On February 18, 2025, the Beijing IP Court published an article introducing an administrative case on nonuse cancellation and discussed a few rules regarding the trademark use on its WeChat public account.
[Case summary]
The Disputed Trademark is No. 27293140 “北窗NORTH WINDOW” registered in relation to “common metal alloys; aluminum; sheet metal and sheet metal; metal accessories for construction; metal door panels; metal door frames; metal doors; etc.” in Class 6 from October 28, 2018 to October 27, 2028. In the original decision on the review of the nonuse cancellation of the Disputed Trademark, the CNIPA considered the use evidence at hand failed to prove the authentic, legal, and effective use thereof on the relevant goods and therefore canceled the Disputed Trademark.
Due to dissatisfaction with the decision above, the owner of the Disputed Trademark brought an administrative lawsuit against the CNIPA to the Beijing IP Court (the Court). Upon examination, the Court considered that the use evidence provided by the owner of the Disputed Trademark included, but not limited to: 1) the owner’s authorizations to two other companies to use the Disputed Trademark and the advertising promotion of the Disputed Trademark under the accounts “北窗门窗” etc. operated by one of its licensees; 2) introduction video of the cross-section internal system of metal frames submitted by the owner and there was word marks, such as “北窗NORTH WINDOW” displaying beside the said cross-section; 3) a black “L” shaped part submitted during the litigation phase which marked with “北窗”, as well as a video published on a platform showing that the said part placed on the four corners of a metal part, and so on.
According to the Court, the use evidence mentioned in point 2 above belongs to the direct engraving of the logo on the commodity, which is in line with the commodity display practice of the industry, as the small cross-section thereof is used to illustrate the sealing, waterproofing, sound insulation, heat insulation, and other effects of the materials. As to the L-shaped parts mentioned in point 3, it is also a common practice in the industry to engrave the trademark logo on the relevant goods and to display the goods by displaying a partial or proportionally reduced version of the goods. In addition, the videos published on social platforms by the owner regarding its displayed sample metal windows and metal doors also show the word mark “北窗NORTH WINDOW”, and it can prove that the owner had actually used the “北窗NORTH WINDOW” word mark.
It is also worth noting that the Disputed Trademark “ ” is arranged in a manner that the Chinese “北窗” on the upper side, whereas the corresponding English “NORTH WINDOW” on the bottom. On the other hand, the trademark shown in the video evidence provided by the owner was arranged with the English “NORTH WINDOW” on top of the Chinese “北窗”. Nevertheless, the Court did not consider such a change of position in the actual use thereof would have a substantial impact on the identification and effect of the Disputed Trademark by the relevant public and recognized that the submitted evidence can corroborate with each other that the Disputed Trademark had been genuinely and effectively in legal use in relation to the relevant goods within the designated period. In a word, the Disputed Trademark was maintained for registration.
The said decision was also maintained by the second instance court, the Beijing High People’s Court, and the judgment has come into effect.
[Comment]
This case is enlightening on two points when it comes to proving the authentic, effective, and legal use of a trademark:
One is to have an authentic intention to use the trademark, which means that a sporadic, occasional and nominal trademark use in order to maintain the registered trademark does not count as an authentic use, as it is often used in a very small scale and does not have any substantial impact on the market. On the other hand, as long as a trademark is used to on the designated goods/service, has played its role in identifying the source of goods/services, and it has been used publicly, legally and genuinely under the control of the trademark owner, it can be deemed to have been used. Thus, it is important to provide use evidence that can show the trademark has been used on the goods/services that are actually in the circulation link in the market and have the function to identify the source of the goods/service as it is supposed to.
The other point is to use the trademark without changing its distinctiveness. In this case, some actual use of the Disputed Trademark reversed the position of its Chinese and English element compared to its registration in the CTO. Nevertheless, the Court still recognized such use as the use of the Disputed Trademark “It does not change its distinctiveness, and it will not have a substantial impact on the identification of the Disputed Trademark and the role of the Disputed Trademark by the relevant public.” Ideally, a trademark should be used in the way it shows on its Registration Certificate. But if an actually used trademark is slightly different from its registration assuming that such difference does not change its distinctiveness, it may still be considered as a trademark use. According to the Court, the following practices might be considered: the mark constitutes basically the same, only the method of writing the registered word mark is changed (including the conversion between fonts, the conversion between traditional Chinese characters and simplified characters, the conversion between horizontal and vertical characters, the conversion of Roman capitalization, etc.), and changes in the arrangement and interchange of positions between the constituent elements of a trademark. Nevertheless, for the purpose of avoiding unnecessary risk, it is still recommend for the trademark owner to use its trademark the way it is registered.
