Sanyou Client: Shandong Natergy Energy Technology Co., Ltd.

Trial organ: Beijing Higher People's Court

Trial result: The registration of the trademark in dispute on the reviewed goods of "getter" was maintained, and part of the appeal reasons of Shandong Natergy Energy were deemed to be established. The court of second instance supported the reasons, overruled the judgment of first instance and the sued decision, and CNIPA made a new decision to revoke the review decision on the trademark in dispute.

Case Facts

Shandong Natergy Energy Technology Co., Ltd. (hereinafter referred to as Natergy) is a high-tech enterprise specializing in the production and R&D of 3A molecular sieves for insulating glass. On January 23, 2006, Natergy applied for the registration of the "Natergy" trademark No. 5134657, which was approved for use in Class 1 "getters; catalysts; silicates" and other products.

In October 2019, an energy company filed a trademark cancellation application on grounds of non-use for three consecutive years. At the trademark review stage, CNIPA considered that the evidence submitted by Natergy was insufficient to prove that the trademark in dispute had been used in real and effective commerce on the approved goods within the specified period, and revoked the trademark in dispute. Unsatisfied with the cancellation decision, Natergy filed a lawsuit with Beijing Intellectual Property Court. After the court heard the case, it was found that the goods shown in the evidence submitted by the plaintiff (Natergy) were all "3A molecular sieves", and the goods were not standardized goods in the "Classification Table for Similar Goods and Services".

Trail process

In the trial of first instance, the plaintiff believed that the product was the same as "silicate" (0102 (IV)), and therefore should maintain the registration in all designated goods of the disputed trademark, including "silicate". Investigation showed that silicate is the main component of "3A molecular sieve", and this main component should not be equivalent to the product synthesized from it. Therefore, the evidence submitted by the plaintiff was insufficient to prove the use of the disputed trademark on "silicate" goods. The court rejected the plaintiff's claim.

In the trial of second instance, in addition to further submitting relevant proof of use and evidence of popularity, Sanyou attorneys conducted a search on a massive amount of technical documents and submitted the "Aerosol Terminology - National Standards", patent documents related to aerosol and aerosol drawings based on the search results to prove that the "3A molecular sieve" products manufactured and sold by Natergy are mainly used for drying insulating glass. Its main function is to absorb water vapor in the insulating glass, achieving the function of a getter, which is equivalent to or belongs to a type of getter. In addition, similar previous cases involving non-standard product identification were searched and submitted by the Supreme Court, and evidence was submitted that Natergy's products with the disputed trademark were recognized and awarded by relevant industry and government departments. It was also stated that the disputed trademark was the only English trademark in the main business of the rights holder. If the trademark was revoked, it would cause difficulties for the rights holder's business operation and huge losses that will follow.

After the trial, the court of second instance held that the main function of "3A molecular sieve" in adsorbing water vapor belongs to the functional category of getters, and "3A molecular sieve" could be recognized as a subordinate concept of getters. The use of the disputed trademark on "3A molecular sieve" could be recognized as use on the reviewed goods "getter". Therefore, registration of the disputed trademark on the reviewed product "getter" should be maintained.

Typical significance

In cases where the goods actually used do not belong to the standardized goods in the "Classification of Similar Goods and Services", in order to avoid making corrections, a right holder generally selects goods that are closer to the goods actually used for registration by referring to the classification table when applying for a trademark. However, in cases of revocation on grounds of non-use for three consecutive years, the right holder needs to provide evidence to prove that the trademark has been used on the goods approved for use, this greatly increases the difficulty for the rights holder to provide evidence. In this case, Sanyou attorneys found key evidence after searching for a large amount of evidence, and claimed that the "3A molecular sieve" product actually used by the right holder is basically the same in functional use as the approved product, belonging to the subordinate concept of approved use product, which ultimately received support from the court.

For situations where the goods of actual use and the approved goods cannot fully correspond with each other, in addition to actively providing evidence to prove the association of the goods and trying to maintain trademark registration, it is advisable that the right holder choose the goods of actual use for registration when applying for trademark registration, especially when the actual use of goods is non-standard goods. Although the trademark application process may be notified by the Trademark Office that corrections are needed due to non-standard goods, it can effectively reduce the risk of trademark revocation in future trademark infringements due to the inability to provide evidence of use on approved goods.