Recently, Foundin IP, acting on behalf of a famous U.S. kitchenware brand company, won an invalidation case before China National Intellectual Property Administration (CNIPA) against a trademark maliciously registered by a trading company. After examination, the CNIPA ruled to invalidate the disputed trademark pursuant to Article 44(1) of Trademark Law of the People's Republic of China.

Case Background

This case arose from a commission by a famous U.S. kitchenware company in US but has limited evidence of trademark use within China. The company instructed us to file an invalidation against a trademark that had been squatted by a Shanghai trading company in Class 7.

From the outset, the case faced multiple legal hurdles. The goods designated under the disputed trademark and those under the cited trademark (kitchen utensils, etc.) belonged to different subclasses, and the similarity between them was low, making it objectively difficult to establish a claim under Article 30 (likelihood of confusion on similar goods). Moreover, relying on Article 13 (cross-class protection for well-known marks) and Article 32 (prior used trademark with certain influence) would require a high evidentiary threshold.

Case Handling Process

Faced with the legal impediment stemming from the low similarity of goods, our team did not restrict its arguments to conventional trademark similarity reasoning. We systematically compiled evidence of the client's portfolio of trademark registrations, use, and brand reputation, while conducting an in-depth investigation into the respondent's filing pattern.

The investigation revealed that the respondent, a Shanghai trading company, had applied for a total of 9 trademarks, of which 2 imitated our client's brand. In addition, the respondent had also applied for marks identical or highly similar to other famous prior marks. Therefore, we argued that the respondent's trademark filings clearly exceeded normal business needs and demonstrated an intent to engage in unfair competition or free-ride on renowned brands.

During the invalidation proceedings, we rigorously argued that the respondent's pattern of malicious registrations infringed our client's legitimate rights and interests, disrupted the trademark registration order, and undermined fair market competition. Ultimately, the CNIPA adopted our arguments, holding that the registration of the disputed trademark constituted "registration by other improper means" under Article 44(1) of the Trademark Law and declaring it invalid.

Key Takeaways from the Case

The key to success in this case lay in our timely adjustment of legal strategy when facing multiple obstacles such as differences in goods subclasses and the difficulty of establishing well-known trademark status. We fully uncovered the respondent's malicious squatting pattern and precisely applied Article 44(1) of the Trademark Law.

Of particular note, this case sets an important precedent for the application of Article 44. In previous practice, when applying this provision to establish "registration by other improper means," it was generally required that the squatter owned a large number of trademarks (at least dozens) to demonstrate mass squatting and hoarding. As a result, agents were often concerned about whether Article 44 could apply to squatters with only a small number of trademarks.

In this case, however, the respondent had fewer than ten trademarks, yet the CNIPA still found that its conduct "clearly exceeded normal business needs" and constituted "registration by other improper means." This ruling fully demonstrates that the CNIPA is strengthening its crackdown on malicious squatting, and the standard for "malice" no longer relies solely on the number of marks squatted, but rather focuses on a substantive examination of the squatter's pattern — i.e., whether the squatter had the subjective intent to free-ride on famous brands and seek illegitimate benefits.

This victory once again demonstrates our Foundin team's professional competence in accurately applying legal standards and uncovering case facts in complex trademark rights confirmation proceedings. It also provides strong confidence for brand owners in enforcing their rights against similar malicious squatting.

Should you have any inquiries regarding trademark enforcement or trademark squatting, please email trademark@foundin.cn for consultation.