Trademark owners sanctioned for falsified evidence

On November 3 2016 the Beijing IP Court issued its decision in a cancellation action concerning Chinese Trademark Registration 1486278, 家家 JIA JIA (subject mark), on the grounds of non-use. In addition to overruling the decision of the Trademark Review and Adjudication Board (TRAB) to maintain the registration of the 家家 JIA JIA mark, the court for the first time sanctioned the owners of the trademark for submitting falsified evidence in an attempt to deceive the court.

In 2013 Fujian Qianchuan Co Ltd filed a successful non-use cancellation action against the 家家 JIA JIA mark, which covered goods in Class 29 including ‘edible oil’. The owners of the trademark registration, Li Qiang and Bai Qing-Wei, appealed the cancellation of the mark to the TRAB and submitted evidence of prior use from 2010 to 2012, in the form of:

• test reports from food-testing centres
• sales invoices
• an outdoor advertisement permit, and
• Islamic food business approval certificates for the period 2010 to 2012.

On the basis of the evidence submitted by the registrants, the TRAB reversed the China Trademark Office decision and upheld the registration of the 家家 JIA JIA mark.

Qianchuan was convinced that the registrant’s evidence was forged or altered and proceeded to collect evidence to challenge the evidence of use. An application for administrative review of the TRAB’s decision to maintain the registration of the 家家 JIA JIA mark was then filed with the Beijing IP Court. 

Following a review of the two sets of evidence submitted by the parties, the court determined that the evidence submitted by the registrants was either forged or altered and rejected all of the prior use evidence which the TRAB had relied on for maintaining the 家家 JIA JIA mark. Consequently, the court ordered the cancellation of the registered 家家 JIA JIA mark. 

Shortly after and in accordance with Article 59 Clause 1(2) of the Administrative Procedural Law, the court issued a fine of Rmb10,000 – the maximum fine allowed by law – against the registrants for their deceitful actions and submitting forged evidence, along with a general statement from the court that engaging in deceitful actions such as forgery will be a costly mistake that will no longer be tolerated. In issuing the fine, the court identified the following issues in relation to the registrants’ evidence of use:

• The notarised test reports submitted by the registrants differed from original test reports obtained by the moving party directly from the food-testing centre. Although both the registrants and the moving party’s reports showed the same reference numbers, the registrants’ version of the test reports showed that a different brand was the subject of the testing. The court therefore decided that the registrants had altered the evidence of the test results.
• The copies submitted by the registrants of their notarised sales invoices showed the product name ‘edible oil’ along with the subject trademark. However, the court found another inconsistency when compared with the duplicate invoices submitted by the moving party, namely that the invoices submitted by the registrants showed only the type of goods that were the subject of the transaction (ie, edible oil), and not in association with the subject mark, as accepted by the TRAB.
• With regards to the outdoor advertisement permit, the evidence submitted by the registrants showed signs of alteration and was also inconsistent with the copy provided by the moving party. Specifically, one advertisement indicated a date of February 29 2013, however this same date was unavailable in another copy and, indeed, as 2013 was not a leap year this was not a valid date.

As the registrants were unable to provide a reasonable explanation for the discrepancies, the court rejected all of the registrants’ submitted evidence. 

A key message from this ruling is that proper evidence collection and formality procedures can thwart the effects of deceitful or untruthful conduct.

In this case, by obtaining duplicate sales invoices, requesting original test reports directly from the food-testing centres and obtaining a duplicate copy of the registrants’ original Islamic food business approval certificate, Qianchuan was able to take the further step of verifying the documents with the proper issuing authorities, thus leading to the flaws in the registrants’ evidence being uncovered. This extra step was crucial as it enabled the court to decide that Qianchuan’s evidence was more reliable than the registrants’ evidence, which ultimately led to the successful cancellation of the 家家 JIA JIA mark.

This article first appeared on World Trademark Review.