The "Watsons" trademark sparked a five-year dispute

After the enterprise cancels, can the trademark it previously applied for registration be approved for registration? In this regard, the Beijing Higher People's Court gave the answer in the case of the dispute over the "Watsons" trademark No. 8778266 (hereinafter referred to as the disputed trademark).

Recently, the Beijing Higher People's Court published its (2017) Jingxing Final Administrative Judgment No. 3370 issued in December 2017. The court finally judged that the applicant for the opposed trademark, Foshan Nanguan Ceramics Co., Ltd. (hereinafter referred to as Nanguan Company), Guangdong Province, was canceled on April 21, 2014, and its main qualification has been lost, and there is no evidence that Nanguan Company has gone through the procedures for the change of the opposed trademark applicant before cancellation, therefore, the opposed trademark should not be approved for registration if it loses the subject of the application.

It is understood that the opposed trademark was applied for registration by Nanguan Company to the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Office) on October 26, 2010, and was designated to be used in the 19th category of goods such as ceramic tiles and non-metallic floor tiles. On October 6, 2011, the Trademark Office announced the preliminary examination and approval of the opposed trademark.

On January 6, 2012, the last day of the legal objection period for the disputed trademark, Watson's Enterprises Co., Ltd. (hereinafter referred to as Watson's Company) filed an objection application with the Trademark Office against the disputed trademark, claiming that the disputed trademark and the No. 774065 "Watson's" trademark previously approved and registered in category 35 services such as marketing (for others) constitute similar trademarks used on similar goods or services, at the same time, it preemptively registered the trademark that it had used and had a certain influence by improper means, which damaged its prior trade name right, and Nanguan Company's application for registration of the opposed trademark violated the principle of honesty and trustworthiness, disrupted the order of the market economy, and was harmful to socialism. Moral fashion.

After examination, the Trademark Office made a ruling on April 9, 2013 that the objection raised by Watsons was not valid, so it approved the registration of the opposed trademark. Watsons Company refused to accept it and applied for review to the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the Commercial Review and Adjudication Board) on May 3 of the same year.

On April 15, 2014, the commercial judges made a review ruling and approved the registration of the opposed trademark. Watson's company refused to accept, and then filed an administrative lawsuit with the Beijing No. 1 Intermediate People's Court, but its claim was rejected by the court's first-instance judgment. Subsequently, Watsons Company appealed to the Beijing Higher People's Court.

It is reported that during the second trial of the case, Watsons Company submitted the enterprise machine-readable file registration materials and enterprise credit information publicity report of Nanguan Company, which showed that Nanguan Company was canceled on April 21, 2014, and the reason for the cancellation was that the shareholders, the shareholders' meeting and the shareholders' general meeting resolved to dissolve. On this basis, Watsons argued that the disputed trademark should not be registered because Nanguan canceled and did not assign the disputed trademark prior to the cancellation.

The Beijing Higher People's Court held that the exclusive right to use trademarks, as a civil right, should be enjoyed and exercised by subjects with civil subject qualifications. The evidence submitted by Watsons Company can prove that Nanguan Company, the applicant of the opposed trademark, was canceled on April 21, 2014, and its subject qualification has been lost, and there is no evidence that Nanguan Company has gone through the procedures for changing the applicant of the opposed trademark before cancellation, so the opposed trademark should not be approved for registration without losing the application subject.

Accordingly, the court's final judgment revoked the first-instance judgment and the review ruling made by the commercial judges, and ordered the commercial judges to make a new ruling on the objection review application filed by Watsons against the opposed trademark. (Wang Guohao)

Connoissers' comments

Liu Yunjia (Lawyer of Beijing Yingke Law Firm): In this case, the trademark administrative department and the court did not support Watson's claims on the grounds of lack of facts and legal basis. Under the objective circumstances of the identity and qualification of the applicant, the court of second instance finally made a judgment that the opposed trademark should not be approved for registration.

Article 4 of China's current Trademark Law stipulates: "If a natural person, legal person or other organization needs to obtain the exclusive right to use a trademark for its goods or services in the course of production and business activities, it shall apply to the Trademark Office for trademark registration. The provisions of this Law relating to commodity trademarks shall apply to service trademarks."

It can be seen from the above provisions that trademarks should be applied for under the circumstances required for business operations. As a civil right, the exclusive right to use trademarks should be exercised by applicants with subject qualifications of natural persons, legal persons or other organizations, and trademarks should be actually put into use.. However, the enterprise machine-readable file registration data and enterprise credit information publicity report submitted by Watsons Company in the second instance litigation procedure of this case prove that the applicant of the opposed trademark has been canceled as an enterprise, its main qualification has been lost, and there is no evidence to show that the applicant has changed the applicant through transfer or other procedures for the opposed trademark. This objective situation shows that the applicant of the opposed trademark has lost the main qualification, and the opposed trademark obviously does not have the possibility of being inherited or used by others. Following the original legislative intent embodied in Article 4 of my country's current trademark law, the court of second instance finally made a corresponding decision based on the above new facts.

There are similar provisions in the Guidelines for the Trial of Administrative Cases Concerning Trademark Authorization and Confirmation issued by the Beijing Higher People's Court in 2014, that is, the business license of an enterprise applying for registration of an opposed trademark has been revoked but has not gone through the cancellation procedures, and the following conditions are also met. According to Article 4 of my country's current Trademark Law, the trademark shall not be approved for registration: at the time of the administrative ruling, the business license of the enterprise applying for the registration of the opposed trademark has been revoked for more than 3 years; there is no evidence that the opposed trademark has been transferred or licensed to others; the enterprise applying for the registration of the opposed trademark has not participated in the trademark review process and subsequent litigation procedures, nor has it made any explanation or put forward relevant claims on its enterprise status and the situation of the opposed trademark; the disputed trademark is a copy and imitation of the cited trademark and there is a certain connection between the goods designated for use. According to the above-mentioned judicial opinions, when the enterprise of the disputed trademark applicant is revoked and has not been canceled or has been canceled, it can be regulated by Article 4 of China's current trademark law.

News source:http://ip.people.com.cn/n1/2018/0129/c179663-29792542.html

This news was re-edited and reorganized by the Huaxun team and added analytical comments.