CHANG TSI
Insights
To balance the legitimate rights of trademark owners and trust interests of the relevant public, Article 45.1 of China’s Trademark Law imposes restrictions on the qualifications of subjects who can file an invalidation request, the grounds for invalidation, and the time frame for filing such requests. The aim is to encourage trademark owners to exercise their rights promptly and to avoid disrupting the increasingly stable market status of registered trademarks. Once a trademark has been registered for five years, other prior rights holders or interested parties may not request invalidation based on relative grounds. However, the Trademark Law provides stronger protection for well-known trademarks. In addition to "cross-class protection," well-known trademarks also enjoy "extended protection," meaning that requests for invalidation of maliciously registered trademarks by well-known trademark owners are not subject to the five-year time limit.
However, the protection of well-known trademarks must meet the basic principles of "recognition when necessary", "passive recognition" and "case-by-case recognition". Article 13 of the Trademark Law grants well-known trademark holders "cross-class protection," but it does not specify whether well-known status can be requested for the same or similar goods. Additionally, courts have stringent standards for determining whether a trademark is well-known. Rights holders need to provide substantial evidence from various aspects, including the duration, extent, and financial investment in the use, promotion, and advertising of the trademark, the market share obtained, and any previous instances where the trademark was protected as well-known.
Chang Tsi & Partners has extensive experience in the recognition of well-known trademarks. We have successfully assisted numerous clients in obtaining well-known status for their famous brands through administrative and litigation procedures in China. These brands include LEGO、美赞臣(Mead Johnson)、斯凯奇(Skechers)、Dairy Queen, LEVI’S，TIFFANY & Co., Honeywell、美的(Midea)、KIA、BAIDU、LITTLE SWAN and many others.
This article takes the recent successful case of our representing of a famous ice cream brand in the administrative litigation that recognizing the ice cream brand as well-known trademark as an example to explore several key issues. These include how to assert the invalidation of a trademark registered for more than five years through "same-class recognition" during the administrative litigation stage, how to demonstrate the necessity of recognition to the court, and how to prove that the disputed trademark was registered in bad faith etc.
The plaintiff is a world-renowned ice cream vendor and a global chain catering giant. The plaintiff’s series trademarks are registered for goods in Class 30, such as ice cream, have gained high recognition among relevant consumers in China through extensive promotion and long-term use. Through our representations, the plaintiff’s trademarks were recognized as well-known trademarks for goods “ice cream, etc.” by Chinese courts in 2020 and 2021.
There is a Chinese company in Wenzhou City (hereinafter referred to as “Wenzhou Company”), who applied for the disputed trademark in Class 30 in 2015. The trademark was approved for registration in 2016, with designated goods including “ice cream and pastries, etc.”. The disputed trademark was then transferred to the third party in this case, a Beijing Company in 2021. In 2022, the plaintiff filed an invalidation against the disputed trademark. While, in July 2023, the China National Intellectual Property Administration (CNIPA) ruled to maintain the disputed trademark. Dissatisfied with this decision, the plaintiff entrusted us to file a lawsuit with the Beijing Intellectual Property Court, requesting to revoke the unfavorable decision and have CNIPA re-issue a new one.
After the trial, the court hold that
the plaintiff’s series of trademarks had achieved well-known status for goods “ice cream, ice cream cakes, etc.” before the application date of the disputed trademark.
The evidence submitted by the plaintiff demonstrated that the third party and its affiliated companies had obvious and deliberate intent to exploit the plaintiff’s prior trademark's reputation during the application, registration, and use of the disputed trademark, causing confusion among some consumers. Therefore, the evidence in the case proved that the disputed trademark constituted a malicious registration, and the plaintiff's invalidation request based on Article 13 of the Trademark Law was not subject to the five-year limitation.
The use of the disputed trademark on goods such as “pastries” and “ice cream” could easily lead to confusion about the source of the goods among relevant consumers and dilute the distinctiveness of the plaintiff’s well-known trademark, thus damaging the plaintiff’s rights.
The court consequently revoked the CNIPA's decision and ordered it to make a new decision.
The main difficulties and litigation strategies in this case are as follows:
(a) Sufficiently Proving the Plaintiff’s Trademark Had Achieved Well-Known Status Before the Application Date of the Disputed Trademark
In this case, we actively collected and submitted huge amount of evidence about the use and promotion of the Plaintiff’s series of trademarks, and reports from internet media, newspapers, journals, and other traditional media about the plaintiff and its brand products, as well as awards obtained by the plaintiff in China, specifically indicating that the evidence predates the application date of the disputed trademark. We also emphasized the judicial recognition records of the Plaintiff’s series of trademarks as well-known, comparing the recognition periods in precedents with the application date of the disputed trademark to clearly show that the Plaintiff’s series of trademarks had achieved well-known status before the application date of the disputed trademark.
