In trademark enforcement, few challenges are as daunting as invalidating a trademark that has been registered for more than ten years—especially when the rightful owner has no prior registration in the relevant class and has already faced setbacks at the administrative level. 

Chang Tsi & Partners recently assisted an international client in winning an administrative lawsuit concerning the invalidation of a maliciously registered trademark. This case review examines a successful invalidation action involving a foreign fastener products company ("the Rights Holder") that, after multiple proceedings including opposition, invalidation, and two rounds of administrative litigation, ultimately secured the cancellation of a maliciously registered trademark. The outcome cleared a major obstacle to the Rights Holder's normal business operations in China.

Case Overview

The Rights Holder had long been active in the design and supply of fasteners such as bolts, nuts, and screws. Its core corporate name and trademark had gained a certain level of recognition in the industry. Prior to the filing date of the disputed trademark in 2009, the Rights Holder had already begun sourcing products from China and subsequently set up manufacturing facilities there, continuously using its core mark on relevant goods. However, due to a failure to register the mark in the appropriate classes in China during its early market entry, a so-called "rights vacuum" emerged.

A third-party entity in China ("the Registrant") identified this gap and filed an application in 2009 for a trademark that was identical to the Rights Holder's core mark. The mark was eventually registered. Far from ceasing its activities, the Registrant used the registered mark as a basis for a series of aggressive actions, including:

• Filing intellectual property protection requests with Chinese customs, leading to the seizure of the Rights Holder's supplier shipments;
• Bringing trademark infringement lawsuits against the Rights Holder and its suppliers; and
• Repeatedly demanding that the Rights Holder accept conditional transfers of the disputed trademark in exchange for settling disputes.

These actions were clearly aimed at extracting undue benefits and disrupting the Rights Holder's business in China.

In addition, the maliciously registered trademark had been successfully registered for more than five years by the time the Rights Holder initiated its first opposition. This meant that conventional legal pathways for invalidation were severely time‑barred. The Rights Holder initially engaged another law firm to handle the invalidation and related litigation, but those efforts failed to achieve meaningful progress.

Key Challenges

This case presented three major difficulties that are common in complex trademark invalidation disputes:

1. No Prior Rights and Strict Time Limits

The Rights Holder had no prior registered trademark rights for its mark in China, and the disputed mark had been registered for over five years. Moreover, the Rights Holder's use of the mark prior to the 2009 filing date did not meet the threshold for a "well‑known trademark." Consequently, the only available legal basis was the provision covering registration obtained by "other improper means," which requires a high standard of proof.

2. Adverse Administrative Rulings

In its initial decision, the China National Intellectual Property Administration (CNIPA) ruled that the evidence submitted by the Rights Holder was insufficient to prove that the Registrant had obtained the trademark through improper means. CNIPA therefore upheld the validity of the disputed registration, making the subsequent legal challenge significantly more difficult.

3. Difficulty Proving Malicious Intent

Because the disputed trademark was filed as early as 2009, gathering evidence of the Registrant's subjective bad faith was inherently challenging. The Registrant further complicated matters by arguing that its various trademark registrations were authorized by its overseas clients. In other cases, CNIPA had indeed accepted that some of those authorizations were legitimate. This background made it essential for the Rights Holder to build an independent case for bad faith without being prejudiced by unrelated case outcomes.

Court Ruling

After the Rights Holder changed its legal representation, Chang Tsi’s legal team conducted a comprehensive review of all case materials and identified a clear focal point: strict reliance on Article 41(1) of the 2001 Trademark Law, which addresses marks registered by "other improper means." The team systematically built a chain of evidence demonstrating the Registrant's malicious conduct.

The key strategic elements included:

Conducting a full review of the Registrant's overall trademark filing history, focusing on patterns of bulk filings, organized applications, and lack of genuine intention to use the marks;

Carefully dismantling the Registrant's defense that its registrations were based on client authorizations, and distinguishing the facts of this case from other unrelated cases;

Presenting the court with a clear and well‑organized system of evidence that matched each specific allegation of bad faith with corresponding documentary proof.

At the litigation stage, the court ultimately accepted the Rights Holder's position and found that the Registrant's registration of the disputed trademark constituted registration by "other improper means." The first‑instance court annulled CNIPA's earlier decision and ordered CNIPA to issue a new invalidation ruling. CNIPA appealed, but the second‑instance court dismissed the appeal and upheld the original judgment.

As a result, the maliciously registered trademark—which had been on the register for more than ten years—was successfully invalidated. The Rights Holder was able to remove a major obstacle to registering and using its own mark in China and resume normal business operations in the Chinese market.

Key Takeaways

This case underwent three critical stages: trademark invalidation, first-instance litigation, and second-instance litigation. The turning point came when the Rights Holder switched to Chang Tsi & Partners as its legal representatives. Chang Tsi’s team addressed the case’s core challenges, refined the evidence system, and achieved a comprehensive victory:  

- The first-instance court annulled CNIPA’s decision and ordered a new invalidation ruling.  

- CNIPA appealed the decision, but the second-instance court dismissed the appeal and upheld the original judgment.  

The ruling invalidated the maliciously registered trademark, clearing the way for Rights Holder to register and use its trademark in China under Class 6. This ensured their commercial activities in China could proceed without further interference.  

As a landmark case in combating malicious trademark registrations, this case offers valuable insights for similar scenarios, particularly those involving trademarks registered for over five years, administrative hurdles, and clients lacking prior trademark rights:  

1. Evidence is Key: Successfully challenging malicious registrations requires uncovering and solidifying evidence of the registrant’s intent, including their trademark portfolio and behavior patterns, to form a complete chain of evidence.  

2. Strategic Legal Application: When prior trademark rights or well-known trademark protections are unavailable, focusing on "improper means" under the law can provide a viable path for invalidation.  

3. Persistence in Advocacy: Overcoming unfavorable administrative rulings requires thorough legal analysis, persistence in litigation, and unwavering commitment to protecting client rights.  

This victory not only restored the Rights Holder’s core brand rights but also showcased Chang Tsi & Partners’ expertise in trademark litigation and combating malicious registrations. The case provides effective and practical legal solutions for domestic and international companies facing similar trademark disputes.