China: How To Get Rid Of Risks Of Revocation Of A Well-Known Trademark Not Used In Three Years In The Light Of Revocation Of The Tencent Penguin Trademark?

Introduction

Trademark Review and Adjudication Board: Revocation Reexamination Decision on No. 1956795 Figure Mark

Applicant (the original revocation applicant): SHANGHAI ICEASON FOOD CO.LTD.

Respondent (the original revocation respondent): Tencent Technology (Shenzhen) Co., Ltd.

Due to dissatisfaction with Trademark Che San Zi [2016] No. Y010622 Decision on Revocation of No. 1956795 Figure Mark (hereinafter referred to as "re-examinated trademark") made by the Trademark Office, the applicant applied for reexamination on January 20, 2017. Upon accepting this case in accordance with the law, the Trademark Review and Adjudication Board established a collegiate panel to hear the present case according to the provisions of Article 6 of Trademark Review and Adjudication Rules, and has currently concluded the trial.

The contents are omitted.

The evidences submitted by the respondent cannot form a relatively complete chain of evidences to prove that the re-examinated trademark was used for commercial purposes truly and effectively in terms of re-examination services during the re-examination, and therefore, the registration of the re-examinated trademark in terms of the re-examination services was revoked.

According to the provisions of Articles 44.4, 54 and 55 of "Trademark Law of the People's Republic of China" before amendments, the Board made decisions as follows:

The re-examinated trademark was revoked in terms of re-examinated advertisements, commercial management consultation (consultants), commercial professional consultation, commercial information, marketing (for others), and accounting services.

Recently, the No. 1956795 Penguin Figure Mark registered by Tencent Technology (Shenzhen) Co., Ltd. has been ruled to be revoked by the Trademark Review and Adjudication Board as it was "not used in three consecutive years". Because Tencent's penguin image gains a very high reputation, the case that the trademark is revoked as it is not used in three years in a row has aroused wide concern.

Hereinafter, we will make comments in such two aspects as the revoked class (thirty-fifth class) and the used evidences provided by the right holder mentioned in the Revocation Decision, thereby helping readers further understand to what the commercial use of a trademark in a true and effective manner refers, and how to obtain trademark protection as broad as possible, while avoiding risks of being revoked in the case of non-use in three years.

Typicality of the case: use of a registered trademark to maintain its effectiveness is a core element, and the well-known trademark is not exceptional.

Reflections on reasons for the revocation of the trademark:

Considering ordinary consumers' knowledge of nature and characteristics of contents of Tencent services in combination with the characteristics of the thirty-fifth class of services in classification of goods and services, and the examination opinions provided by the Trademark Review and Adjudication Board of the used evidences provided by the right holder, it can be found that penguin image was revoked as non-use under the thirty-fifth class of services with reasonableness as follows:

Tencent services are associated with the services included in the thirty-fifth class, but do not fully possess the attributes and characteristics of the service requirements of the class.

An overall description of the thirty-fifth class of services in "Distinction Table for Similar Products and Services" is: advertising, business operations, business management, and office affairs. Specific comments are made as follows:

The thirty-fifth class mainly includes services provided by individuals or organizations with primary objectives of:

assisting in operation or management of commercial enterprises;

assisting in business activities of commercial enterprises or management of business intelligence; and

as well as services provided by an advertising department for various goods or services with purpose of advertising to the public through various means of communication.

This class includes in particular:

- classification of all kinds of commodities (except transportation) for others, so as to help clients browse and purchase the commodities; such services can be provided by retail stores, wholesale stores, vending machines, mail order catalogue or by means of electronic media, for example, through websites or TV shopping programs;

- services related to systematization of registration, transcription, writing, editing, or written communications and records, and compilation of mathematical or statistical data; and

- services of advertising agencies, and services of direct or mail distribution of brochures or samples; this class may involve advertisements relating to other services, bank loans or radio advertising services.

It is well known that Tencent's main products, such as WeChat, QQ, etc., mainly provide a platform for communications with the public. In a highly developed market background of the Internet Economy, these platforms play an important role in the public's business operation and management functions. Therefore, it is undeniable that Tencent's service contents are associated with the thirty-fifth class of services. However, these services are only an approach or means of realizing business operation and management functions, and are inadequate to conclude that Tencent directly participates in business operation and management of the others and provides substantive business assistance. Therefore, it is worth discussing whether the above services fully have the attributes and characteristics that the thirty-fifth class of services should have.

Defects are found in selection of contents of the designated services, which is difficult for the right holder to provide used evidences:

The revoked trademark is the No. 1956795 Penguin Figure Mark. The specific services specified by the mark are described as follows:

1. advertising; 2. commercial management consultants; 3. commercial professional consulting; 4. commercial information; 5. promotion (for others); 6. employment agencies; 7. computer document management; 8. computer database information systematization; 9. computer entry services; 10. accounting.

The designated service contents of the revoked trademark covers almost all similar groups of the thirty-fifth class, and thus it is not difficult to tell that the applicant desires to obtain protection in this class as broad as possible.

However, the above-mentioned specific service items, such as accounting, commercial management consulting services, commercial professional consulting are obviously different from Tencent's services in the public's general impression. The above specific service items set difficulties and obstacles for the right holder to collect and provide used evidences at the beginning of the selection to some extent.

