In 1994, Hong Kong Afasia Group had applied for the trademark, LEXUS(hereinafter referred to as competitive trademark), which is classified in the 11st category “electric fan”.
Toyota Motor Corporation applied for a revocation of competitive trademark with the reason of continuous nonuse of trademark for three years (calculation standard for three years: count back three years from the date of proposing the revocation). Trademark Appraisal Committee believed that the evidence for proving the use of competitive trademark on electric fan items within schedule time provided by Hong Kong Afasia Group was insufficient and decided to approve the revocation.
Later, Hong Kong Afasia Group instituted legal proceedings about trademark in Beijing Intellectual Property Court, stating that Trademark Appraisal Committee didn’t take the current situation of export declaration in China into consideration as identifying the relation between manufacturing enterprise and export declaration enterprise.
The business relationship between Hong Kong Afasia Group and African customers was built through China Import and Export Fair, Guangzhou. Hong Kong Afasia Group entrusts companies with direct authorization from Hong Kong Afasia Group in Foshan to start production after customers giving the orders.
The export activities of import and export agent company should be considered as the use for commercial purpose and the court should repeal the decision made by Trademark Appraisal Committee and remake new decision.
Beijing Intellectual Property Court made the first instance judgement after hearings, believing that the evidence for proving the use of competitive trademark on electric fan items within schedule time provided by Hong Kong Afasia Group was sufficient and concluding a decision that Trademark Appraisal Committee repeals the revocation and remakes decision.
Legal analysis
After verifying the integrality and probative force of evidences of the use of trademark provided by Hong Kong Afasia Group, it can be judged that, during reviews, Hong Kong Afasia Group has been applying the competitive trademark to the approved commodities and the transaction scale was relatively huge, which was considered as an active and true behavior of the use of trademark.
Accordingly, the final and principal dispute of this case was that if the use of competitive trademark in export trading was the use of trademark accords with 2001 Trademark Law of China mainland.
Beijing Intellectual Property Court believes that the foreign trading of Hong Kong Afasia Group was not totally isolated from China. Most of its commodity trading was to sign contracts with China domestic enterprises first, start the production or processing of approved commodities of competitive trademarks and then make export declaration by China import and export companies.
The performance of contracts and the behavior of commodities selling happen within China. Besides, during the processes of importer distinguishing and selecting different commodities by trademark logos and cooperating with various export merchants, trademark has been playing a role of distinguishing the sources of commodities and the competitive trademark was in a status of commercial use.
Therefore, the behavior of the use of competitive trademark by Hong Kong Afasia Group accords with the stipulation of 2001 Trademark Law of China mainland and the trademark logo was in actual use.
To verify the use of trademark evidence, please refer to:
How to Use Trademarks Legally in Trade Business in China?
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