The People's Republic of China Beijing Intellectual Property Court Administrative Judgment

(2015) Jing Zhi Xing Chu Zi No. 2592

Plaintiff: MACY'S MERCHANDISING GROUP, INC.

Address: 11 Penn Plaza, New York City, State of New York, United States of America.

Legal Representative: Jay L. Monitz, Vice President

Entrusted Agent: Wu Di, female, Han nationality, born on August 3, 1977, trademark agent of LUNG TIN INTELLECTUAL PROPERTY AGENT LTD., domiciled at Floor 15, Building 3, Courtyard 38, Dongsanhuan North Road, Chaoyang District, Beijing, the People’s Republic of China.

Entrusted Agent: Sui Ping, female, Han nationality, born on December 1, 1984, trademark agent of LUNG TIN INTELLECTUAL PROPERTY AGENT LTD., domiciled at Room 286, Unit 1, Building 5, Oriental Hawaii North Area, Yanjiao Development Area, Sanhe City, Hebei Province, the People’s Republic of China.

Defendant: Trademark Review and Adjudication Board of the State Administration for Industry & Commerce of the People's Republic of China

Domicile: No.1, South Chama Street, Xicheng District, Beijing, the People’s Republic of China

Legal Representative: Zhao Gang, Director

Entrusted Agent: Xu Wenjing, examiner of the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce of the People's Republic of China.

Third Party: EDCON LIMITED

Address: Edgar Dale, 1 Preiss Street, Crown Mine, Johannesburg, Gauteng, the Republic of South Africa.

Legal Representative: Wilks Charles Mozwanli, Company Secretary

Entrust Agent: Yan Chunde, attorney of Beijing Unitalen Law Office Shanghai Branch

Entrust Agent: Huang Ying, attorney of Beijing Unitalen Law Office Shanghai Branch

The Plaintiff, MACY’S MERCHANDISING GROUP, INC. (hereinafter referred to as "MACY’S"), brought within the statutory period to the Court an administrative litigation against the Decision concerning Review on Revocation of the Trademark “CHARTER CLUB” No. 1192709 (Shang Ping Zi (2015) No. 18035) (hereinafter referred to as "Sued Decision") made by the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce of the People's Republic of China (hereinafter referred to as “TRAB”) on January 30, 2015 in the case of administrative dispute over review on trademark revocation. After accepting this Case on May 4, 2015, the Court formed a collegiate bench according to law and told EDCON LIMITED (hereinafter referred to as “EDCON”) to participate in the litigation as a third party to this Case. On July 25, 2017, the Court heard this case in an open court. Sui Ping, entrusted agent of the Plaintiff MACY’S, appeared before the Court. The Defendant, TRAB, failed to appear before the Court upon summons by the Court without justified reasons. Therefore, the Court heard this case in default of the Defendant. The Third Party, EDCON, failed to appear before the Court upon summons by the Court without justified reasons, which does not affect the hearing of this Case in accordance with the law. Now the hearing of this case has come to an end.

The Sued Decision was made by TRAB with respect to EDCON’s application for revocation of the review on the trademark “CHARTER CLUB” No. 1192709 (hereinafter referred to as "Disputed Trademark"). The Sued Decision affirmed that the dispute of this Case focused on whether MACY’S used the Disputed Trademark on the designated goods according to the Trademark Law during the period from February 6, 2009 to February 5, 2012. The evidence submitted by MACY’S fails to form an evidence chain effectively proving that it commercially used the Disputed Trademark on clothing (i.e. sports coats and other goods) during the period from February 6, 2009 to February 5, 2012. According to the provisions of Article 44.4 of the Trademark Law of the People's Republic of China which took effect in 2001 (hereinafter referred to as "Trademark Law 2001 ") and Articles 54 and 55 of the Trademark Law of the People's Republic of China which took effect in 2014 (hereinafter referred to as "Trademark Law 2014"), TRAB decided to revoke the Disputed Trademark.

