The author will focus on the evidence collection in an administrative litigation for invalidation of a trademark and discuss the importance of evidence collection in trademark administrative litigation cases.

    1.    Case background

    Our client, Carrier Corporation (hereinafter referred to as "Carrier") is a global high-tech building system supplier with more than 53,000 employees worldwide and operations in more than 160 countries. Carrier’s iconic building system supply projects are used in world-renowned venues including the Beijing National Stadium and National Aquatics Center, the Sistine Chapel in Vatican City, and the Singapore International Exhibition Center. Carrier uses Carrier cooling oil while providing customers with building system services in China. However, as of the application for the invalidation of the disputed trademark, Carrier had not yet applied for the registration of the trademark, Carrier on cooling oil and other similar products.

    2.    Summary of the case

    The trademark No. 13468531 "Carrier and Device" (hereinafter referred to as "the disputed trademark") was applied for registration by Shanghai Guanxue Refrigeration Equipment Co., Ltd. (the third party in this case, hereinafter referred to as "Shanghai Guanxue"), and was designated to be used in class 4, subclass 0401, over the designated goods “industrial oil, engine oil, transmission belt grease, lubricating oil, white oil, heat transfer oil, industrial grease, xylene, mixed xylene, leather protection oil”. The disputed trademark was approved for registration on September 7, 2016.

    We represented Carrier filed an invalidation action against the disputed trademark. Our main grounds were that: 1) Carrier had used the "Carrier" trade name over the same or similar goods before the application date of the disputed trademark and had acquired certain influence; 2) The designated goods of the disputed trademark are closely related to those of the cited trademark (registered Carrier marks in other class) and constitute similar goods. The disputed trademark and the cited trademark constitute same trademarks on similar goods; 3) Shanghai Guanxue had been selling Carrier-related products in actual operations, and had contractual, business and/or other relationships with Carrier. Therefore, in accordance with Articles 32, 30, and 15 of Chinese Trademark Law, it shall be declared as invalid. Our claims were not support by the CNIPA and Beijing Intellectual Property Court during the review and the first instance of the administrative litigation.

    Then we represented Carrier in the appeal to the Beijing High Court, and supplemented some key evidence, and finally won the case in the second instance.

    3.    Case analysis

    The disputed issue of the case is whether the registration of the disputed trademark violates Article 32 of Chinese Trademark Law, Beijing High Court held that,

    In this case, the evidence submitted by Carrier, such as the Air Conditioning Equipment Maintenance Contracts signed by the affiliate company of Carrier, Carrier Air Conditioning Sales Service (Shanghai) Co., Ltd., the Customs declaration forms for Carrier brand refrigerated oil, and other evidence, can show that Carrier Air Conditioning Sales Service (Shanghai) Co., Ltd. continued to use the unregistered Carrier mark over lubricating oil and refrigerating oil products between 2010 and 2013.

    Combined with the media reports on many websites such as Marco Polo, Daoke Baba, Baidu Know, etc., that introduced Carrier’s refrigerated oil and refrigerated machine oil products, it can be proved that Carrier’s unregistered trademark Carrier over the similar goods has been previously used on the refrigerating oil product and has acquired certain influence.

    The disputed trademark is the combination of the English letter "Carrier" under the oval dark background, which is the same as the unregistered trademark Carrier used by Carrier prior to the application of the disputed mark. The designated goods of the disputed mark, lubricating oil, industrial oil are similar to the used goods, refrigerating oil and lubricant by Carrier, and the raw materials, production departments, sales channels, targeted consumers are highly overlapped, therefore, the designated goods of the disputed mark and the prior used mark constitute same or similar products.

    Shanghai Guanxue and Carrier are both companies in the fields of air conditioning and refrigeration. Shanghai Guanxue and above mentioned affiliated company of Carrier are both located in Shanghai. The official website of Shanghai Guanxue shows that “the company is engaged in importing and selling well-known foreign brands of refrigerated lubricants such as Carrier..." and showing evidence of several photos of refrigerating oil bearing different trademarks, thus it can be determined that Shanghai Guanxue should be aware of the trademark Carrier which had acquired certain influence by Carrier’s prior continuous use.

    In conclusion, Shanghai Guanxue’s application for registration on designated goods such as “industrial oil” constitutes the situation that the use of improper means to rush to register a trademark that has been used by others and has certain influence as mentioned in Article 32 of the Chinese Trademark Law. The judgment issued by Beijing Intellectual Property Court made an error in this regard, and shall be corrected. Carrier’s grounds of appeal have factual and legal basis, and shall be supported.

    4.    Key points in handling similar cases

    Carrier’s core business is the production of cooling and ventilation devices belonging to class 11. The goods designated by the disputed trademark are in class 4 and the goods are not similar to the designated goods of the client’s registered trademarks. The use and promotion evidence of the client’s trademark over these goods is relatively lacking. Carrier had not applied for registered trademarks at that moment, therefore it is relatively difficult to persuade the court that the registration of the disputed trademark violates Article 32 of the Chinese Trademark Law.

    However, during the preparation procedure of this case, we focused on the relationship between Carrier’s main cooling and ventilation devices and the designated goods in class 4, and actively explored the possibility of proving Carrier’s use of unregistered Carrier trademark over the related goods, and finally found the following key points:

    1. We noticed that the client has registered Carrier Air Conditioning Sales Service (Shanghai) Co., Ltd. in China and issued a list of evidence to the client, and asked the client to actively collect the importing and use evidence over the goods, lubricating oil, cooling oil, etc., and submitted the same to the court;

    2. We found that Shanghai Guanxue’s operating address is in Shanghai, which is close to Carrier’s affiliated company, and its official website shows that it sells Carrier brand refrigerated oil as an agent in China, which can further prove that it used improper means to preempt Carrier in the registration of the Carrier mark over the industrial oil and related goods.

    Through our unremitting efforts, we finally won the support of the court of second instance and safeguarded Carrier's legitimate rights and interests.

    Kangxin IP Platform-One-stop Smart Solution for a full range of IP services