The Italy-based Automobili Lamborghini S.p.A. was entangled into a trademark dispute with Wuhu Aocai Health Products Sales Co., Ltd. （Aocai） in Anhui Province over No.G977293 trademark "URUS" （trademark in dispute）。 Beijing High People's Court recently held that although Lamborghini had not put the goods carrying the trademark in dispute in the market during the period from November 18, 2013 to November 17, 2016 （the designated period）， there is valid evidence to prove its intention to use the trademark in dispute, and necessary preparations had been made, especially the vehicle products on which the trademark in dispute was approved to be used have been for sale in the Chinese market. Such continuous use after the designated period can also be regarded to prove that the trademark holder had a genuine intention for use, and the trademark in dispute shall not be cancelled on the ground of the three-consecutive-year non-use rule.
The exclusive period for obtaining a territorial extension protection of the trademark in dispute in China was from August 5, 2008 to August 5, 2018, and was approved to be used on Class 12 goods including automobiles and their parts. On November 18, 2016, Aocai pled with the former Trademark Office （former TMO） of the State Administration for Industry and Commerce （SAIC） to revoke the trademark in dispute on the ground of non-use for three consecutive years within the designated period. The former TMO found that the evidence of trademark use within the designated period submitted by Lamborghini was valid and decided not to revoke the trademark in dispute.
Aocai refused to accept the decision and applied to the former Trademark Review and Adjudication Board, also under the SAIC （former TRAB） for a review.
Lamborghini submitted to former TRAB a search report from the national library system with "URUS" as the search term within the designated period, as well as screenshots of promotional coverage on web sites, claiming that it had made substantial preparations for the commercial use of the trademark in dispute and the open, legitimate and real commercial use started from January 6, 2018 after government approval. The former TRAB, however, questioned the dynamics of the evidentiary chain for proving the required use, and consequently revoked the trademark in dispute.
Lamborghini then brought the case to Beijing IP Court, supplementing the documents related to the national library search report. During the trial, Lamborghini admitted that the trademark in dispute had not actually been used commercially within the designated period. But on January 6, 2018, the car affixed with the trademark in dispute was launched to the Chinese market in Beijing, which should be identified as the commencement of commercial use.
The trial Court held that the evidence can prove that Lamborghini had the genuine intention to use the disputed trademark. In the connection, the trial court rejected the TRAB's decision and ordered the China National Intellectual Property Administration （CNIPA） to make a de novo one （Note: CNIPA inherits the missions of the former TRAB after organizational restructuring of the central government）。
CNIPA then appealed to the Beijing High People's Court. After hearing, the court rejected CNIPA's appeal and upheld the first -instance judgment.
（by Wang Jing）
（Editor Jiang Shuo）
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