The Plaintiff, MACY’S, claims that MACY’S is a well-known American company that values the Chinese market, and China is the location of the main factory processing products using the Disputed Trademark. The evidences submitted by MACY’S are sufficient to prove that the Disputed Trademark was lawfully and effectively used during the designated period. Chinese consumers have a certain degree of awareness of garments using the Disputed Trademark, and know that the Disputed Trademark is a trademark of the Plaintiff, and the decision to revoke the Disputed Trademark will lead to market turmoil. The Sued Decision was made with wrong establishment of facts and wrong application of laws; therefore, MACY’S requests the Court to revoke the Disputed Decision and order the Defendant to make a decision again.

The Defendant TRAB argues that the Sued Decision was made with clear establishment of facts, correct application of laws and legal procedures, and the conclusions of the Disputed Decision were correct, so asks the Court to reject the claims of the Plaintiff.

The Third Party, EDCON, fails to appear before the Court, nor submits written opinions to the Court.

It is ascertained through hearing of this Case that:

The Disputed Trademark is the trademark “CHARTER CLUB” No.1192709. Federated Department Stores, Inc filed an application for registering the Disputed Trademark with the Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China (hereinafter referred to as the “Trademark Office”) on April 15, 1997, and the Trademark Office approved the registration on July 21, 1998. The Disputed Trademark was approved to be used on goods under Class 25, i.e. clothing, such as sports coats, jackets, skirts, trousers, sweaters, knit coats, shirts, blouses, shorts, suits, pantyhose, socks, tights, shoes, scarves, gloves, garment belts. On April 1, 2008, the Disputed Trademark was transferred to MACY’S. After renewal, the exclusive right to use the Disputed Trademark expires on July 20, 2018.

On February 6, 2012, the Trademark Office accepted the application for revocation of the registration of the Disputed Trademark on the approved goods filed by EDCON on the ground that the Disputed Trademark was not used for a period of more than three consecutive years, and requested MACY’S to submit evidences proving that the Disputed Trademark was used during the period from February 6, 2009 to February 5, 2012. Within the stipulated time limit, MACY’S submitted evidence materials proving the use of the Disputed Trademark. On September 29, 2013, the Trademark Office made a decision (Che No.201200639) on the application for revocation of the trademark “CHARTER CLUB” No. 1192709 for non-use for a period of more than three consecutive years (hereinafter referred to as "Decision of Che No.201200639"), affirming that the grounds for revocation made by EDCON are untenable and deciding that the Disputed Trademark continues to be effective.

EDCON did not accept the Decision of Che No.201200639 and on November 7, 2013, filed with the Trademark Office an application for review.

MACY’S submitted to TRAB the following evidences:

Evidence 1: Main contracts between MACY’S and Beijing Golden Eagle Cashmere Garment Co., Ltd. dated on March 25, 2009, May 10, 2010, and June 21, 2011, relevant commercial invoices, cargo receipts, shipping lists, lists of collection of cargo, customs declarations, and photos of material objects; the relevant goods are cashmere sweaters for women.

Evidence 2: Main contracts between MACY’S and Greenway Group Holding Investment Ltd. dated on August 24, 2011 and November 25, 2011, relevant commercial invoices, cargo receipts, customs declarations, and cargo lists; the relevant goods are nightwear and knitted long sleeved coats for women. The manufactures indicated on commercial invoices are Dongguan Houwun Garment Products Co., Ltd. (hereinafter referred to as “Houwun Company”); and both the Customs Export Declaration Form of the People’s Republic of China prepared on November 2, 2011 and the Customs Export Declaration Form of the People’s Republic of China prepared on January 8, 2010 indicate the following information: Business Unit: Houwun Company; Delivery Unit: Houwun Company; kind of Tax: processing supplied materials; Final Destination Country: The United Sates; Shipping Marks and Remarks: "brand: CHARTER CLUB". The arrival country indicated on the Customs Export Declaration Form of the People’s Republic of China prepared on November 2, 2011 is China.

Evidence 3: Main contracts between MACY’S and Shanghai Shengda Textile Co., Ltd. (hereinafter referred to as "Shengda Company") dated on May 3, 2010 and May 18, 2010, relevant commercial invoices, customs declarations, and photos of material objects; the relevant goods are scarves for women. Both the Customs Export Declaration Form of the People’s Republic of China prepared on June 17, 2010 and the Customs Export Declaration Form of the People’s Republic of China prepared on July 3, 2010 indicate the following information: Business Unit: Shengda Company; Delivery Unit: Shengda Company; kind of Tax: general taxation; Product Name: "no brand".