Chang Tsi & Partners successfully represented Hitachi Astemo, Ltd. in filing an invalidation application against the trademark "日昭和(RI ZHAO HE in Chinese)" (No. 15325268). In this case, although the client held prior rights to the trademark "SHOWA" and enjoyed trade name rights to "昭和 (SHOWA in Chinese, ZHAO HE)," its trademark was not well-known. Furthermore, the disputed trademark had been registered for over five years and had been assigned from the original registrant to an affiliated company. Facing multiple unfavorable conditions, Chang Tsi's legal team formulated a precise litigation strategy, ultimately persuading the China National Intellectual Property Administration (CNIPA) to determine that the registration of the disputed trademark constituted "obtaining registration by other improper means" as stipulated in Article 44(1) of the Trademark Law, leading to its invalidation.

I. Case Challenges

1. Limited Rights Basis: The client does not hold prior trademark rights to“昭和(SHOWA in Chinese, ZHAO HE)”.

2. Time Bar: The target mark has been registered for more than five years.

3. Change of Registrant: The target mark was transferred midway from the original malicious registrant to the target party, and the original registrant has already been deregistered. The transfer of the trademark and the deregistration of the original company have increased the difficulty in malicious tracing and fact-finding.

II. Legal Strategies

To overcome these challenges, Chang Tsi developed a meticulous litigation strategy, focusing on arguing that the original registrant and the current holder constituted a unified malicious entity.

(1) Building the Evidence Chain

First, Chang Tsi’s legal team engaged in thorough communication with the client, guiding them to collect and provide all evidence related to the “SHOWA/昭和(SHOWA in Chinese, ZHAO HE)” trademark and trade name. Additionally, we conducted online searches and National Library search regarding the use of the client’s “SHOWA/昭和(SHOWA in Chinese, ZHAO HE)” trademark and trade name in China to further gather supporting evidence.

Secondly, we conducted in-depth online research on the trademarks, commercial use, and the relationship between the target party and the original trademark registrant. The investigation revealed that the two entities are affiliated companies. The original registrant had repeatedly copied our client’s trademarks, and our client successfully filed oppositions and invalidation actions against them. The original registrant’s repeated copying of the target trademark demonstrates clear malicious intent. Subsequently, the original registrant transferred the target mark to the target party and continued its use to conceal their malicious actions. We have notarized the webpages documenting the research findings and promptly preserved the relevant evidence.

(2) Core Legal Arguments

Based on the above analysis and evidence, Chang Tsi presented comprehensive arguments in support of the invalidation request:

The prior trademark and trade name of the client enjoy significant recognition, and there is a clear one-to-one correspondence between "SHOWA" and "昭和(SHOWA in Chinese, ZHAO HE)";

The target party and its original registrant are commercially connected and constitute affiliated companies, demonstrating obvious malicious intent to copy the client’s trademarks and engaging in bad-faith use. The act of transferring the trademark by the original registrant is essentially an attempt to conceal its malicious actions, which does not eliminate the illegitimacy of the trademark registration. Therefore, the trademark should be invalidated.

(3) CNIPA's Adopted View

Ultimately, the CNIPA ruled and determined: The applicant’s affiliated company’s trade name "SHOWA / 昭和" has gained a certain level of recognition. The original registrant of the disputed trademark should have been aware of the applicant's affiliated company's trade name. The original registrant failed to provide a reasonable origin for its trademark, making its actions difficult to justify. The actions of both the original registrant and the respondent in registering the disputed trademark clearly demonstrate an intent to replicate and plagiarize a highly recognized trademark. The act of the original trademark registrant applying to register the disputed trademark constitutes a situation of obtaining registration by "other improper means" as specified in Article 44, Paragraph 1 of the 2013 Trademark Law. Although the disputed trademark was acquired by the respondent through transfer, from the perspective of the legislative intent and effectiveness of Article 44, Paragraph 1 of the 2013 Trademark Law, if the transfer of the trademark is considered an exception, the provision's purpose of preventing improper registration, hoarding, and selling of trademarks would be undermined, allowing for potential circumvention in practice. Therefore, the fact that the disputed trademark has been transferred does not alter the impropriety present at the time of its registration application, and the trademark violates Article 44, Paragraph 1 of the 2013 Trademark Law. Accordingly, pursuant to the provisions of Article 44, Paragraph 1 of the Trademark Law, the disputed trademark was declared invalid.

III. Typical Significance of the Case

This case holds significant precedent value and practical guidance for combating malicious trademark registrations, also reflecting Chang Tsi & Partners' forward-thinking and strong execution capabilities in handling complex intellectual property disputes:

First, by winning the case, Chang Tsi effectively struck a blow against the targeted entities and safeguarded the client's trademark rights. At the same time, this victory provides precedent support for combating other similar cases.

Second, the case signals the CNIPA's resolute stance against malicious registrations. For trademarks registered for over five years, if the target entity exhibits clear bad faith, clients can be advised to attempt invalidation using Article 44. If clear bad faith of the target entity can be proven, even if the client's trademark is not well-known, it may still be possible to invalidate the target trademark based on Article 44 of the Trademark Law.

Third, the CNIPA has explicitly stated in its rulings that the fact of a trademark transfer cannot be used as a justification to exclude the improper nature of the trademark registration. Therefore, in trademark opposition or invalidation cases, if a trademark has been transferred but the original rights holder exhibited clear malicious intent, such malicious behavior can still serve as important evidence to prove the malice of the current holder and may be supported. This highlights the importance of thoroughly examining the trademark process during case investigations. For trademarks with transfer records, it is essential to conduct an in-depth investigation into the original rights holder's trademarks and business activities to collect as much compelling evidence as possible to support the case effectively. If it is discovered that the original rights holder acted with clear malice, this fact could be a key factor in winning the case.

The success of this case not only demonstrates the firm stance of administrative enforcement agencies in maintaining trademark registration order but also fully exemplifies Chang Tsi & Partners' professional capability in providing robust protection for clients' core intellectual property assets.