Recently, LEXFIELD represented a world-renowned overseas dairy company and successfully defended the registration of its trademarks in five invalidation cases. The favorable outcomes have safeguarded the client’s core trademark rights, providing solid legal support for its continued business expansion and stable operations in the Chinese market.
The disputed trademarks consist of “letters + numbers” and are used on a certain probiotic. Having been registered and used in China for over ten years, the marks have gained significant recognition and influence. Had the trademarks been invalidated, the client’s product promotion and sales in China would have been directly impacted, causing immeasurable harm to its business in the Chinese market.
In the series of cases, the petitioner primarily argued that the client’s trademarks lacked distinctiveness. Upon receiving the client’s instruction, LEXFIELD team conducted comprehensive research and detailed analysis, studied the legal grounds and evidence, and focused on the following:
1. Collecting Extensive Evidence of Trademark Use of “Letters + Numbers”: Collected substantial evidence demonstrating that the “letters + numbers” had been used in a trademark manner, proving that the marks possessed distinctive character by the time of application and had established a unique association with the client.
2. Arguing Against Genericness: Emphasized in the response that the disputed trademarks neither constituted generic names as defined by laws, national standards, or industry standards nor had they become customary generic names through use.
3. Addressing Comparisons with Other Cases: In response to the petitioner’s reference to other trademarks that had been refused or cancelled under allegedly similar circumstances, we pointed out that those cases involved different contexts—such as bad faith in application or lack of relevance. We argued that the principle of consistent examination standards requires that variables be taken into account, including the examining authority, grounds for review, and the specific timing and contextual background, and that conclusions cannot be drawn solely based on identical trademark elements.
As a result, the China National Intellectual Property Administration (CNIPA) upheld LEXFIELD’s arguments, rejected all grounds raised by the petitioner, and maintained the registration of the client’s five trademarks.
This case offers significant insights for both domestic and international enterprises regarding trademark protection in China. We recommend that companies focus on the following aspects in the trademark practices:
1. Conscious Trademark Use: When using registered trademarks, consciously reinforce the use as a trademark. Even in descriptive contexts, it is advisable to apply the ® symbol to indicate registered trademark use.
2. Clear Licensing Terms: In licensing agreements, stipulate that: 1) the licensee must use the ® symbol; and 2) the licensee shall not use the trademark as a product name or ingredient name.
3. Proactive Enforcement: Actively enforce rights against others’ unauthorized use to prevent trademark dilution.
4. Evidence Preservation: Actively retain evidence, including product packaging, transaction documents, contracts, and enforcement records, to ensure sufficient evidence is available for future enforcement actions.
