The issue of whether the registration of approved standard items can be maintained through use of non-standard items in cases of trademark cancellation due to non-use over three consecutive years has been a persistent challenge and a concern for all parties involved in such cases.
MAINTAINING TM REGISTRATION
Due to the limitations of the Similar Goods and Services Classification Table, it cannot cover all existing items in the market. Consequently, some trademark applicants face challenges when seeking to register actual items that are not listed in the classification table.
To avoid the potential correction procedure that may be encountered during registration due to applications for items not covered by the classification table, certain applicants may look for items in the table that are similar to their actual items for registration. However, in cases of trademark cancellations due to non-use over a three-year period, the trademark owner must provide evidence that the registered trademark has been used on the approved standard item to maintain its registration. For those using non-standard items, it is difficult to prove that using the trademark on these non-standard items concurs with using the trademark on approved items designated by the registered trademark.
MAINTAINING TM REGISTRATION
Generally, a trademark owner can prove that using a non-standard item can maintain the trademark registration on an approved item mainly in two ways. First, it can prove that the non-standard item actually used is substantially the same as the approved item.
In the administrative procedures for the cancellation review of the trademark “CKA”, the trademark was approved to be used on items of class 12 brake pads for automobiles and brake fan pads for delivery vehicles.
The trademark owner submitted evidence of using the trademark on auto brake linings, but the China National Intellectual Property Administration (CNIPA) decided that the evidence was insufficient to prove that the trademark owner used the trademark at issue on the approved items during the designated period.
The court of first instance held that, although the auto brake lining was not in the classification table, it essentially belonged to the brake pad for automobiles, on which the trademark at issue was approved for use, regarding functions, purposes, producers, sale channels and consumers.
Therefore, the court concluded that using the trademark at issue on auto brake linings could be considered for as use of the brake pad for automobiles.
Second, a trademark owner can prove that the item actually used is a subclass of the item approved. In administrative procedures for the cancellation review of the trademark “Natergy”, the trademark at issue was approved for use on items in class 1, such as the “getter” (a substance or device that effectively absorbs certain gas molecules), and the silicate, while the trademark owner actually used the trademark on the items of a 3A molecular sieve (a substance mainly used for drying insulating glass by absorbing its water vapour).
Both the CNIPA and the court of first instance held that the 3A molecular sieve was not a standard product listed in the classification table. Although the trademark owner claimed that the 3A molecular sieve was identical to the silicate because the silicate was the main component of the 3A molecular sieve, the main component should not be considered equivalent to the product synthesised from it.
The 3A molecular sieve can belong to industrial chemicals according to its function as a desiccant, but in view of the fact that there are no industrial chemicals in the approved items of the trademark at issue, the court of first instance held that the evidence could not maintain the registration of the trademark at issue.
In the second instance, the attorney was instructed by the trademark owner to file an appeal. After analysis, the attorney believed that the trademark owner’s 3A molecular sieve was closest to the getter, the approved item, and if it could prove that the 3A molecular sieve was a kind of getter, the registration of the trademark could be maintained.
The attorney conducted a search in a large number of technical documents and submitted the Getter Terms, a national standard produced by Nanjing Huadong Saisi Vacuum Material, the China Electronics Standardisation Research Institute, and the 12th Research Institute of China Electronics Technology Group Corporation. Also submitted were patent documents and books on the getter to prove that the 3A molecular sieve manufactured and sold by the trademark owner realised the function of the getter and was equivalent to, or one kind of, getter.
After the hearing, the court of second instance held that the main function of the 3A molecular sieve was one kind of function of the getter, and thus it could be identified as a subclass of the getter, and that the use of the trademark at issue on the 3A molecular sieve could be identified as the use of the trademark on the getter.
As seen in the above-mentioned cases, it is difficult to maintain a trademark registration on approved standard items by providing evidence of using the trademark on non-standard items.
According to the current trademark review standard and judicial practice, if the non-standard item actually used is not substantially the same as, or not a subclass of, the approved item, or is only similar to the approved item, the registration of the trademark at issue will not be maintained.
The use of the trademark at issue on the approved item can be maintained if the trademark owner can prove that the non-standard item actually used is the same as, or a subclass of, the approved item by submitting national standards, industry dictionaries and patent documents, and referring to the functions, purposes, sales channels, principles of action, etc., of the non-standard item in the actual production.
Considering that courts have a more stringent standard to review on whether a non-standard item actually used is the same as, or a subclass of, a standard item, the difficulty of proof and uncertainty of result in such cases are increased.
It is suggested that the trademark owner should try to register the item actually used when applying for trademark registration, particularly when the item actually used is a non-standard item. Although the trademark office may request the trademark owner to correct non-standard items, it can reduce the risk of cancelling trademark registrations due to failing to provide evidence of using the trademark on the approved item in the future.
Zhang Xue is an associate at Wan Rui Law Firm