[Case summary]
The Disputed Trademark is No. 27293140 “北窗NORTH WINDOW” registered in relation to “common metal alloys; aluminum; sheet metal and sheet metal; metal accessories for construction; metal door panels; metal door frames; metal doors; etc.” in Class 6 from October 28, 2018 to October 27, 2028. In the original decision on the review of the nonuse cancellation of the Disputed Trademark, the CNIPA considered the use evidence at hand failed to prove the authentic, legal, and effective use thereof on the relevant goods and therefore canceled the Disputed Trademark.
Due to dissatisfaction with the decision above, the owner of the Disputed Trademark brought an administrative lawsuit against the CNIPA to the Beijing IP Court (the Court). Upon examination, the Court considered that the use evidence provided by the owner of the Disputed Trademark included, but not limited to: 1) the owner’s authorizations to two other companies to use the Disputed Trademark and the advertising promotion of the Disputed Trademark under the accounts “北窗门窗” etc. operated by one of its licensees; 2) introduction video of the cross-section internal system of metal frames submitted by the owner and there was word marks, such as “北窗NORTH WINDOW” displaying beside the said cross-section; 3) a black “L” shaped part submitted during the litigation phase which marked with “北窗”, as well as a video published on a platform showing that the said part placed on the four corners of a metal part, and so on.
According to the Court, the use evidence mentioned in point 2 above belongs to the direct engraving of the logo on the commodity, which is in line with the commodity display practice of the industry, as the small cross-section thereof is used to illustrate the sealing, waterproofing, sound insulation, heat insulation, and other effects of the materials. As to the L-shaped parts mentioned in point 3, it is also a common practice in the industry to engrave the trademark logo on the relevant goods and to display the goods by displaying a partial or proportionally reduced version of the goods. In addition, the videos published on social platforms by the owner regarding its displayed sample metal windows and metal doors also show the word mark “北窗NORTH WINDOW”, and it can prove that the owner had actually used the “北窗NORTH WINDOW” word mark.
It is also worth noting that the Disputed Trademark “ ” is arranged in a manner that the Chinese “北窗” on the upper side, whereas the corresponding English “NORTH WINDOW” on the bottom. On the other hand, the trademark shown in the video evidence provided by the owner was arranged with the English “NORTH WINDOW” on top of the Chinese “北窗”. Nevertheless, the Court did not consider such a change of position in the actual use thereof would have a substantial impact on the identification and effect of the Disputed Trademark by the relevant public and recognized that the submitted evidence can corroborate with each other that the Disputed Trademark had been genuinely and effectively in legal use in relation to the relevant goods within the designated period. In a word, the Disputed Trademark was maintained for registration.
The said decision was also maintained by the second instance court, the Beijing High People’s Court, and the judgment has come into effect.
[Comment]
This case is enlightening on two points when it comes to proving the authentic, effective, and legal use of a trademark:
One is to have an authentic intention to use the trademark, which means that a sporadic, occasional and nominal trademark use in order to maintain the registered trademark does not count as an authentic use, as it is often used in a very small scale and does not have any substantial impact on the market. On the other hand, as long as a trademark is used to on the designated goods/service, has played its role in identifying the source of goods/services, and it has been used publicly, legally and genuinely under the control of the trademark owner, it can be deemed to have been used. Thus, it is important to provide use evidence that can show the trademark has been used on the goods/services that are actually in the circulation link in the market and have the function to identify the source of the goods/service as it is supposed to.
The other point is to use the trademark without changing its distinctiveness. In this case, some actual use of the Disputed Trademark reversed the position of its Chinese and English element compared to its registration in the CTO. Nevertheless, the Court still recognized such use as the use of the Disputed Trademark “It does not change its distinctiveness, and it will not have a substantial impact on the identification of the Disputed Trademark and the role of the Disputed Trademark by the relevant public.” Ideally, a trademark should be used in the way it shows on its Registration Certificate. But if an actually used trademark is slightly different from its registration assuming that such difference does not change its distinctiveness, it may still be considered as a trademark use. According to the Court, the following practices might be considered: the mark constitutes basically the same, only the method of writing the registered word mark is changed (including the conversion between fonts, the conversion between traditional Chinese characters and simplified characters, the conversion between horizontal and vertical characters, the conversion of Roman capitalization, etc.), and changes in the arrangement and interchange of positions between the constituent elements of a trademark. Nevertheless, for the purpose of avoiding unnecessary risk, it is still recommend for the trademark owner to use its trademark the way it is registered.