When facing a trademark dispute, many companies may choose to file an invalidation request rather than file a cancellation request to protect their interests. But this time,  ANNA SUI CORP. filed a request for the cancellation to trademark “ANNA SUI” in class 43, which has aroused people’s attention.

BACKGROUND

On August 25, 2019, ANNA SUI Corp. filed a trademark cancellation request based on non-use for three consecutive years against the trademark "ANNA SUI"（hereinafter referred to as the disputed trademark）. The trademark owner Qiyue Wang was required to submit the use evidence of the trademark within August 25, 2016 and August 25, 2019.

The disputed trademark was registered on October 14, 2015 in respect of the service in Class 43. The owner needed to submit the evidence that designated on the services residence, coffee shop, cafeteria, restaurant, fast-food restaurant, bar, mobile catering, teahouse and daycare.

The owner submitted the evidence within the designated period. The evidence was the disputed trademark authorization letter with the third parties, the use and promotion of the disputed trademark on the social websites, the use of the disputed trademark on store signs, restaurant carpets, coffee cups, the reports of the disputed trademark on the designated services by the relevant media, the introduction of the owner’s book and the receipt of the owner’s shop.

CNIPA held the evidence was useless and canceled the registration of the disputed trademark. The owner disagreed with the decision and filed an appeal on September 1, 2020.

ANNA SUI CORP. argued that the authorization letters were forged by the owner. The use evidence and promotion on the social website was overdue. The trademark used on store signs, restaurant carpets, coffee cups was different from the disputed trademark. And the reports didn’t show the formed time, the introduction and the receipt couldn’t show the trademark. Hence, the evidence submitted by the owner was useless.

DECISION

According to the examination, CNIPA believed that 

1. The authorization letters only proved that the licensee had the right to use the disputed trademark, and it needs to combine the evidence of use on the services provided by the licensee to determine the use of the disputed trademark.

2. The promotions and reports were webpage evidence with certain unstable factors and the authenticity was difficult to confirm.

3. The use of the disputed trademark on store signs, restaurant carpets, coffee cups, the introduction and the receipts were unilateral self-made evidence, which couldn’t prove their authenticity and couldn’t prove the formed time.

Hence, CNIPA held that the evidence submitted by the owner could not form a complete chain of evidence. The evidence cannot prove that the owner carried out effective commercial use of the disputed trademark during the required time. CNIPA stated that the disputed trademark was canceled.

COMMENTS

To avoid the cancellation, a trademark needs to be used in commerce. The owner requires to submit a clear chain of evidence showing the use of the trademark in relation to the goods/ services for the registered trademark within the required three consecutive years.

Please note that the use evidence should prove the trademark has been used in China rather than other countries..

In this case, we can know that although the owner submitted the use evidence, the trademark still has a chance to be canceled because the evidence is insufficient. When submitting the evidence, CNIPA may not accept the webpage evidence due to its weak authenticity. The owner is required to submit other powerful evidence together, such as the invoices, contracts and other commercial documents which can show the trademark.

The purpose of trademark registration is to use the trademark. If the owner doesn’t use the trademark for a long time, it is a waste of the trademark resources. The role of trademark cannot be reflected. Therefore, after getting the registration of a trademark, the trademark owner needs to use his trademark in commerce and collect the evidence, which may maintain the trademark’s right. Otherwise, the owner will easily lose his trademark when a third party files a cancellation request of the trademark based on non-use in three consecutive years. If a trademark owner hasn’t used the trademark, please use it in a right way as soon as possible.