Unitalen Representing Trademarks "亨吉利" and "HARMONY" Maintained Trademark Registration on Service of "Selling for others" in Class 35 and Successfully Revoking the Sued Ruling

August 28, 2023

Case Brief

Harmony World Watch Centre, as a chain group (hereinafter referred to as "Harmony Group") specializing in the distribution and service of world-renowned watches, has over 250 world-renowned watch chain stores in more than 60 provinces and cities across China. It has long used and promoted trademarks "" "" (hereinafter referred to as the "disputed trademarks") on services of "advertising, selling for others" in Class 35. In 2020, the disputed trademarks were proposed to be revoked by a certain enterprise on the grounds of being "unused for three consecutive years". The China National Intellectual Property Administration (CNIPA) held in the sued ruling that the evidence used in the case cannot prove that the disputed trademarks were used commercially on services of "selling for others, organization of exhibitions for commercial or advertising purposes", and revoked the registration of the above trademarks in these service items.

After being the agent of the case, the Unitalen litigation team accurately grasped the functional purposes of services such as "selling for others, organization of exhibitions for commercial or advertising purposes" by sorting out the evidence materials of the entire case at the CNIPA stage and further delving into it. The team also comprehensively presented and sorted out the evidence of trademark use during the three-year period to the Beijing Intellectual Property Court, thereby successfully revoking the sued decision and maintaining the registration of the disputed trademarks on services of "selling for others", "organization of exhibitions for commercial or advertising purposes" and similar services.

Case Background of Service of "Selling for others" in Class 35

As early as 2004, the former Trademark Office under the State Administration for Industry & Commerce provided an official reply with Trademark Shen Zi [2004] No. 171 as follows: shopping malls and supermarkets are enterprises that sell goods, and their main activities are wholesale and retail. Therefore, the service items in Class 35 of International Classification of Goods and Services for the Purposes of the Registration of Marks do not include "wholesale and retail of goods", and the services of shopping malls and supermarkets do not belong to this class. The content of service of "selling (for others)" in this class is to provide advice, planning, promotion, consulting, and other services for others to sell goods (services).

Based on this reply document, some relevant public have varying understandings of the service of "selling (for others)" in Class 35. In this regard, Guidelines for the Trial of Trademark Right Granting and Verification Administrative Cases implemented by Beijing Higher People's Court in April 2019 clarified the determination rules for use of trademarks on service of "selling for others" in Class 35. The CNIPA implemented the Guidelines on the Application for Registration and Use of Trademarks on Services in Class 35 in December 2022.

Typical Significance

According to statistical figures in the Research Report on the Protection of Service Trademarks in the Retail Industry of Goods issued by the Beijing Trademark Association in July 2022, "only 7% of retail enterprises have their trademark registration maintained" in "the revocation cases of trademarks of being unused for three consecutive years on services in Class 35". Moreover, the present case exactly provides a vivid case for the issue of identification of trademark use on service of "selling for others" in Class 35.