Analysis reveals mobile apps constitute evidence of use in trademark cancellation or invalidation actions

In an era where we can access the Internet on our phones, companies develop or commission applications for internal use. In China, when conducting trademark layout, these entities typically register their trademarks in Class 9 for downloadable computer application software. After three years of registration, these trademarks may face cancellation applications based on three consecutive years of non-use. 

Generally, these companies only use apps in their main business areas and do not engage in the development and sale of apps in other fields. It is therefore crucial to determine whether the use of their own apps constitutes actual use under downloadable computer application software and whether this can maintain their trademark registrations. 

Companies that do not register their trademarks under Class 9 may face issues with homonymous apps used by others in the market. This may cause confusion or complaints based on other entities' trademark registrations in Class 9, thereby affecting the normal operation of their apps. In such cases, normal business activities of various companies can only be effectively protected by recognising the use of their apps under Class 9.

New Oxygen invalidation case

In the New Oxygen trademark invalidation case, the 新氧 mark (meaning ‘new oxygen’ in Chinese) (registration 15153796) was registered by Beijing Green Time Network Technology in Class 9 as downloadable computer application software (case 9315, Jingxing Zhong, 2019). Green Time was subject to an invalidation action filed by Beijing New Oxygen Technology – a medical beauty information service company – and its director Jin Xing. 

The focus in this case was whether the disputed trademark constituted "preemptive registration of a trademark that has been used by others with a certain influence by improper means" as outlined in Article 32 of the Trademark Law. 

New Oxygen submitted evidence of use, including:

• the release records of its app;
• materials that showed that the app was distributed on the Apple Store and other application platforms;
• promotional materials on the Internet;
• media reports;
• contracts; and 
• receipts.

This evidence aimed to prove that New Oxygen’s mark had been used in Class 9, had a certain influence and that the disputed trademark was a bad-faith registration. The Beijing High Court ruled that the release records and user statistics of the New Oxygen app showed that multiple apps with the 新氧 logo that were operated by New Oxygen had been released on several software platforms (eg, Apple Store), and had a high number of users before the application date of the disputed mark. 

Public evidence could corroborate this, which was sufficient to prove that New Oxygen had used the 新氧 trademark on computer software products and obtained a certain reputation before the mark’s application date. At the same time – considering that the disputed mark’s original registrant is located in the same place as New Oxygen – it should have been aware of the company’s use of the mark. Therefore, the Beijing High Court ruled that the disputed trademark constituted preemptive registration of a trademark that had been used by others with a certain influence by improper means and supported its invalidation.

However, when planning its trademark layout, New Oxygen did not register its trademark under downloadable computer application software in Class 9. After Green Time registered its trademark, it made complaints against New Oxygen based on the disputed 新氧 mark on the app, which was widely reported on and led to the removal of the app from the Apple Store. 

This seriously affected New Oxygen’s normal business operations. Based on the app release records, user statistics, promotion reports and other evidence, the Beijing High Court determined that use of the app constituted use of the 新氧 trademark on computer software products and thus invalidated the disputed mark. The court may have taken the plight faced by New Oxygen into consideration when making its decision.

Momo cancellation case

In the Momo trademark cancellation case, the 陌陌 mark (‘momo’ in Chinese) (registration 9945658) – registered by Beijing Momo Technology in Class 9 under downloadable computer program software and computer game software – was subject to a cancellation application based on three consecutive years of non-use (case 3940, Jingxing Zhong, 2020).

As evidence to prove actual use, Momo Technology submitted:

• its computer software copyright registration certificate;
• download pages of its software products from 2014 to 2017;
• the official website and download pages of related games;
• Momo social app industry ranking reports;
• the app’s version updates over the years;
• materials related to the online promotion of Momo games;
• the trademark licence authorisation;
• the Momo trademark promotion and use contract; and 
• invoices. 

The appellant argued that the evidence submitted by Momo was to prove use of the 陌陌 mark in Subclass 4505 for online social network services and Subclass 4105 for online games and entertainment services, rather than on the disputed goods. The Beijing High People's Court did not support the appellant's appeal request, pointing out that:

the software name in the evidence submitted by Momo Company shows the disputed trademark, and the update time of the software is within the specified period, and the relevant authorization, promotion, and use time are also within the specified period. Therefore, the above evidence can prove that the disputed trademark was used in computer programs (downloadable software) and computer game software products during the specified period. Although Momo Company also applied for trademarks containing '陌陌 (Momo in Chinese)' in Class 41, Class 45, and other classes, it cannot negate the above evidence for the use of the disputed trademark in computer programs (downloadable software) and computer game software products in Class 9.

The Momo app is now facing a cancellation application after three years of registration. Momo has its own main business – dating services under Class 45 and game services under Class 41 – and the app is its main business app. If use of the app does not constitute use on the goods of downloadable computer program software in Class 9, then the registration of the disputed trademark will be cancelled. The three-year non-use cancellation process is not to punish the trademark registrant but to free up idle trademark resources. 

Therefore, examination and review of evidence in non-use cancellation cases should not be too strict. So long as there is evidence of real use on the app, registration of the disputed trademark under downloadable computer program software in Class 9 should be maintained. In addition, this case may have also taken into account the adverse consequences of the New Oxygen case at trial; if a business entity does not have a trademark registration on downloadable computer application software in Class 9, others that preemptively register the trademark can file a complaint against the company’s main business app and thus affect its normal operations.

Key takeaways

The Beijing High Court tends to determine that the use of an app in a company’s main operations can constitute use of downloadable computer application software in Class 9. This can maintain a trademark registration and the normal use of the app by the commercial entity to avoid malicious complaints from others that could affect business operations.