Shanghai Gaotong’s
Core Trademark ”GOTOP” Cancelled by Qualcomm

published on 24 Jul 2018

Source: China Intellectual Property News

The decision regarding the administrative dispute over the re-examination of Registration No. 4305050 has at last been made. Shanghai Gaotong Semiconductor Co., Ltd. ("Shanghai Gaotong") and the American firm Qualcomm have entered into a dispute over infringement and unfair competition arising from the use of the "GOTOP and 高通" trademark ("高通" is the Chinese name used by Qualcomm and is pronounced as “gaotong”). The lawsuit lodged by Shanghai Gaotong against Qualcomm had been going on for more than three years, a lawsuit which began when Qualcomm filed an application to cancel a series of Shanghai Gaotong's trademarks, including “GOTOP 高通” and "高通(gaotong)" trademark (TM Registration No. 4305050). (Beijing Final Decision [2008] No. 850)

The suit ended with the Beijing High People’s Court rejecting Shanghai Gaotong's appeal. Thus, the disputed trademarks were invalidated. 

• The Course of Events Regarding the Dispute Over Trademark No. 4305050 高通 

Shanghai Gaotong was formed on July 21, 1992. It mainly focuses on digital and telecommunications devices, instruments, cultural products for offices as well as research and development, technology transfer, technical consulting, technical services and sales for software, hardware and external computer devices.

According to the China Trademark website, Shanghai Gaotong applied to the Trademark Office for the disputed trademark on October 12, 2004. Registration was approved on March 28, 2008. The trademark was approved for use in Class 42 services such as computer software design and research and development products (See below table to details).

Believing that the disputed trademarks were not in use between August 2010 and August 2013 (“designated period”), on August 12, 2013, Qualcomm requested that the Trademark Office cancel the disputed trademark. The Trademark Office rendered its decision in April of 2014. The result was that Qualcomm’s request was denied.

During the examination period, Shanghai Gaotong submitted evidence including the company's registration status, promotional materials and product images to the Trademark Office. This was done in order to prove that Shanghai Gaotong had in fact used the disputed trademark during the designated period.

Qualcomm appealed the Trademark Office's decision. In May of 2014, Qualcomm applied to the Trademark Review and Adjudication Board ("TRAB") for a re-examination. Qualcomm argued that the evidence submitted by Shanghai Gaotong could not sufficiently prove that the disputed trademarks were in commercial use during the designated period or that they were used for the services for which they registered. This being the case, Qualcomm believed that Shanghai Gaotong's registrations should be cancelled.

On December 22, 2015, TRAB rendered its decision for TRAB Re-Examination No. 101767 (2015). TRAB held that Shanghai Gaotong would retain its protection of the use of the disputed trademark in services such as computer software design and maintenance ("specified services"), but Shanghai Gaotong's registrations for packaging and interior design services would be cancelled. Qualcomm appealed TRAB's decision and filed an administrative suit at the Beijing Intellectual Property Court in which it requested that TRAB's decision be revoked.

During the first trial, Shanghai Gaotong did not submit any new materials as evidence during the period for producing evidence. After the first trial and upon receiving permission from the court, Shanghai Gaotong was given 15 days to produce its business license, pictures of its offices, building leases and other documents containing basic information on which the name "上海高通(Shanghai Gaotong)" could be seen. Furthermore, Shanghai Gaotong was given permission to submit evidence such as any awards and introductory information for its products or solutions bearing the name of Shanghai Gaotong.

Qualcomm believed that Shanghai Gaotong had submitted evidence without proper justification and at too late of a date and that the evidence submitted by the latter could not prove that the existence of the contested trademark, or its use during the designated period of time, or use for the specified service that the trademark was in effective. 

• Final Decision of the Beijing Intellectual Property Court 

The Beijing Intellectual Property Court held that none of the evidence presented by Shanghai Gaotong proves that the disputed trademarks were used during the designated period and for the specified services. As such, the Beijing Intellectual Property Court revoked TRAB’s decision and ordered TRAB to render a new decision.

Shanghai Gaotong appealed Civil Judgement No. 1672 [2016], First, Civil Division, 73, Beijing, of the Beijing Intellectual Property Court and filed suit in the Beijing Higher People's Court. The case was heard on February 8, 2018.

After its deliberations, the Beijing Higher People's Court held that Shanghai Gaotong's submission of its business license, pre-approval notice for the change of the company's name, its trademark statistics and its advertisements which were placed on automobiles during the administrative stage were irrelevant to the question of whether or not the disputed trademark had been used. As such, the evidence presented could not prove that the disputed trademark was used during the designated period and for the specified use. Furthermore, the "solution" that Shanghai Gaotong often referred to during its presentation of evidence of use did not fall under Category 42, the category for which the disputed trademark was to be used. As such, the existence of the solution could not prove that Shanghai Gaotong had used the trademark commercially, within the designated period and for the specified use.

Furthermore, Shanghai Gaotong's business license, the images of its office, its lease as well as other basic company information do not show the disputed trademark, were not used during the specified period and are irrelevant to the question of whether or not the disputed trademark was used. Furthermore, Shanghai Gaotong's awards have the same issue. None of the information presented by Shanghai Gaotong as evidence proves that Shanghai Gaotong has ever provided any of the specified services. 

Thus, Shanghai Gaotong's appeal was rejected and the earlier judgement was maintained. In other words, the contested trademark registration no. 4305050 was cancelled on May 9, 2018 because Shanghai Gaotong had not used it for three consecutive years.

for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw