device) has been maintained on goods “Shampoo; Detergent; Cosmetics”, while has been revoked from the goods “Cleaning preparations; Essential oil; toothpaste”.

Basic Situation of the Case: 

I.Situations of the disputed trademark

1.Applicant: HKCTS (Zhuhai) Haiquanwan Co., Ltd. (the respondent)

2. Application Number：7479227

3. Application Date: 18th June 2009

4. Registration Date: 27th September 2010

5. Logo：as below

6. Designated Goods：Class 3，0301 Shampoo; 0301 detergent; 0302 Cleaning preparations; 0303 lustering agent; 0304 abradant; 0305 Essential oil; 0306 Cosmetics; 0307 toothpaste; 0308 fragrant; 0309 Cosmetics for animals.  

II.The Situation of the Case

On 4th April 2014, Tesnatwa Company filed the application to China National Intellectual Property Administration (hereinafter referred to as (appellant) for revoking the registration of the respondent’s disputed trademark on all designated goods. According to the examination and recognition by the appellant, the disputed trademark has been revoked. The respondent refused to accept the result and filed the application for the reexamination of the revocation. 

On 30th December 2015, the appellant issued Decision of Reexamination on Revoking the Trademark “海泉湾OCEANSPRINGRESORT及图”(Hai Quan Wan in Pinyin OCEANSPRINGRESORT and device) under trademark number 7479227 with document number Shang Ping Zi [2015] No.106877 (hereinafter referred to as the decision) held that, the evidence filed by the appellant can not prove the disputed trademark put into actual business use on Class 3 goods, i.e. Shampoo, from 4th April 2011 to 3rd April 2014 (hereinafter referred to as designated period), the disputed trademark shall be revoked. The respondent refused to accept the decision and filed lawsuit to Beijing Intellectual Property Court (hereinafter referred to as the first instance court). 

On 14th January 2019, the first instance court made the administrative judgement under document number (2016) Jing 73 Xing Chu No. 79 (hereinafter referred to as the first instance judgement) and held that, the disputed trademark has been put into actual and effective business use on the designated goods within the designated period. 

Statement: in the first instance, the respondent has abandoned to use the disputed trademark on goods “fragrant; cosmetics for animals”. In the second instance, the respondent has abandoned to use the disputed trademark on goods “lustering agent; abradant”. As a result, the second instance has only focused on whether the disputed trademark has made a real, legal and effective commercial use on designated goods “shampoo; detergents; cleaning preparations; essential oil; cosmetics; toothpaste” within designated period.  

On 17th November 2020, the second instance court made decision that the trademark “海泉湾及图”(Hai Yuan Wan and device) shall be sustained on goods “shampoo; detergents; cosmetics”, and shall be revoked on goods “cleaning preparations; essential oil; toothpaste”. 

III.Summary of Judgement of Second Instance Court

In this case, The Purchase Contracts have been concluded between China National Travel Service (HK) Group Corporation and Keshi Company (柯式公司) in December 2012 and December 2013 as well as settlement lists, can prove that China National Travel Service (HK) Group has purchased shampoo, shower gel, hair conditioner and lotion for the purpose of hotel operation. Combining other documented evidence, i.e. photos and customer purchase confirmation, which were offered by China National Travel Service (HK) Group, can prove that the disputed trademark has been put in a real and effective use on goods, i.e. shampoo; shower gel; hair conditioner; lotion; within designated period by China National Travel Service (HK) Group. In consideration of “lotion” pertains to “cosmetics”, as a result, the usage of the disputed trademark on the goods “lotion” should be recognized as the commercial use on “cosmetics”. The disputed trademark’s designated goods “detergent” constituted as similar goods with “shampoo”, therefore, usage of the disputed trademark on the goods “shampoo” also can be maintain its registration on the goods “detergent”.

Furthermore, according to the fact-finding in the second instance, China National Travel Service (HK) Group purchased “toothpaste” belongs to the brand of “黑妹” (Hei Mei in Pinyin) or “Colgate”, therefore, the disputed trademark shall not be recognized the real use on the goods “toothpaste”. Meanwhile, there are no documented evidence can prove the disputed trademark’s usage on the goods “detergent; essential oil”. Although the goods “shampoo”, on which the disputed trademark put on actual use, has constituted similar goods with “detergent”, also, the goods “detergent” has constituted the similar goods with “cleaning preparations”, the goods “shampoo” is not similar with the goods “cleaning preparation”, as a result, the maintenance effectiveness of the use of the disputed trademark on the goods “shampoo” shall not be extended to the goods “cleaning preparations” that is similar with the goods “detergent”. Additionally, the goods “cleaning preparations” has not constituted similarity with the goods “cosmetics” on which the disputed trademark has been actually used. The goods “essential oil” has not constituted similarity with the goods “shampoo; cosmetics” on which the disputed trademark has been actually used, therefore, the registration of the disputed trademark on the goods “cleaning preparation; essential oil” shall not be sustained. 

To sum up, the court combined with the circumstances in which China National Travel Service (HK) Group abandoned some of its claims in the second instance, as per the documented evidence, the registration of the disputed trademark on the goods “shampoo; detergent; cosmetics” shall be sustained, while the registration on the goods “cleaning preparations; essential oil; toothpaste” shall be revoked. 

IV.Brief Comments

As per the documented evidence offered by HKCTS (Zhuhai) Haiquanwan Co., Ltd. also, according to Similar Goods and Services Classification Table and prior cases as well as professional skills in trademarks business, Beijing Janlea Law Firm assisted the client to sort out using evidence for the trademark and tried the best to maintain the registration of the trademark. Finally, Beijing Higher People Court adopted partial evidence and suggestion filed by us in the court, at last, the registration of the disputed trademark on the goods “shampoo; detergent; cosmetics” has been sustained. 

The legal service team led by Mr. ZHANG Hong and Mr. XU Jin, senior partners and senior lawyers of Beijing Janlea Law Firm, offered the full legal service to the lawsuit regarding the administrative litigation of the reexamination of revoking the trademark “海泉湾” (hai quan wan in pinyin).