Although the recognition of well-known trademarks follows the principle of "case-by-case recognition," prior records of well-known trademark recognition can still be submitted as evidence to influence the judgment. According to Article 22 of the "Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving Trademarks," if a party requests protection for a trademark that has previously been recognized as well-known by an administrative authority or a people's court, and the opposing party does not dispute the well-known status of the trademark, the people's court will not re-examine its well-known status. This indicates that records of well-known trademark recognition can serve as preliminary evidence of a trademark's well-known status.
(b) Using the Legal Interpretation Method of "Argumentuma minore ad manius" to Justify the Need for "Same-Class" Well-known Recognition
China's well-known trademark protection system is primarily reflected in a series of legal provisions and judicial interpretations centered on Article 13 of the Trademark Law. Article 13 of the Trademark Law stipulates a two-pronged principle where unregistered well-known trademarks can seek recognition when copied, imitated, or translated on identical or similar goods (Paragraph 2) and registered well-known trademarks can seek recognition when copied, imitated, or translated on dissimilar goods (Paragraph 3). It does not directly stipulate whether registered trademarks can seek "same-class recognition" on identical or similar goods because, in general, near-identical trademarks on identical or similar goods already violate Articles 30 and 31 of the Trademark Law, making it unnecessary to seek well-known trademark protection through Article 13.
In this case, the disputed trademark had been registered for over five years, and the plaintiff could no longer apply Articles 30 and 31 of the Trademark Law to file invalidation, thus demonstrating the necessity of well-known recognition by Article 13. Although the disputed trademark and the plaintiff’s series of trademarks were registered on similar goods of same class, the "Argumentuma minore ad manius" legal interpretation method allowed the plaintiff to seek well-known trademark protection. "Cross-class protection" refers to the “extension” of the prohibition on registration and use of identical or similar trademarks to dissimilar goods for registered well-known trademarks. Given that the imitation or copying of registered well-known trademarks on identical or similar goods is more likely to cause market confusion and misrecognitions, registered well-known trademarks can also request "same-class protection," which is an inherent meaning of 13.3 of the Trademark Law. The court ultimately supported our request and reasoning, granting same-class recognition protection to the plaintiff’s series of trademarks.
(c) Proving "Baith Faith" from Various Aspects
When asserting the "extended protection" of well-known trademarks, "malice" is an independent element. In other words, when applying Article 13 of the Trademark Law to claim that the disputed trademark constitutes a copy, imitation, or translation of a well-known trademark, it is also necessary to separately address the "bad faith" requirement. In this case, the fundamental reason the CNIPA rejected Plaintiff’s invalidation request at the administrative stage was its belief that the evidence on record was insufficient to prove the bad faith at the time of the application for the disputed trademark. Therefore, during the litigation stage, we elaborated on the bad faith of both the original applicant (the assignor) and the current owner (the assignee) from various aspects.
In this case, we conducted a thorough investigation of the original applicant, the Wenzhou Company, and argued that its annual reports indicated it had been "out of business" for many years, with no actual operations or online promotions. Despite holding the disputed trademark for five years, there was no evidence of its use. Additionally, the original applicant had applied for the same trademark as the disputed one in a total of 38 different classes, including Class 30, which is relevant to this case. Given that the plaintiff's series of trademarks had already achieved well-known status prior to the application date of the disputed trademark, and there was no legitimate reason for the application, we argued for a presumption of bad faith on the part of the original applicant based on Article 25 of the "Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases Involving Trademark Authorization and Confirmation."
On the other hand, we thoroughly detailed the manifestations of bad faith on the part of the third party (the assignee). For example, the third party began using the disputed trademark continuously from the moment it acquired it, was aware of the well-known status of Plaintiff’s trademarks, interpreted the disputed trademark as "China's XX" (Plaintiff’s trademark) deliberately capitalized Plaintiff’s trademark while using lowercase "cn" to highlight the "XX" part and downplay the other elements, among other actions. We conducted comprehensive evidence collection to demonstrate the third party's intent to register the trademark in bad faith and mislead consumers.
Through various evidence collections and arguments regarding the bad faith, the court ultimately supported our claims.
In this case, we successfully obtained well-known protection for the client’s series of trademarks. The court recognized that the client’s trademarks had achieved high recognition through long-term promotion and use, affirming the brand value of the client’s trademarks and providing support for the client’s future intellectual property layout and enforcement actions in the Chinese market.
The third party and its affiliates had long used the disputed trademark to create market confusion, intending to exploit the client’s reputation and goodwill for unjust gains. The victory in this case directly deprived them of their rights basis, striking a blow to the infringing group’s arrogance. Despite the disputed trademark having been registered for over five years, we successfully utilized the extended protection of well-known trademarks to overcome the five-year limitation, effectively safeguarding the client’s commercial interests and maximizing their benefits.
This case demonstrates our rich experience in the recognition and legal interpretation of well-known trademarks. Under the principle of "recognition when necessary," we successfully applied the legal interpretation method of " Argumentuma minore ad manius" to justify the necessity of "recognizing well-known trademark in the case related to same-class trademarks" providing valuable reference for similar cases in practice.
