Recently, Beijing High People's Court made a final judgment on the dispute between a Chinese company and a German company, whose English names contain the words "HANA" and "HAMA" respectively, over No.5372201 trademark "HANA" （trademark in dispute）。
The trademark in dispute was filed for registration by P.M.HANA （HK） LTD on May 24, 2006, and would be certified to be used on part of Class 16 goods and would be certified to be used on Class 16 goods such as paper, copy paper, note pad, envelope, sheet, stationery, pencil or household adhesive tape, sharpener and toilet paper on July 28, 2009.
On August 2, 2012, HAMA GmbH & Co. Kg from Germany lodged an invalidation request to the Trademark Office （TMO） of the former State Administration for Industry and Commerce of China （SAIC） on the ground that the trademark in dispute was not in actual use for three consecutive years from August 2, 2009 to August 1, 2012 （the designated period）。 At the examination stage, HANA submitted the evidence including purchases/sales contracts, invoices and bill of lading from its manufacturers Perfect Tech Enterprise Co., Ltd. and Hojo Industrial Co., Ltd. to prove actual use of the trademark in dispute in the designated period. On December 4, 2013, the TMO held that HANA's evidence was void and revoked the trademark in dispute.
On January 9, 2014, HANA took the issue to the SAIC's Trademark Review and Adjudication Board （TRAB）。 On January 23, 2015, the TRAB held that the evidence submitted by HANA can prove it used the trademark in dispute on the goods in question produced in China during the designated period. But the evidence cannot prove the use of the trademark in dispute on toilet paper. Accordingly, the TRAB decided to uphold the use of the trademark in dispute on the goods in question apart from toilet paper and revoke its use on toilet paper.
HAMA refused to accept the TRAB decision and claimed that the original equipment manufacturing （OEM） should not be regarded as the use of the trademark in China. The trademark in dispute should be all rejected. And HAMA lost the lawsuit in Beijing IP Court.
Beijing High held that the evidence submitted by HANA Company can prove that it produced the goods in question with the trademark in dispute through Perfect Tech Enterprise Company and Hojo Industrial Company in the designated period and exported them to Singapore and other countries, which is different from OEM. The trademark in dispute was in actual use on the goods in question during the designated period and its registration should be upheld. In this connection, the Court dismissed HAMA's appeal and affirmed the first-instance judgment. （by Wang Guohao）
（Editor Jiang Shuo）
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