On the other hand, in addition to the services designated by the revoked trademark, the standard services of the thirty-fifth class include other services that can form the same scope of protection but are closer to the right holder's business, which, however, have not been designated by the right holder, e.g., providing commercial information through websites, renting out advertising time on communication media, and booking telecommunication services for others, etc. If the right holder chooses a service item being applied more cautiously, it may be possible to keep at least a part of the service from being revoked.

Form and content of the evidences are inadequate:

Even if the right holder's core service contents do not meet the requirements of the thirty-fifth class of services as described above, the right holder's result that all the approved service items were revoked is still surprising. The right holder should at least be able to maintain registration of trademarks in terms of services, such as "advertising, commercial information, and promotion (for others)". The reason why the revoked trademark was "all revoked" in terms of the designated services can be speculated that there exists a problem with the evidences provided by the right holder.

It can be inferred from the Revocation Decision made by the Trademark Review and Adjudication Board that the used evidences provided by the right holder may predominantly have the following problems:

no re-examinated trademark is embodied;

the evidence is a unilateral self-made evidence; and

the evidence has a random form that lacks corroborative evidence with poor probative force.

The trademark does not use the used evidence in the Revocation that requests the revoked trademark to be shown on the evidence. The revoked trademark is shown as a penguin image. Although we are very familiar with such a little penguin, it does not appear frequently but on our chatting software (QQ) each day. Not to mention that the right holder applies it for commercial management services not in a wide range. At the same time, as far as business practices, it is common for contracts, bills, and documents in commercial activities to describe trademarks in a textual manner, except promotional advertising materials, and it is very rare to directly attach trademark graphics.

Therefore, we can deeply understand the difficulties and aggrievedness of the applicant when collecting and preparing for the used evidences. However, it is regrettable that there exist too many unilateral self-made evidences, corroborative evidences such as contractual invoices are absent, and the evidence has a random form that lacks relevancy. Although the above defects are common in the provision of used evidences for service marks, if the used evidences can be more rigorously collected and arranged, registration of some services may still be possibly maintained.

The possible consequences of revocation of penguin graphic trademarks:

As we all know, well-known trademarks are hard-earned; was penguin graphic trademark revoked in such a manner? In fact, the right holder does not worry excessively about it.

First, the Revocation Decision made by the Trademark Review and Adjudication Board is not the final decision. The trademark right holder has rights to file an administrative lawsuit in an intellectual property court according to law.

Second, even if the Revocation Decision takes effect, the right holder can continue to use the penguin graphic trademark. According to the provisions of the Trademark Law, registration of trademarks in China adopts a principle of voluntary registration. Except for the compulsory registration of trademarks for individual commodities, unregistered trademarks of other commodities and services under the thirty-fifth class can also be used.

It is striking that after the registration of the penguin graphic trademark under the thirty-fifth class of services was revoked, can the graphic be protected by the Trademark Law? The answer is also yes.

As reviewed by the Trademark Review and Adjudication Board in the Revocation Decision, the Tencent penguin graphic trademark was recognized by the court in 2006 to have reached a level of familiarity with the public; the Trademark Office also identified the trademark (QQ trademark) had reached a level well known to the public on information transmission, communications for computer terminal, telecommunication links provided with global computer networks under class 38 in 2009. Therefore, the Tencent penguin trademark has gained a well-known trademark at least under the thirty-eighth class of services.

As a well-known trademark on services closely related to the daily life of the general public, it is fully necessary and reasonable that protection of Tencent penguin graphic trademark extends to the thirty-fifth class of commercial management services that are also closely related to the public life. Therefore, even if the thirty-fifth class of trademark exclusive right is lost, Tencent can still prohibit others from registering and using the same or similar trademark in accordance with the relevant provisions of Article 13 of the Trademark Law.

At the same time, after the trademark was revoked, the right holder has other relief means for filing a registration application for the penguin graphic or the trademark logo containing the graphic under the thirty-fifth class again.

General comments:

The thirty-fifth class is a very important class in trademark classification. Almost all commercial enterprises will be directly or indirectly related to services in this class during the operation. As a leading Internet value-added service provider in China, Tencent's business is undoubtedly related to the thirty-fifth class of services. Even if the right holder does not currently provide any used evidence with the required elements, it seems insufficient to conclude that the trademark is not actually used or has no intention of actual use.

The trademark non-use revocation system is intended to clear up idle trademarks and urge right holders to use trademarks, but not to punish trademark right holders, and it should not become a means that others can use in market competition. Under the premise of focusing on facts and relying on evidences, the examination of trademark non-use revocation should also give full respect and consideration to the already formed market order and trademark order.

If the Tencent penguin graphic trademark was revoked under the thirty-fifth class, although the trademark owner can re-apply for registration or continue to protect the rights through the protection of well-known trademarks, the costs of right protection will inevitably increase, and the effectiveness may weaken. This may result in consumers' confusion as others use similar trademarks in the same market. The occurrence of this situation is obviously contrary to the legislative purpose of the Trademark Law and the original intention of the non-use revocation system.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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