Recently, Foundin’s trademark team represented an international client and achieved a first-instance victory in an administrative litigation concerning trademark invalidation. The Beijing Intellectual Property Court issued a first-instance judgment, dismissing all of the plaintiff’s claims in their entirety and upholding the CNIPA’s trademark invalidation decision. The client's prior brand rights received judicial confirmation at the first instance, effectively blocking the competitor’s bad-faith trademark registration.

Case Background

The client in this case is a well-known international eyewear brand company. Its core brand was registered in its home country as early as 2018. Since 2020, the client has been continuously carrying out brand promotion in China, having established stable prior use rights in a variety of goods.

A domestic trading company, through local distribution channels, learned about the client’s brand. Without obtaining authorization from the client, the company applied for registration of identical or highly similar marks in a variety of goods in 2021, and also filed multiple corresponding Chinese and English marks, deliberately free-riding on the client’s brand goodwill and disrupting the order of trademark registration.

To protect the brand, the client engaged Foundin to initiate a trademark invalidation proceeding. After examination, the CNIPA issued a ruling declaring the disputed trademark invalid pursuant to Article 15, Paragraph 2, and Article 44, Paragraph 1 of the Trademark Law. The plaintiff, dissatisfied with the ruling, filed an administrative lawsuit with the Beijing Intellectual Property Court, and Foundin represented the client throughout the first-instance proceedings.

Case Handling Process

Upon accepting the client’s litigation request, Foundin quickly formed a dedicated case group and established a comprehensive evidence chain and legal arguments around two major disputed issues:

1. Forming an evidence chain on “Bad-Faith Preemptive Trademark Registration” carried out by the competitor

2. Gathering evidence to establish that bulk trademark hoarding qualifies as registration through improper means

The Beijing Intellectual Property Court ultimately held that: The plaintiff’s legal representative, having knowledge of the client’s prior use of the relevant marks, yet still registered identical marks on identical goods and hoarded a large batch of similar marks. The original invalidation ruling was found to be factually sound and legally correct. The Court dismissed the plaintiff’s all claims, securing a complete first-instance victory for the client.

Key Takeaways

This case serves as a typical judicial precedent applying Article 15, Paragraph 2 of the Trademark Law to curb cross-border bad-faith registration by business partners. It clearly establishes that even where an overseas brand has not been successfully registered in China, as long as there is prior promotional use in China and the other party, through business relationships, knowingly copies and registers the brand, the rights holder may enforce their rights through invalidation and administrative litigation. In addition, when faced with bulk filings of similar marks by competitors, rights holders may invoke the “improper means of registration” provision, creating an additional line of defense.

Attorneys Handling the Case

Rongmei Zhang: Senior trademark attorney with extensive experience in domestic and international trademark prosecution and administrative litigation. Rongmei has long served clients from China, Japan, Korea, Europe, and the US. She is proficient in cross-border evidence organization and courtroom representation in international trademark cases. She specializes in complex trademark right confirmation cases involving brand squatting, with a track record of winning judgments before the Court.

Xue Zhang: Senior attorney focused on trademark prosecution and administrative litigation matters. Xue is skilled in handling domestic and international trademark rights confirmation disputes, with expertise in evidence organization, document drafting, and trial defense. She assisted many overseas brands in successfully combating bad-faith registrations and trademark hoarding cases in China.

Xiaofang Cai: Trademark attorney focusing on litigation and non-litigation matters in trademark, copyright and design matters. Xiaofang is specialized in trademark prosecution strategies, copyright registration, and customs recordation. She assisted many clients in effectively resolving intellectual property disputes and safeguarding brand rights. 

Foundin has a professional legal team with full capabilities in trademark enforcement, cancellation and invalidation proceedings. We are experienced in representing clients before the CNIPA and before various levels of Courts, and are skilled in cross-border evidence notarization and apostille and in sorting out prior rights of overseas brands. If you would like to learn more about Foundin and our experience, please feel free to contact us at trademark@foundin.cn and patent@foundin.cn.

Case Follow-up:

An appeal has been filed against the first-instance judgment recently, and the second-instance judgment is now pending. We will continue to write articles relating to this case.