CHANG TSI
Insights
Carrier's trademark No. 175315, trademark No. 10493723, and trademark No. 288047 encountered cancellations initiated by a Chinese individual, Huang Jing, based on the grounds of non-use for three consecutive years. In order to maintain our client's trademark rights, we recommended that the client collect evidence of use of the trademarks and simultaneously file new backup applications. During the evidence collection process, we provided detailed evidence collection guidelines in both Chinese and English (including evidence types, evidence requirements, evidence parameters, etc.) to facilitate the client’s business in China in gathering the necessary evidence. We closely communicated with the client about the key points of evidence collection, organized the evidence provided by the client, and formed a complete evidence chain. At the same time, we also filed a new round of backup applications for trademarks No. 10493723 and No. 288047, which are in use by our client. In the end, the three trademarks mentioned above were successfully maintained for registration on all the designated goods. Currently, the client’s new trademark application No. 75866580 is pending review of refusal, and trademark application No. 76076908 was approved for registration on July 14, 2024.
Carrier's three core trademarks encountered simultaneous cancellation applications for non-use over three consecutive years across all designated goods. Carrier is required to provide evidence of use for the trademarks on all the designated goods from September 27, 2020 to September 26, 2023, within two months from receipt of the notifications. After communication, we learned that Carrier wanted to maintain the registrations of these three core trademarks. To counter the non-use cancellation actions and maintain the trademark registrations, we formulated a strategy that involved actively collecting evidence and submitting new trademark applications as a backup. Throughout the evidence collection process, we maintained close communication with Carrier's local business in China, providing detailed guidelines for evidence collection. Upon receiving the evidence, we promptly reviewed it and proposed additional collection suggestions to build a comprehensive evidence chain proving the use of the trademarks. Ultimately, through collecting and organizing the evidence, and linking the evidence chain in our defense arguments to emphasize the use of the trademarks on the designated goods, we successfully maintained the registrations of Carrier's three core trademarks.
First, we handled the defense against non-use cancellations at the early stage of our cooperation with Carrier. Initially, we had no evidence on hand to support these cases, so we needed to closely communicate with Carrier to begin collecting and organizing the evidence of use from scratch.
Second, the three trademarks of Carrier were registered in earlier years, and the specifications of designated goods slightly differed from those actually used by Carrier as shown in the evidence. It was necessary to match the goods in the evidence with the designated goods of the trademarks.
Third, the forms of use of the Carrier's three trademarks varied, including simplified Chinese trademarks, simplified Chinese and English trademarks and traditional Chinese and English trademarks. We need to sort out evidence showing use of different versions of the three trademarks and adjust the argument case by case.
In order to prove the use of Carrier's three trademarks and defend against the non-use cancellations, we adopted the following strategies:
1 Provide evidence collection guidelines: These cases are the first defenses against non-use cancellation that we handled for Carrier. Given this, we provided Carrier with detailed evidence collection guidelines, including evidence types, evidence requirements, and evidence parameters, and highlighted the key points of evidence collection work for Carrier. Per the client’s request, we also provided evidence collection guidelines in Chinese to Carrier’s local business for their easy reference.
2 Evidence collection and further recommendations: After receiving the evidence provided by Carrier, we carefully reviewed and organized it, identifying deficiencies such as uncovered goods and discrepancies between the form of trademark use and its registered form, etc. We then provided recommendations to Carrier for further evidence collection.
3 Evidence organization: To better demonstrate that Carrier's trademarks have been used on their designated goods, we matched the goods in the evidence with the designated goods of the trademarks, and organized and emphasized related evidence in a chart. We matched corresponding sales evidence, such as contracts and invoices, to form a complete evidence chain. In addition, we highlighted the promotional evidence within the prescribed time limit, such as news reports.
4 New applications: While preparing the defense, we also suggested filing backup applications to ensure the stability of Carrier's trademark rights.
In these cases are, Carrier's three trademarks are registered for its core product lines, and successfully maintaining these registrations is fundamental to the stability of Carrier's business operations. In addition, as trademark rights on Carrier's core goods, these three trademarks serve as important prior rights to combat third-party trademark squatting. Successfully maintaining these trademarks is crucial for the progress and success of ongoing and potential future conflict cases. Furthermore, a successful track record in defending against non-use cancellations will reduce the risk of Carrier's trademarks being challenged by third parties through such procedures. These cases also demonstrate that the legislative intent behind the non-use cancellation procedure is to encourage trademark owners to use their trademarks, rather than to penalize them. Actively collecting evidence of use and effectively defending against non-use cancellations contribute to the stability of the client's trademark rights.
