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The Case of Transfer Dispute of Trademark “LAORENTO”
来源: 作者: 时间: 2013-4-19 13:57:37

The Case of Transfer Dispute of Trademark “LAORENTO”

The Administrative Judgment of Beijing No. 1 Intermediate People’s Court

 (2005) Z.H.C.Z. No.493

 

Plaintiff: France Laorentou International Limited. Domicile: Room H, Floor 15th, Zhaojing Building, No. 6, Anhua Street, Jiulong Niutoujiao, Hong Kong Special Administrative Region, China

Legal representative: CHEN You, Chairman of the Board.

Authoritative agent: WANG Guoqiang, Beijing Zhongli Law Firm.

Defendant: The Trademark Office of the State Administration for the Industry and Commerce, Domicile: No.8, Sanlihe East Road, XingCheng District, Beijing City, PRC

The legal representative: AN Qinghu, director general.

Authorized agent: WANG Juefei, Female, cadre of the Trademark Office of the State Administration for Industry and Commence.

Third Party: ZHANG Junfeng, Female, Han, born on October 15th, 1973, Domicile: No. 41, Shantang Jing’an, Changshu City, Jiangsu Province, PRC.

The plaintiff France Laorentou International Limited refused to accept the verdict of the State Administration for Industry and Commerce, which approved the transfer of the trademark LAORENTO, and filed a suit to this Court. After accepted, the court notified ZHANG Junfeng of participating in such suit as the Third Party, who has legal interest relations with such specific administrative act, according to Article 27, Administrative Procedure Act of People’s Republic of China, and heard such case in public on July 29th, 2005. Authorized agents of plaintiff ZHOU Zheng, WANG Juefei attended such suit in person, the third party failed to attend such suit upon the legal summon of this court. This case has already been finished.

On December 12th, 2004, the defendant made an announcement on the Trademark Gazette Vol. 956 that No. 905413 registered trademark of design was transferred to the Third Party.

The plaintiff alleged that: neither did he sign any transfer agreement of trademark involved in this case with any one, nor filed any application to the defendant for the approval of the transfer of No. 905413 trademark with the third party, the act of approving such transfer of trademark by defendant violates Article 39, Trademark Law of People’s Republic of China (hereinafter referred to as Trademark Law), thus plaintiff requests this court to make a decision of canceling such approval for transfer of the trademark of No. 905413 design due to the lack of sufficient evidence for such specific administrative act.

The defendant alleged that:

1According to Article 25, Implementing Regulation of Trademark Law of People’s Republic of China (hereinafter referred to as Implementing Regulation), the Trademark Office shall accept the application when such application documents are complete; when examining such application for transfer, the Trademark Office required that the registrant shall transfer the same or similar trademarks used in the same type of commodities or similar type of commodities all together, and approved all application for transfer of trademarks, except the trademarks that might cause mistake, confusion or other adverse influence. The application of trademark transfer jointly submitted by the plaintiff and third party bears the signature of plaintiff, seals of the third party, seal and signature of agent, the transfer items clearly specified in the proxy statement. Thus, such transfer is the real intention of the plaintiff and third party, the formal requirements of the application for transfer of No. 905413 trademark design are satisfied, which complies with article 39, Trademark Law, and Item 1, Article 25, Implementing Regulation.

2. According to Article 25, Implementing Regulation, the working procedure of our office does not require the submission of transfer agreement of trademark between both parties. In conclusion, the court is requested to dismiss the claims of plaintiff and affirm the approval of transfer of No. 905413 trademark design.

It is specified in the third party’s statement that such transfer is the real declaration of intention of both parties, the defendant’s approval of transfer of No. 905413 trademark design is legitimate and valid, and thus, this court is requested to reject plaintiff’s claims.

The defendant filed the following evidences to thecourt in the statutory period :

1, the copies of defendantApplication for the Transfer of Trademark Applied or Registered;
2, the copies of Power of Attorney for Trademark;
3, the copies of Trademark Gazette, Vol. 956; evidences mentioned above can be used to prove that the transfer of No. 905413 trademark design is legitimate.

The plaintiff filed the following evidences to the court in the statutory period:

1, three pages of the trademark files, which are used to prove the basic information of No.905413 trademark design;

2, file of transfer of trademark, which are used to prove the illegality of the transfer procedure of No.905413 trademark design.

3, registration materials of the Plaintiff Company, which are used to prove the registration information of Plaintiff Company.

The third person didn’t file any evidence to the court.

After cross-examination at trail, plaintiff and defendant provided the following opinions for cross-examination: defendant has no objection on the evidences provided by plaintiff, but goes against plaintiff’s claims. The plaintiff has objection on the signature of transferor in Evidence 1 submitted by defendant, and considers that such evidence lacks of credibility because the transferor Henny is not an employee of Plaintiff Company, and has no objection on Evidence 2, 3 submitted by defendant, but believes that all these evidences can not be used to prove the legality of defendant’s claims. After cross-examination at trail, this court accepts the following factual findings: evidences submitted by defendant are related to this case, and can be used to prove relevant facts of this case, thus, affirmed by this court. However, evidences mentioned above can not prove the legality of its claims; evidences submitted by plaintiff are real, legitimate and related to this case, and can be used to prove relevant facts of this case, thus, affirmed by this court.

Based on valid evidences mentioned above and allegation of facts undisputed by various parties, this court made the following factual findings: On December 12, 2003, upon approval of defendant, plaintiff obtained No. 905413 trademark design through transfer, which is approved to be used in commodities of category 25. On July 5, 2004, defendant accepted the application for transfer of No. 905413 trademark design. Application for the Transfer of Trademark Applied or Registered stamped with seal of third party’s name, seal of the trademark agency company entrusted by third party, and signature of the transferor Henny. Defendant approved such application for transfer of the trademark, and make public announcement on October 12, 2004. After learning of such transfer, plaintiff filed a suit to this court.

This court believed that, according to article 39, Trademark Law: in order to transfer the registered trademark, the transferor and transferee shall sign a transfer agreement, jointly submit the application to the Trademark Office. …… thus, when examining and verifying such application for transfer of trademark, defendant shall check out . Defendant fails to fulfill the necessary examination obligation of checking out whether there is transfer agreement signed between the transferor and transferee when granting the transfer of No. 905413 trademark, which violates regulations mentioned above; and defendant fails to submit evidence to prove that such transfer is unclear in factual finding, insufficient in major evidences, incorrect in applying laws, thus, rejected. Grounds for defendants reply lacks of factual basis and legal basis, thus, this court rejected. The claims of plaintiff are sufficient in factual basis, and shall be granted by this court. According to Article 39, Trademark Law of Peoples Republic of China, Item 2, Article 54, Administrative Procedure Law of Peoples Republic of China, this court makes the following verdict: 

To dismiss the approval of Defendant (The Trademark Office of the State Administration for the Industry and Commerce) on granting the transfer of No. 905413 registered trademark on October 12, 2004.

The litigation fee of first trail is 1000 Yuan, which shall be undertook by the Trademark Office of the State Administration for the Industry and Commerce (paid up within 7 days after the effective date of such verdict).

In case of refusing to accept this verdict, defendant and third party may file an appellate petition to this court within 15 days after the service date of this verdict, plaintiff may file within 30 days after the service date of this verdict, and submit copies of such appellate petition with corresponding number to the opposite party, and make payment of such litigation fee 1000 Yuan, and appeal to Beijing Higher People’s Court of PRC. If the applicant fails to make advance payment within 7 days after receiving the Notice of Advance Payment made by People’s Court, and fails to submit the application for deferred payment, such appeal will be considered as to be abandonment of appeal.

 

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