CHANG TSI
Insights
Our client, an American company specializing in medical devices, recently discovered that a Chinese company had, at multiple industry exhibitions, used a Chinese transliteration of the client’s English trademark as its own brand name for identical medical products. This company also engaged in public promotion with slogans such as “The only Chinese manufacturer competing with (Client’s Brand)” and “Providing the full range of alternative solutions to (Client’s Brand).”
Such conduct not only directly trades on the reputation of the client’s brand but also poses a serious threat to the client's market share in China. The client sought to stop these actions through legal means. However, the infringer’s Chinese trademark had already been registered for more than five years and had been put into large-scale commercial use. The client only held registrations for its English trademark in China and had very limited evidence of use in China; moreover, it had never used the Chinese transliteration to refer to its brand in China.
To safeguard the client’s rights, it was necessary to file an invalidation action aimed at removing the infringer’s maliciously registered Chinese trademark despite it being registered for over five years. We conducted both online and on-site investigations into the infringing party and its affiliates, and notarized the collected evidence — including website captures and audio recordings — that demonstrated the infringer’s bad faith. We proved that as a direct competitor, the infringer was aware of the client’s brand prior to applying for the disputed mark and had acted in bad faith by applying for and using the trademark, while promoting products with advertising slogans that latched onto the reputation of the client’s brand.
Ultimately, the China National Intellectual Property Administration (CNIPA) held in its invalidation decision that “the registration of the disputed trademark constitutes the circumstance referred to in Article 44(1) of the PRC Trademark Law — ‘obtaining registration by other improper means.’”
1. The disputed Chinese mark already registered for more than five years: We could not rely on Article 30 of the Trademark Law to assert rights based on the client’s prior trademark.
2.Insufficient evidence of the client trademark’s reputation: The client was unable to provide sufficient evidence of use of its trademark in China, and its mark had not met the standard for ‘well-known mark’ recognition, nor had never been found to have reputation in China in past cases.
3.Difficulty in proving bad faith: The other party had not engaged in large-scale trademark squatting of other brands, and existing evidence of exploitation of the client’s brand at trade exhibitions dated from recent years, creating a gap from the time of trademark application.
The key was to prove that the other party acted in bad faith when applying for the disputed trademark.
1. Bad faith evidence collection and argumentation from multiple angles
a. The disputed party and our client operate in the same industry, and the disputed party’s official website domain name contains the client’s English mark.
b. The disputed party had also applied for several other Chinese and English marks that are related to or similar to the client’s trademark.
c. At trade shows, the disputed party promoted its products under the Chinese brand together with the client’s highly reputed English brand in the same field, creating improper associations and direct comparisons — conduct that is clearly aimed at riding on the goodwill of the client’s brand.
d. We advised the client to conduct a comprehensive investigation of the disputed party. Through inquiries into the disputed party and its distributors, we found that authorized distributors were using the client’s English trademark in a confusing manner, and in conversations, a distributor of the disputed party explicitly acknowledged awareness of the client’s brand. We notarized relevant webpages and recorded conversations, further substantiating the disputed party’s bad faith.
2.Proving the client’s brand reputation and the Chinese transliteration linkage:
We demonstrated that the client’s brand and products have been in use since the 1970s, enjoying high reputation within the specialized field worldwide, making it impossible for an industry peer to be unaware of the brand when applying for a trademark covering identical/high similar goods. Specifically, we submitted:
a. the client’s U.S. trademark registration certificates and translations;
b. a National Library search report;
c. foreign professional articles with translations on the client’s brand reputation and fame;
d. domestic online media reports;
e. authoritative dictionary translations;
f. online media content showing that relevant Chinese-speaking public refer to the client’s English brand by the disputed Chinese mark.
The CNIPA upheld our claims, finding that the client’s brand and products had a certain degree of reputation in the medical industry before the filing date of the disputed trademark, and that the disputed mark was similar in meaning to the client’s English mark with certain reputation. The CNIPA concluded that the disputed party’s registration of the disputed mark had disrupted the normal order of trademark registration, use and management, harmed fair market competition, and constituted the circumstance in Article 44(1) of the Trademark Law — “obtaining registration by other improper means.”
Key Takeaways from the Case:
1. Comprehensive investigations and evidence preservation: Active use of online and field investigations, notarization of webpages and audio recordings to uncover and preserve evidence of the registrant’s malicious use or promotion is critical. This helps persuade examiners that the registrant applied for the mark in bad faith to ride on the client’s goodwill and to distort fair competition.
2. Focus on proving trademark reputation and cross-language association: Submit as much evidence as possible to substantiate the client’s brand’s reputation in the relevant professional field. For demonstrating the link between the client’s English mark and the disputed Chinese mark, consider providing authoritative dictionary translations, media coverage, and public perception evidence to create a strong, logical chain of inferences — reinforcing that the filing of the disputed mark is not coincidental but intentional.
