In trademark cancellation administrative cases, the submission of effective use evidence to prove that the disputed trademark has been used in the sense of trademark law within the specified period is the key to maintaining the registration of the disputed trademark. However, in addition to the authenticity, legality and relevance of the evidence, as well as the establishment of an effective evidence chain, another issue worth paying attention to is whether the goods used in the specific evidence can correspond to the approved goods used of the cited trademark. On this issue, the author takes this case as an example to share the relevant experience.

In the administrative lawsuit with No. (2018) Jing 73 Xing Chu 10923, the plaintiff FENDER MUSICAL INSTRUMENTS CORPORATION filed a lawsuit with the Beijing Intellectual Property Court for refusing to accept the review decision of Shang Pingzi [2018] No. 93938 on the cancellation of the trademark No. 814705 "BASSMAN" made by the defendant the CNIPA. The approved use of goods of the reexamined trademark in this case is the "amplifier" of the 0913 group, and the defendant determined in the decision that "in this case, the goods involved in the evidence submitted by the respondent (the plaintiff in this case) are power amplifiers and boxes, and the goods are audio-visual equipment products." The 'amplifier' products specified in the trademark reexamined in this case belong to Class 0913 crystal and carbon materials for electrical appliances, electronic and electrical general components, the two do not belong to the same or similar goods. Therefore, the evidence cannot be found that the trademark has been openly, truly and legally used commercially on the goods under review within the specified period, and the registration of the trademark under review shall be revoked.

From the above cases, it can be seen that the evidence submitted by the plaintiff at the review stage, in the defendant's view, is to prove the use of the goods "amplifier", not the "amplifier" on the 0913 group on the classification table, so it was decided to revoke the review trademark. In the process of the first instance, the attorney through the analysis of the case, determined that the breakthrough in handling the case is to prove that "power amplifier" belongs to a kind of amplifier, is the next concept of "amplifier" goods.

According to Article 19.8 of the "Trademark Authorization Confirmation Case Trial Guide" issued by the Beijing Higher People's Court: the actual use of the goods does not belong to the standardized name of the goods in the classification table, but it is different from the name of the goods approved for use in the disputed trademark, belongs to the same goods in essence, or the actual use of the goods belongs to the concept of the approved goods, can be deemed to constitute the use of the approved goods.

In the process of first instance, after collecting and supplementing evidence, the plaintiff's claim was supported by the Beijing Intellectual Property Court, which determined in the judgment of the first instance of the case: "Power amplifier is short for power amplifier, is used to enhance the signal power to drive the end of an electronic device, is a kind of amplifier." Although the "Similar Goods and Services Category" does not list the "power amplifier" goods, but from the function of the goods, use, production department, sales channels, consumer groups and other factors, power amplifier goods and amplifier goods have a strong correlation, so the use of the trademark in the "power amplifier" goods should be regarded as the use of the "amplifier" goods." The CNIPA appealed against the judgment of the first instance, and after the hearing, the Beijing Higher People's Court decided to reject the appeal and uphold the original judgement by the judgement with No. (2021) Jing Xing Zhong No.4558. 

The decision of the CNIPA has been successfully overthrow, the key lies in successfully proving that the "power amplifier" goods actually used is the next concept of the "amplifier" goods reviewed for trademark approval, which is to establish a corresponding relationship between the actual goods in the evidence of use provided by the parties and the standardized goods name from the "Classification Table" approved for trademark use. In the process of the first and second instance of this case, the lawyer mainly collected evidence from the following aspects:

1. The explanation of "amplifier" and "power amplifier" in professional literature, reference books and dictionaries prove that "amplifier" is short for "power amplifier", and its role is to amplify the power of electrical signals, which is a kind of "amplifier".

2. Various other articles, magazines and journals about "power amplifier" prove that in daily life, the relevant public's cognition of "amplifier" is that it is a part of the audio equipment, which amplifies the power of the electrical signal of the sound source.

3. Please ask the professional engineer working in the plaintiff's subsidiary to provide a description of the working principle of the "power amplifier" to prove that the working principle of the "power amplifier" is in fact the same as that of the "amplifier".

4. Inquire the Chinese-English comparison table of the Nice classification of goods, and confirm that the official translation of 0913 group amplifier products is "amplifier", which is the corresponding translation of the Chinese version of "amplifier" in the dictionary, and the English name of the goods actually sold by the plaintiff is "amplifier", proving that the goods sold by the plaintiff are "amplifier".

5. The plaintiff submitted the CNIPA's "Notice on Updating the Names of Items of Acceptable Goods and Services Other than the Classification of Similar Goods and Services" and the results of the official website of the trademark inquiry system service center on the item of "Electrical amplifiers used with Musical Instruments". According to the list of goods and services produced by the results of the joint talks between the State Administration for Industry and Commerce, the United States Patent and Trademark Office, the European Internal Market Coordination Office, the Korean Intellectual Property Office and the Japanese Licensing Office, the National Knowledge Office will be "electrical amplifiers used with Musical Instruments" as an acceptable goods item in the trademark examination, and the goods is classified as 0913 group. This shows that "amplifier" and "electrical amplifier used with Musical Instruments" are products with the same commodity nature, and the nature of the "power amplifier" actually used by the plaintiff is precisely used with musical Instruments, proving that the product is the lower concept of "amplifier" and should be included in the 0913 group.

The focus of the above evidence includes the cognition of ordinary consumers on the use of goods, the opinions of professionals on the specific functions of goods, and the division of ideas of official agencies on goods, etc., which more comprehensively proves that the "power amplifier" belongs to the lower concept of the "amplifier" of standardized goods in the "Classification Table", and has played a good proof effect and promoted the successful handling of the case. From the handling process of this case, we can conclude that in trademark revocation administrative cases, when the name of the actual used goods is inconsistent with that of the standardized goods approved for trademark registration, the function and principle of the specific goods should be analyzed based on objective facts, and then based on these clues to find evidence that can reflect this fact in all aspects of life. In this way, the supporting role of revocation of the evidence used in the review case is further strengthened, and the favorable result of the case is sought.

Lawyers Li Shuhua and Liao Chen from Beijing Janlea Law Firm provided full legal services for FENDER MUSICAL INSTRUMENTS CORPORATION in the first and second instance of the case.