LexField acted on behalf of a world-renowned forklift manufacturer in the first-instance trial of an administrative lawsuit regarding the invalidation of a trademark. The Beijing Intellectual Property Court ruled, in accordance with Article 44.1 of the Trademark Law of the People’s Republic of China, that the disputed trademark was registered through improper means and should be invalidated. This first-instance judgment has now taken effect.

The difficulty in this case lies in:

• When the invalidation action was filed, the disputed trademark had been registered for over five years.
• The disputed trademark somehow differs from the client’s prior trademark in terms of its literal composition.

• Although the client is a leading company in the industry, its prior trademark has no records of well-known trademark recognition. Under the current policy environment, it’s very difficult to obtain well-known trademark recognition through administrative litigation for the first time.
• The applicant of the disputed trademark did not engage in any significant acts of copying or registering other entities’ pre-existing trademarks on a large scale. Therefore, in the invalidation proceeding, the CNIPA upheld the registration of the disputed trademark.

The court made a breakthrough application of Article 44.1 of the Trademark Law. Even though more than five years had passed since the invalidation action was filed, the court took into full consideration the malicious intent of the applicant of the disputed trademark in its actual use, as well as the malicious applications made by affiliated companies of the applicant. As a result, the disputed trademark was invalidated.

LexField team didn’t merely focus on the disputed trademark applicant’s own trademark application practices. Instead, we conducted thorough on-site and online investigations into the applicant. We gathered and submitted evidence from various aspects to prove the applicant’s malicious behavior in its actual operations. This included imitating the client’s product’s design, color scheme, packaging, trademark placement, font style. The applicant also used the client’s trademark as keywords to attract traffic on online platforms, and highlighted the high similarity between its own products and those of the client in its promotional emails.

At the same time, although the applicant of the disputed trademark did not engage in any obvious trademark squatting activities, LexField team conducted a thorough investigation of all entities related to the applicant. It was found that these entities were also in the same industry and had engaged in trademark squatting. LexField team compiled this information into written submissions and charts, clearly demonstrating the relationships between the various entities and their malicious actions. This provided a solid foundation for winning the case.

This case reflects the aggressive stance taken in recent years to combat malicious trademark registrations. The court does not merely rely on rigid criteria such as the number and category of trademark applications, or the similarity of the trademarks themselves, to determine “improper means.” Instead, it also takes into account any improper practices related to the actual use of the trademarks. This approach is more flexible and comprehensive, thereby serving the goal of combating malicious registrations. For right holders, this trend is undoubtedly beneficial. In addition, right holders must also increase their efforts in investigating such cases, thoroughly identifying any malicious activities by the opposing parties and conducting thorough analyses.