Our client, a renowned international brand that entered the Chinese market during the early stages of China's reform and opening-up, has built a legacy spanning nearly a century. Its core trademark has been consistently used on relevant products and enjoys widespread market recognition.
The challenge arose when an individual in China filed a trademark application that bore an obvious resemblance to our client’s core brand in terms of textual composition. Given the substantial reputation and influence our client’s trademark has accumulated in the Chinese market, the registration of this similar mark could easily mislead consumers regarding the origin of goods, thereby damaging our client’s brand value and market position.
The complexity of this case lay in the fact that, according to the current classification of goods and services, the disputed mark’s designated products did not fall under the same category as those covered by our client’s trademark. Moreover, there were notable differences in function, intended use, and sales channels between the two. Without strong evidence demonstrating our client’s extensive use of its trademark in related product categories or clear proof of malicious intent by the applicant, obtaining support from the trademark authority would be highly difficult.
In response to the above challenge, our team leveraged our professional legal analysis and strategic execution capabilities to develop a precise action plan:
First, we conducted a detailed comparison of the trademarks from multiple perspectives including textual composition, pronunciation, and meaning, and we argued that the disputed mark was identical or highly similar to our client’s prior registered series of trademarks.
Second, through an in-depth analysis of the actual market situation, we demonstrated that despite differences in official classification, the goods in question overlapped significantly in terms of sales channels, retail environments, and target consumer groups. This allowed us to successfully argue that the products were indeed similar and that the disputed trademark constituted “an identical or similar trademark used on similar goods” relative to our client’s earlier registered mark.
Simultaneously, we assisted the client in systematically gathering, organizing, and submitting substantial evidence of the long-term and extensive use of its core brand series in China, proving the brand’s established reputation and influence within the relevant industry.
Additionally, we identified and secured evidence indicating that the applicant of the disputed mark had deliberately imitated and copied others’ pre-existing trademarks with strong originality, thereby demonstrating that his registrations violated the provisions of the Trademark Law prohibiting “registration by deceptive or other improper means.”
Throughout the opposition proceedings, we presented the facts of the case with logical rigor and structural clarity, articulating our legal standpoint in a well-reasoned and persuasive manner. Ultimately, the trademark authority partially supported our arguments, concluding that the applicant had acted with the intent to imitate another’s trademark. Such conduct was deemed likely to mislead the public, disrupt trademark registration order, harm fair market competition, and contravene the legislative intent of the Trademark Law. Consequently, the authority ruled against approving the registration of the disputed trademark.
This successful opposition prevented an act of malicious trademark squatting and removed a significant barrier to our client’s brand strategy in China. Through meticulous evidence preparation and rigorous legal argumentation, we turned a seemingly unfavorable situation into a favorable outcome, effectively safeguarding our client’s core brand rights and interests.
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/litigation/legal matters, please send to info@bhtdlaw.com.
