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Court Sides with Irish Company on Revoking Namesake Trademark

Recently, Beijing High People's Court made a final judgment on the trademark revocation dispute over the trademark No. 686918 "CARLI and its figure" (the disputed trademark), granting the wish of Connery Ireland Limited of revoking the disputed trademark.

Chongqing Jingxuanjing Industrial Company filed an application for registration of the disputed trademark on February 11, 1993, and was approved to be used on Class 25 goods including clothing on April 21, 1994. In January 2005, the disputed trademark was approved for transfer to Shenzhen Carali Clothing Company by the Trademark Office(TMO)of the former State Administration for Industry and Commerce of China (SAIC) and would change hands again to Shenzhen Shengyaqi Clothing Company in January 2018. Connery requested the former TMO to cancel the disputed trademark claiming that the disputed trademark had not been used on the designated goods in a legal, true, and effective commercial manner for three consecutive years. Shengyaqi subsequently provided evidence of trademark use in a lease contract to prove that it had effectively used the disputed trademark on clothes during the specified period. The former TMO rejected Connery's request accordingly. Connery immediately applied to SAIC's Trademark Review and Adjudication Board(TRAB) for a review. TRAB also made a decision to uphold the disputed trademark.

Connally was disgruntled with the ruling and brought the case to Beijing Intellectual Property Court, claiming that the evidence submitted by Shengyaqi was its actual use of the No. 6103451 "CARLI" trademark rather than the disputed trademark, unable to prove the actual authentical and effective use of the disputed trademark within the specified period.

Carali is the holder of the No. 6103451 trademark "CARLI" which was filed for registration on June 11, 2007 and would be approved for use on the Class 25 goods including clothes on August 21, 2016. Beijing IP Court held that although the trademark actually used by Shengyaqi during the designated period is not exactly the same as the disputed trademark, the distinctive identifying part is still the letters "CARLI", which is basically the same as the logo of the disputed trademark and has not changed the distinctive features of the disputed trademark, and therefore will not affect its recognition by the relevant public and can still be regarded as the use of the disputed trademark. Accordingly, the court rejected Connery's claims.

Connery then appealed to the Beijing High People's Court. Beijing High held that considering the complexity of commercial activities, the use of trademarks that have not changed the distinctive features should also be regarded as the use of registered trademarks. However, in principle, the use of trademarks should be regulated. If a trademark has changed too much, it would not fall under the above- mentioned conditions, let alone the use of other trademarks to determine the use of the trademark. The holder of the disputed trademark owns multiple registered trademarks. Even if the trademark actually used is only slightly different from the disputed trademark, if it can be determined that the use is for other registered trademarks, the claims that the disputed trademark registration is upheld are generally not supported. In this case, the disputed trademark is a combination of figure and text, consisting of the letters "CARLI" and wavy line graphics. The relevant evidence submitted by Shengyaqi showed that it was the "CARLI" logo or "CARLI" on a dark background rather than the disputed trademark. Compounding the situation that Carali owns the No. 6103451 "CARLI" trademark that has been approved for registration on clothes, it should be determined that the use shown in the evidence submitted by Shengyaqi is for other registered trademarks and cannot be regarded for the disputed trademark. In this connection, the appellate court held that the evidence submitted by Shengyaqi and Caralli cannot prove that the disputed trademark was legally, genuinely and effectively used on the designated good such as clothes within the specified period, and accordingly revoked the judgment of first instance and the ruling of TRAB.

Source: China IP News

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