Beijing Boao V Trademark Appeal Board of the State Administration for Commerce and Industry
    Publish time 2019-07-05 10:37    


Beijing Boao V Trademark Appeal Board of the State Administration for Commerce and Industry

[Summary of the case]


Boao Commerce and Trade Co (C&T Co) filed an application to the Trademark Office to register its trademark (Trademark) and had it approved on 14 July 1999. The Trademark is applied to products including feeders, massors, medical electronic blankets, nipples, hypnotic pillows, artificial breasts, contraceptive products, orthopedic equipment and medical exercise equipment, etc (Registered Products).


On 22 September 2002, Beijing Boao Biological Chip Co, with its name changed into Beijing Boao Biology Co (Biology Co) on 7 February 2006, applied to the Trademark Office for the revocation of the Trademark on the grounds that it had not been used on the Registered Products for three consecutive years. As required by the Trademark Office, C&T Co provided evidence to prove that the Trademark was actually used on the feeders from 22 July 1999 to 21 July 2002. Therefore, the Trademark Office considered that Biology Co’s request was unfounded and thus confirmed that the Trademark remained effective.


Notwithstanding acknowledging the fact that the Trademark was used on feeders, Biology Co applied to the Trademark Review and Adjudication Board (TRAB) on 13 May 2005 and requested the revocation of the Trademark on other Registered Products except the feeders. Again, C&T Co provided evidence showing that the Trademark was actually used on other Registered Products including medical electronic blankets, nipples, hypnotic pillows and massors. TRAB was of the view that medical exercise equipment was of a similar nature as massors in respect of function and usage and therefore the Trademark could be deemed to be used on medical exercise equipment as well. Hence, the Trademark used on the aforesaid products remained valid but that used on artificial breasts, contraceptive products and orthopedic equipment was declared to be invalid due to lack of evidence proving the use of the Trademark on such products. 


Unsatisfied with TRAB’s decision, C&T Co initiated proceedings against TRAB at the Beijing No 1 Intermediate Peoples’ Court (Intermediate Court). The Intermediate Court eventually ruled in favour of C&T Co. In May 2008, Biology Co, who was also the third party in the first instance, appealed to the Beijing High People’s Court (High Court), which dismissed the appeal and upheld the ruling of the Intermediate Court.


[The legal issues at stake]


At first glance, the legal issue in this case is whether the authority will revoke a trademark which is registered on many products where some of the products have not used this trademark for a consecutive three years. In this regard, Art 30(4) of the Trademark Law amended in 1993 (1993 Trademark Law) and Art 44(4) of the Trademark Law amended in 2001 (2001 Trademark Law) have a similar provision: 


“Where a registered trademark ceases to be used for consecutive three years, the TrademarkOffice could revoke the registered trademark.”


The above provision only indicates the circumstances under which a registered trademark is revocable but is unclear as to whether partial revocation is allowable under the Trademark Law.


On the other hand, Art 41 of the Implementation Rules specifically provides that:


“If the reasons for revoking a registered trademark concern only some of the products, the registered trademark that is used on these products shall be revoked.”


As stated above, although such provision constitutes a solid legal basis for partial revocation of a registered trademark, it should be noted that the enactment date of the Implementation Rules was on 3 August 2002, which was after the disputing period as in the present case. As such, this legal issue actually turns into whether the Implementation Rules is retrospectively applicable in this case.


TRAB held that Art 41 of the Implementation Rules should have retrospective effect and could be applied to the present case since the legislative intent of this provision was to prevent registered trademarks from being unused or wasted, which was in line with the intention of the Trademark Law. Differing from TRAB’s opinion, the two courts were of the view that, without explicit provision regarding partial revocation before the enactment of the Implementation Rules, it was impossible for any owner of a registered trademark to anticipate the legal consequence if the registered trademark was not used on some of the registered products. Thus, the interest of the owners would be impaired if the Implementation Rules were retrospectively applied to the cases that occurred before its enactment. Therefore, the Implementation Rules may not be retrospectively applied in this case and the Trademark remained valid on all the Registered Products of C&T Co.


[Commentary on the decision] 


The judges of the High Court do not limit themselves to the literal meaning of the provisions but resort to the Legislative Law, the legal principle and the previous practice of the TrademarkBureau to make a comprehensive explanation from theoretical and practical perspectives as to why the Implementation Rules is not applicable, which made the judgement comprehensive and convincing.


Firstly, the High Court held that Art 84 of the Legislative Law clearly stipulates that: 


“Laws, administrative regulations, local regulations, autonomous regulations and rules may not be applied retrospectively, except for special provisions which were made to better protect the interest of individuals, legal persons and other organizations.”


Since the Implementation Rules does not include such special provision, it may not be applied to review whether the Trademark was used during the period before the enactment of the Implementation Rules. 


Secondly, the High Court also confirmed that the legislative intention of the provision with respect to partial revocation of trademarks (ie Art 41 of the Implementation Rules) was to avoid the waste of resources and promote the efficient use of trademarks, which is indeed in line with the intention of the Trademark Law. However, before the enactment of the Implementation Rules, it is the common practice for the Trademark Office to regard a registered trademark valid as long as it has been used on one or part of the products. Such provisions and practice aim at ensuring the possible business diversification of the owner of a registered trademark. Under such circumstances, nobody could reasonably foresee the content of the Implementation Rules and its legal consequences if it is violated. For the purpose of protecting the interest of any individual or organisations which has been acquired by relying on the regulations and practice at that time, the Implementation Rules is not applicable in this case.




From this case, it should be noted that after 15 September 2002 when the Implementation Rules came into effect, a registered trademark may be partially revoked in the event that it is not used on some of the registered products. Therefore, it is important to ensure that a trademark is properly registered on different products as well as used on all of them so as to avoid partial revocation