Review Decision about Trademark No. 710567“GILBERTO”for Cancellation
Applicant (original cancellation respondent) : PEEK & CLOPPENBURG KG
Agent: Beijing Kangxin IP Agent Ltd
Respondent (original cancellation applicant) : ASOS PLC
Agent: Beijing Jinque IP Agent Ltd
The applicant applied for trademark review to the TRAB on account of disagree with the cancellation decision of No.200902996 on trademark “GILBERTO” (No. G710567) made by CTMO (China Trademark Office).
Trademark Office think that the use evidence from September 9, 2011 to September 8, 2014 provided by PEEK & CLOPPENBURG KG are invalid. According to Article 49 of Trademark Law and Article 66,67 of Implementing Rules of the Trademark Law, cancel the mark “GILBERTO”.
The main review reasons of applicant: The applicant is the biggest garment retailer in Germany. The mark always be used in China truly and continuously. The applicant hope the mark could be maintained. The respondent had reached a strategic cooperation with the applicant, the respondent will stop attack the trademark, and two sides are negotiating and request to slower examine this case provisionally.
Applicant submit following evidence:
1. 2011 sales statistics of GILBERTO brand in China;
Order, bill and Chinese translation (Contain factories around the world) provided by Jiaming Invest Ltd.
Applicant added the following main comments: The respondent had reach a compromise agreement with applicant, and they both agree the review mark could be remained; Cases have similar situation had be succeed registered. To sum up, applicant request to maintain the mark.
3. Specification about prior cancellation case.;
4. The compromise agreement;
5. Cancellation decision on No.3227161 mark “”
The main review reasons of applicant: The evidence that provided by applicant is so limited and only in a single form, can’t form a effective evidence chain. Besides, two parties decide to solve the conflict by negotiate, and request could suspend to judge this case after they come to an agreement.
Respondent submit following evidence:
1. Suspend trial application and translation;
2. Application of cancellation of non-use for 3 consecutive years signed by respondent;
3. Agreement signed by both parties and translation.
We already sent the respondent’s reply to applicant, and get following cross-examination views: They have come to an agreement, and request could suspend to judge this case.
After hearing, 1. The review mark owned by applicant, legally designated use on class 25, valid to February 26, 2019. September 9, 2014, this mark received a cancellation for the reason of non-use for 3 consecutive years on the goods of clothes, etc. Trademark office made a decision on July 21, 2015, announce the mark be canceled. The applicant dissatisfied with the decision and apply a review to us.
2. The compromise agreement not notarized or authorized.
The key point of this case is whether mark had been actual commercial used in specific goods. Commercial use refers to use mark on product, package, container or trade documents, or put it in advertisement or other business activities. In this case, evidence 1 is made by applicant himself, which is not clearly show the connection with review mark. Thus, efficacy is too weak to prove it is true. Evidence 2 couldn’t prove review mark had been used in mainland China.
Applicant submit a compromise agreement without notarized or authorized to request maintain the mark. But according to Article 49 of Trademark Law, review mark don’t have a reasonable reason to non-use for 3 years, and the agreement is lack of legislative authority, we’ll not support it.
According to Article 49 Section 2, Article 54 and 55, of Trademark Law, we decide:
The review mark will be cancelled.
If applicant dissatisfied with the decision, he could sue to Peking IP court within 30 days from receipt of it, simultaneously submit appeal to the court or by no later than 15 days to deliberate the copy, or otherwise notify us in writing form.