How to collect evidence of use to invalid trademarks registered in bad faith
date: 2021-05-07 Echo Xu Read by:

How to collect prior use evidence to invalid trademarks registered in bad faith gives many users a headache. The trademark is obviously used, but suffering from the difficulty of evidence collection, in the face of other people's applications or registered trademarks, there is no way to start. In terms of remedial measures, there are many measures that can be taken, such as filing trademark invalidation, filing administrative litigation on invalidation of trademark, etc. However, no matter which procedure is taken to protect rights, the use of evidence is the key point. This article will start from the analysis of a case to show that how to collect evidence from all aspects.

Background: our client CARRIER CORPORATION is one of the world's largest suppliers of refrigeration, air-conditioning equipment and related product maintenance service providers. The company was established in 1978 and began to apply for registration of the "Carrier" trademark on refrigeration and air-conditioning equipment in China in 1979, and has carried on the long-term continuous propaganda and use in the Chinese market. At present, the sales and maintenance stores of "Carrier" related products have already spread all over the country, and have been well known by the relevant public in China's refrigeration and air conditioning industry.

The "Carrier" trademark registered by others is "lubricating oil; engine oil; industrial oil" and other products in class 4. Regarding the "carrier" trademark in class 4, Carrier entrusted other law firms to file trademark invalidation according to Articles 15, 30 and 32 of the trademark law, which was not be supported. Then Carrier brought an administrative lawsuit of first instance, which was rejected by Beijing Intellectual Property Court, then the registered trademark of others was maintained.

Carrier entrusted us to act as its agent in the administrative litigation of the second instance of the case.

The key to collecting evidence is to comprehensively check the use situation and excavate the evidence in each link, so as to form a complete evidence chain. The following is an example of the trademark invalidation case “Carrier” trademark invalidation acted by us.

According to the communication with the client, Carrier also used the "Carrier" trademark on the refrigeration oil and lubricating oil, which are the supporting products of refrigeration equipment. However, Carrier did not register the trademark in time, which leads to others first registered in lubricants, industrial oil and other goods. Because the trademark applied for by others was earlier, and Carrier sold related products as the accessory, the evidence of independent use and publicity was less. We carefully checked the existing evidence of Carrier, including the materials submitted during the review and the first instance litigation. Because no evidence shows that the “Carrier” used on refrigeration oil product, the first instance failed. At the same time, the client found that the other party was sold Carrier’s refrigeration oil, but the other party was not the client's agent and they did not have any agency relationship, so the claim of article 15 of the Trademark Act was not supported.

During the second instance, by searching the case files, communicating with the client through telephone conferences and email, we gradually combed and excavated the traces that may be left in the whole process from production to sales of “Carrier” refrigeration oil to collect relevant evidence. We have provided a lot of evidence to support our appeal from the following three aspects:

From the source of imported product to sales, we dig into the evidence of use. Generally speaking, before the product appears on market, the product packaging needs to be designed by the company itself (there may be email exchanges of internal communication), or by the graphic design company (there may be the entrusted contract and the corresponding payment vouchers). At the same time, the product needs to be tested (with test report) before or after it appears on market. When we inquired about the preparation work before the product appears on market, the client told us that the refrigeration oil was not produced in China, but imported from abroad in original package. Our lawyer then asked whether the customer had the documents related to import, such as the customs declaration. The client said that there was a customs declaration form, but “Carrier” trademark would not be reflected on it. When we asked how to relate to Carrier refrigeration oil if there is no trademark, the client said that there are product numbers on the customs declaration, and the product numbers are also marked on the package of Carrier refrigeration oil. We suggest the client to collect customs declaration form and outer packing of products as much as possible. In addition, about sales, the client has submitted a large number of sales contracts, but they are all refrigeration equipment contracts. The client said that "Carrier" refrigeration oil is not the main product and there will be no separate sales contract. We asked the client whether the "Carrier" refrigerant oil would be included in the contract even if there was no separate contract and whether the price of refrigerant oil was indicated. According to our suggestion, the client collected some sales contracts related to "Carrier" refrigeration oil and lubricating oil as well as corresponding invoices. In these contracts, "Carrier" refrigeration oil appears in the list of maintenance parts and repair parts, and is marked with price, brand and product number. Through rounds of communication and evidence collection, from the details of product number, we can see that refrigerant oil and the corresponding product numbers are included in the product details in the customs declaration form, product outer package and the product detail attachment of sales contract, which can form a complete evidence chain. Except for the customs declaration form, the trademark is not directly reflected, however , the other evidences are marked with Carrier trademark.

In addition to the evidence collected by the client, our lawyers collect evidence of other agents selling and promoting "Carrier" refrigeration oil on the network platform according to the information provided by client. Through online collection, we found that before the application date of the other party registered the trademark in bad faith, many agents had introduced or promoted of our client's "Carrier" refrigeration oil products on the professional platform. We selected seven or eight websites that can directly reflect the trademark and product numbers as evidence and submitted them to the court of second instance.

In addition, during the second trial, we stressed that before applying for the "Carrier" trademark on "lubricating oil and industrial oil", the other party was aware of Carrier's sale of its refrigeration oil, because it advertised itself as the Carrier's domestic agent of refrigeration oil on its company's microblog website. Although we can not claim the agency relationship, it can prove that the other party has malicious intent to register the trademark by improper means.

The above evidence and claims were recognized by the court of second instance. The court finally found that the trademark registered by others violated the provisions of Article 32 of the Trademark Law, and that the trademark should be invalidated.

From this case, we can see that the excavation and collection of evidence is a very detailed work. With professional sensitivity, we shall use a magnifying glass to find and focus on the key information and present them to the judge.