Recently, the Beijing Intellectual Property Court issued a first-instance judgment in the administrative dispute between Inter IKEA Systems B.V. (“IKEA”) and the China National Intellectual Property Administration (“CNIPA”) over trademark revocation review. The Court revoked the CNIPA’s previous review decision that maintained the registration of the “SHENGDA YIJIA (literally meaning Shengda IKEA)” Trademark No. 1929144 and ordered the CNIPA to issue a new decision.
Case Background
The disputed Chinese characters trademark was filed for registration by Sichuan Shengda Home Technology Group Co., Ltd. (“Shengda Home”) on August 27, 2001. Its exclusive right is valid until November 20, 2032, and is approved for use on goods in Class 19, including wood and flooring.
As a world-renowned home furnishing enterprise, IKEA’s “IKEA” brand enjoys extremely high market reputation and distinctiveness. IKEA argued that all evidence submitted by Shengda Home to prove the use of the disputed trademark was self-made evidence, with doubtful authenticity and failure to form a complete evidence chain. Such evidence was insufficient to prove genuine and lawful commercial use of the trademark during the prescribed period from November 3, 2019 to November 2, 2022. IKEA therefore requested the court to revoke the CNIPA’s decision to maintain the trademark.
Key Focus: Doubtful Evidence Authenticity; Inconsistency Between Contract Original and Copy as a Breakthrough
The core issue of the case was whether the evidence submitted by Shengda Home could prove that the disputed trademark had been used in the sense of the Trademark Law during the prescribed period.
During the administrative stage, Shengda Home submitted copies of evidence including authorization letters, photos of actual trademark use, sales contracts, invoices and delivery notes, claiming that it had licensed relevant business entities to use the disputed trademark and that actual sales had occurred. However, IKEA challenged the authenticity of all the above evidence.
During litigation, the court, upon IKEA’s application, obtained the original sales contracts from the relevant counterparties. Upon verification, it was found that the copy of the contract submitted by Shengda Home indicated the product brand as “SHENGDA YIJIA”, while the original clearly marked the brand as “SHENGDA”, showing a clear inconsistency. Meanwhile, none of the invoices submitted displayed the disputed trademark “SHENGDA YIJIA”.
In addition, notarized evidence submitted by IKEA showed that the wood boards, wooden doors and other goods sold by Shengda Home and its authorized offline stores used the marks “SHENGDA HOME” or “SHENGDA”, and store staff also confirmed that no products under the “SHENGDA YIJIA” brand had ever been sold.
Court Judgment: No Genuine Use of the Disputed Trademark; Registration Shall Be Revoked
The court held that trademark use refers to commercial use for identifying the source of goods or services, and the relevant evidence must be authentic and valid. Although the evidence submitted by Shengda Home appeared to form an evidence chain in form, its authenticity could not be confirmed because no originals were provided for verification.
Based on the facts that the brand marked on the original contract obtained by the court was inconsistent with the copy, the invoices did not reflect the disputed trademark, and the trademark was not actually used in offline stores, the court finally ruled that the evidence submitted by Shengda Home was insufficient to prove that it and its licensees had made genuine, effective and lawful commercial use of the “SHENGDA YIJIA” trademark during the prescribed period.
Accordingly, the court revoked the relevant review decision made by the CNIPA and ordered it to issue a new decision.