Denmark-based STARK Prevails in Trademark Dispute

发布时间: 2018/3/21 11:03:00

  Six years is what it took for the Denmark-based STARK Group to go toe-to-toe with a Dongguan (Guangdong) company over a trademark and the persistence of the Danish company eventually paid off.  Lanshan Industrial Company from Dongguan, Guangdong Province were involved in a six-year dispute around.

  Recently, Beijing High People's Court revoked the judgment of the first instance dismissing the claim from Lanshan, the Dongugan company and revoking the registration of  No.4658838 trademark "Lanshan" (Note: English translation is "Blue Mountain") on the ground that it had failed to prove effective prior use within the designated period.

  According to file, the relevant registration application of the trademark in dispute was furnished by a natural person surnamed Fan on May 16, 2005 and was approved on September 14, 2008, certified on Class 21 products including manually-operated coffee grinders. On September 30, 2008, Fan signed a trademark licensing agreement with Lanshan Foods Company, permitting use of the trademark in dispute.

  On July 24, 2012, STARK petitioned to the Trademark Office (TMO) under SAIC to withdraw the application of the trademark in dispute on the ground that it was not used in the three consecutive years between July 24, 2009 and July 23, 2012 (designated period)。 After examination, TMO withdrew registration of the trademark in dispute on November 21, 2013.

  On April 1, 2014, the transfer of the trademark in dispute to Lanshan was approved by TMO. Then Lanshan requested the Trademark Review and Adjudication Board (TRAB) for review on December 20 of the same year, and submitted exhibits including its business licenses and copies of sales receipts of products  in an effort to prove its actual use of the trademark in dispute during the designated period.

  On January 21, 2015, TRAB made a ruling to cancel the trademark in dispute, holding that the exhibits furnished by Lanshan were either its own handiwork or could not be substantiated by other verifiable exhibits, unable to prove use of the trademark in dispute during the designated period.

  Lanshan then brought the case to Beijing IP Court, which gave a nod to Lanshan's exhibits, admitting actual use of the trademark in dispute on the products of small manually-operated bean grinders. As manually-operated bean grinders and manually-operated coffee grinders were similar with the class of products certified.

  Accordingly, Beijing IP Court made the first-instance judgment, revoking the decision made by TRAB and ordered TRAB to make a new decision. The disgruntled TRAB then appealed to Beijing High People's Court.

  After hearing, Beijing High held that Lanshan failed to prove actual use of the trademark in dispute on small manually-operated bean grinders, and they were not part of the certified products even actual use was taken into consideration. Therefore, the use of Lanshan could not be clearly connected with the products certified, and the public could not associate the trademark in dispute with the products certified.  In fact, the trademark in dispute could not complete the mission of distinguishing the source of the products.

  In this connection, Beijing High revoked the judgment of the first instance and rejected the request from Lanshan. (by Wang Guohao)

  (Editor Li Xingyi)

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