Authors：Michael Fu and Kim Dai

Overview：

This case is a typical non-use cancelation case, where the owner did not properly use its registered trademark.

Plaintiff registered "YET" trademark in Class 6 under Reg. No. 4080809 (hereinafter referred to as "Disputed Mark"). The designated goods include "wrought or semi-wrought steels" and "cast steels". In practice, Plaintiff is using Disputed Mark on "steel sheets; nickel-iron alloy strip; and etc."

TRAB held that "cast steels" and "steel sheets; nickel-iron alloy strip; and etc." are different products, so Plaintiff's use of "YET" mark on "steel sheets; nickel-iron alloy strip; and etc." shall not be considered in this case.

During the first instance litigation, we submitted supplementary evidence to prove the relationship between "cast steels" and "steel sheets; nickel-iron alloy strip; and etc." Combined with the evidence in TRAB procedure, such as official invoices, bill of landing and etc., we successfully persuaded the court to support us and maintain the registration of Disputed Mark.

Ⅰ. Case Backgroud：

Plaintiff, HITACHI METALS, LTD, owns a registration of "YET" in Class 6 under Reg. No. 4080809 (hereinafter referred to as "Disputed Mark"). The designated goods include "wrought or semi-wrought steels; cast steels".

In 2015, Third Party filed non-use cancelation against Disputed Mark. In response, Plaintiff submitted the scanned copies of purchase orders, bill of lading, packing list, debit note, and invoices. CTMO adopted the foregoing evidence and maintained the registration. Third Party was unsatisfied with the result and then filed a review of non-use cancelation. After review, Defendant held that the current evidence is insufficient to prove the trademark use of Disputed Mark during the disputed time period.

Considering the importance of Disputed Mark, Plaintiff filed an appeal before Beijing IP Court.

Ⅱ. Case Difficulties：

First, all evidence submitted by Plaintiff is about "nickel-iron alloy strip and other related goods", without any information about "wrought or semi-wrought steels" and "cast steels", on which Disputed Mark is registered.

Second, compared with TRAB, Beijing IP Court applies the stricter standard on evidence of use. In this case, Plaintiff did not provide any evidence in the original form.

Ⅲ. Case Strategies：

The main issue of non-use cancelation case is whether Plaintiff conducted actual, legal, and effective trademark use of disputed marks on designated goods during the disputed time period. After a careful review of the case file, we made the following strategy:

First, we try to locate evidence to prove the relationship between the goods the client used and the goods Disputed Mark designated. We paid a special visit to the National Library and searched the books on material science. Based on the knowledge, we learned "nickel-iron alloy" is a subclass of "cast steels".

Second, it is important to locate the relationship between goods used and goods designated, yet this means little if we cannot provide original evidence. Therefore, we got authorization to directly communicate with Plaintiff's local office in China. After fully explaining how crucial the originals are, we got support from the China office and they helped us to find the original official invoice. As for the rest pieces of evidence, China office is unable to provide the original, so we consulted the customs broker and learned the reasonable explanation.

Third, the purpose of Article 44.4 of Trademark Law is to encourage the trademark owners to use the trademark rather than punishing them. Even there are some flaws on Plaintiff's evidence, the evidence is strong enough to prove the high possibility of trademark use, and therefore, taking the current evidence and legislative spirit into consideration, the court shall maintain the registration of Disputed Mark.

Ⅳ. Typical Significances：

First, in non-use cancelation cases, the use of the disputed mark, on the sub-category goods of designated goods, can be recognized as an actual, legal, and effective use of the disputed mark.

Second, trademark owners shall pay more attention to collect original evidence from various aspects, only one kind of evidence is not sufficient to form an evidence chain and to prove the trademark use. If the owner can merely provide one type of evidence, the attorney shall prepare a reasonable explanation.

Third, in litigations on non-use cancelation, attorneys shall pay more attention to legitimate spirit, and try to persuade the court based on evidence at hand.