what we think

By Victoria Lei, Maarten Roos

In R&P's first-time participation, the China Trademark Association (CTA) recognized one of its cases as an exemplary case for 2024.

Background

Our client's brand was established in the United States several years ago and gained considerable recognition in overseas markets. In 2019, the brand was maliciously squatted in China by a third party, who registered the trademark in 2020. The client filed an invalidation action in 2021 but was unsuccessful. Upon being retained, we submitted a new invalidation filing in 2023 and ultimately succeeded.

Decision

The China National Intellectual Property Administration (CNIPA) held that the registration of the disputed trademark constituted a filing under Article 32 of the PRC Trademark Law — namely, using improper means to forestall registration of a prior-used mark with certain influence — and ruled that the trademark should be declared invalid.

Key Issues and Highlights

The case presented two major challenges:

1. Whether an invalidation petition could be filed again after a prior attempt had failed; and

2. How to establish the reputation of the client's brand in China when products had not been directly sold in the Chinese market.

On challenge 1: The client had previously filed an invalidation action through another agent which was rejected, and under the general principle of ne bis in idem, invalidation cases are usually not reheard on the same facts. After carefully reviewing the case, we proposed a bold yet well-reasoned strategy to re-file the invalidation, supported by new evidence and a different legal basis. Despite very limited evidence available from the client, we relied on our expertise to carry out comprehensive evidence collection, meticulous case preparation, and precise legal argumentation to secure substantive examination by the CNIPA.

On challenge 2: The client had no physical stores, had not directly marketed or sold products in China, and lacked any official media presence — which is why in the initial invalidation proceedings the client was unable to prove its brand reputation in China.

Through extensive online research however, we compiled a robust body of evidence, including news reports, media interviews, online promotional content, third-party sales data, and consumer reviews. These materials formed a complete evidentiary chain demonstrating that, despite the absence of direct sales in China, the client's brand had acquired prior influence in the Chinese market through cross-border e-commerce, Daigou channels and social media exposure. Ultimately, the CNIPA accepted our argument of "prior influence through cross-border dissemination," going beyond the traditional standard of "prior use in China;" and acknowledged that the client's mark had been used earlier and had acquired influence in China — thus supporting the invalidation.

Significance of the Case

Particularly in the era of booming cross-border e-commerce, this case demonstrates how legal tools can be effectively used to regulate free-riding behavior, safeguard the legitimate rights of true brand owners, and offer a workable playbook for similar disputes.

Our firm has long specialized in the field of intellectual property and has handled a large number of similar cases, accumulating extensive practical experience. We hope that this publication exemplifies practical guidance for combating bad-faith filings and protecting cross-border brands.

We look forward to sharing more meaningful cases of this kind to provide professional support for the protection of cross-border brand rights, help more brands enhance IP risk awareness and enforcement efficiency, and contribute to the continued improvement of China's intellectual property protection ecosystem.

For support to build and protect your trademark portfolio in China, contact Victoria at [email protected] or your trusted contact at R&P. Our IP team focuses on portfolio management and disputes, and the enforcement of trademarks and other intellectual property rights in China.