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“Subjective maliciousness” of trademark user is taken into consideration in trademark non-use cancellation case——WRIGLEY won the trademark non-use cancellation litigation case at Beijing Intellectual Property Court
2017-7-13

Regarding the non-use cancellation litigation lodged by WM. WRIGLEY JR. COMPANY (“WRIGLEY”) against the Trademark Review and Adjudication Board (“TRAB”) concerning the trademark “EXTRA” registered by the third party HUANG Wang, the Beijing Intellectual Property Court recently rendered the judgment (2017) Jing 73 Xing Chu No. 2357 which supported WRIGLEY’s requests.

When representing Wrigley in this case, we stressed that the evidence submitted by the third party cannot prove the disputed trademark "EXTRA" had been actually used for the designated three consecutive years, and requested the court to cancel the registration of the "EXTRA" trademark in respect of "toothpaste; mouthwash, not for medical purpose; perfume", etc. The third party submitted the distribution contract, invoice, letter of authorization, etc.. In addition to questioning the authenticity, legitimacy and relevance of the third party’s evidence, we emphasized the “subjective maliciousness” of the third party as a breakthrough point, trying to prove that the evidence of the third party cannot prove that it is “bona fide use” and the disputed trademark shall be cancelled.

Beijing Intellectual Property Court held that the third party registered/used WRIGLEY’s prior "EXTRA" and "益达" trademarks, which shows the third party’s bad faith to free-ride WRIGLEY’s reputation. By considering the bad faith of the third party, the court held that the evidence submitted by the third party cannot prove it is “bona fide use”, and cancelled the disputed mark. 

In this case, Beijing Intellectual Property Court adopted more stringent standards on the definition of "use of trademark" by fully considering the third party's subjective status, and judged that the evidence submitted by the third party cannot establish the "bona fide use" of the disputed trademark. The judgment followed the basic principle of Good Faith, fully respected the legislative purpose of trademark non-use cancellation system, that is, promoting the use of trademarks, exercising the function of trademark, and avoiding idleness and waste of trademark resources. This judgment as a model case also has important guiding significance and reference value on the “use of trademark” standard in trademark non-use cancellation cases.

Download:Judgment - 1904664.pdf
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