In February 2024, the Beijing Higher People's Court made judgments on four retrial cases of trademark invalidation administrative litigation represented by Chang Tsi & Partners (hereinafter referred to as “CTP”), supporting CTP lawyers' claims of the principle of comprehensive review in administrative litigation based on the principle of change of circumstances, and the necessity for well-known trademark recognition. In the four judgments, it was recognized that the cited trademarks of CTP’s clients constituted well-known trademarks, and the favorable second instance administrative judgments were upheld.

I. Background

CTP's client is a well-known dairy product enterprise in China. They filed request for invalidity against trademarks registered by others in multiple categories related to pet products, which were similar to the client's core trademarks. The grounds for invalidity included Article 30 of the Trademark Law (the disputed trademark is similar to the cited trademarks in respect of similar goods) and Article 13, paragraph 3 (the disputed trademark is similar to the cited well-known trademark in respect of dissimilar goods). The National Intellectual Property Administration (CNIPA) found that the disputed trademarks did not constitute similar marks in respect of similar goods and did not violate the provisions of Article 30 and Article 13, paragraph 3 of the Trademark Law, and upheld the disputed trademarks.

CTP represented its client initiated administrative litigations and won both the first and second instances. The courts ruled that the disputed trademarks and the cited trademarks constituted similar marks in respect of similar goods, and dismissed the CNIPA’s invalidation decisions based on Article 30 of the Trademark Law, without commenting on the client's claims under Article 13, paragraph 3.

However, the trademark owner took actions to cancel the cited trademarks of CTP's client in the same Classes, and these cited trademarks were eventually cancelled and announced. Based on this, the trademark owner filed for retrial applications with the Beijing Higher People's Court, which decided to review the series of cases.

II. CTP's Strategy

Since the cited trademarks of the client in same Classes had been cancelled and announced for not being used for three years, the legal basis for the first and second instance judgments, namely, Article 30 of the Trademark Law, no longer applied to this batch of cases. Therefore, the focus of the retrial stage should be to persuade the court to review the cases based on Article 13 of the Trademark Law, to recognize the cited trademarks of the client on dairy products as well-known trademarks, and to provide cross-class protection. To this end, CTP lawyers carefully sorted out the evidence proving the well-known status from the review stage, the first instance, and the second instance administrative lawsuit, requested the retrial court to hold a hearing, presented detailed arguments and evidence to the court about the necessity for well-known trademark recognition based on the principle of change of circumstances, and asked the court to review the facts and reasons for the invalidation declaration according to the principle of comprehensive review.

III. Case Highlights

1. Article 30 of the Trademark Law is an important legal basis for trademark opposition or invalidation cases. Once the cited trademarks on the same or similar goods is cancelled and announced, they are no longer constitutes an obstacle to the disputed trademark. At this point, requiring the court to review other grounds for invalidation based on the principle of change of circumstances and the principle of comprehensive review is conducive to protecting the legitimate prior rights of the rights holder and preventing the registration of the disputed trademarks.

2. By persuading the court to apply Article 13 of the Trademark Law during the retrial stage, recognizing the well-known status of the client's core trademarks on core products, and providing cross-class protection, the client's brand value was greatly enhanced and providing a solid basis for the client's future trademark prosecution and enforcement cases.