Beijing Higher People’s Court Affirms Cancellation of Shanghai Qualcomm Semiconductor’s Trademark

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In a decision dated July 14, 2020, the Beijing Higher People’s Court affirmed the cancellation of Shanghai Qualcomm Semiconductor Co., Ltd.’s (上海高通半导体有限公司) trademark 4305050 for “高通” (Gao Tong, the name of Qualcomm in Chinese). This trademark is one of four subject to civil litigation by Shanghai Qualcomm against U.S. Qualcomm. In April 2014, Shanghai Qualcomm initiated a trademark infringement and unfair competition lawsuit against Qualcomm in the Shanghai High People’s Court, claiming that Qualcomm infringed its trademark rights, and requested the court to order Qualcomm to stop the infringement, change the company name, and pay compensation of 100 million RMB.   This decision affirms the invalidation of the final remaining Shanghai Qualcomm mark that was the basis of that litigation.

Shanghai Qualcomm applied for the the trademark No. 4305050 “Qualcomm”  on October 12, 2004, and was registered on March 28, 2008.  It was approved for use in the 42nd category (computer software design; research project research; packaging design, etc.) . On August 12, 2013, U.S. Qualcomm  filed an application to cancel the trademark registration with the Trademark Office for non-use for three consecutive years from August 12, 2010 to August 11, 2013. This was unsuccessful but eventually Qualcomm partially succeeded In December 2015 at the Trademark Office. The Trademark Review and Adjudication Board decided to maintain the registration of the trademark in computer software design and other services and revoke the registration in packaging design and interior decoration design.

U.S. Qualcomm then filed an administrative lawsuit with the Beijing Intellectual Property Court arguing that Shanghai Qualcomm submitted evidence late without justifiable reasons and the aforementioned evidence did not show the trademark was used within the specified period.  The Beijing Intellectual Property Court agreed and ordered the Trademark Review and Adjudication Board to revise their prior decision accordingly.

On appeal, the Beijing Higher People’s Court held that the evidence in the case is insufficient to prove that Shanghai Qualcomm has effectively used the disputed trademark during the designated period, and accordingly rejected Shanghai Qualcomm’s appeal and upheld the judgment of the lower court.

In the civil litigation, the the Shanghai High People’s Court rejected all claims of Shanghai Qualcomm. This trademark invalidation would seem to bring to an end the litigation between U.S. Qualcomm and Shanghai Qualcomm.  However, Shanghai Qualcomm has appealed the Shanghai High People’s Court decision to the Supreme People’s Court and no decision has been issued yet.

Shanghai Qualcomm’s Trademark 4305050

 

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

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Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.