Recently, a trademark revocation review administrative litigation case represented by the Trademark Team of Liu Shen has been named one of the Top Ten Cases of 2023–2024 by the Quality Brand Protection Committee (QBPC), ranking first among all administrative cases.
This case concerns a trademark non-use revocation action for non-use over three consecutive years. Acting for Emerson Electric Co., Liu Shen filed an application for revocation of a third party’s preemptively registered trademark “艾默生 EMERSON” on the ground of non-use for three years. During the administrative review stage, the National Intellectual Property Administration (CNIPA) upheld the trademark registration, holding that the registrant had proven valid use of the disputed trademark within the statutory three-year period by submitting sales contracts, invoices and other evidentiary documents. In the first-instance proceeding, harboring reasonable doubts over the registrant’s key evidence—the sales contract—and aware that the counterparty to the contract was an enterprise with stringent internal management systems, our legal representatives applied to the collegial panel for a Lawyer’s Investigation Order. Evidence obtained from the counterparty pursuant to the Investigation Order showed that the version of the identical contract kept by the counterparty did not contain the disputed trademark at issue. Given that the contract counterparty was an uninterested third party to the case, the first-instance court declined to admit the sales contract submitted by the trademark registrant, due to material discrepancies between the two versions of the same contract. The court thus excluded this key piece of evidence and rendered a judgment to revoke the challenged administrative decision.
The second-instance court affirmed the first-instance judgment on identical grounds. The case achieved the client’s expected outcome and received high praise from the client.
A prominent pervasive issue in trademark non-use revocation proceedings is the widespread submission of fraudulent evidentiary materials, which are notoriously difficult to verify. In 2021, the Beijing Intellectual Property Court released a set of Model Cases on Sanctions for Perjury in Trademark Right Revocation Review Administrative Cases, whereby illegally obtained or forged evidence was excluded from consideration. Notably, the documents involved in those model cases—such as invoices, inspection reports (for pharmaceuticals and cosmetics), and advertising registration certificates—are verifiable via public channels, and are therefore rarely relied upon by parties seeking to submit fabricated evidence. By contrast, commercial contracts concluded between business entities are not accessible to public inspection, making them a high-risk area for forged evidence in trademark proceedings.
In this matter, Partners HE Changhong and LI Jiawen of Liu Shen demonstrated professional acumen in raising reasonable doubts over the evidence and showed utmost dedication to case handling. They adopted an innovative procedural approach by applying to the court for a Lawyer’s Investigation Order. Against the backdrop of growing social integrity awareness and enhanced corporate compliance standards, this case sets a valuable precedent for handling trademark non-use revocation matters. It also embodies the consistent commitment of Liu Shen attorneys to go the extra mile to safeguard clients’ legitimate rights and interests.
