Trademark is an important intellectual property right of an enterprise. For small and medium-sized enterprises (SMEs), the cultivation and maintenance of brands are full of challenges, and the disputes over trademark revocation have become a common risk in the operation of enterprises in recent years. Recently, King&Capital Law Firm attorneys Feng Yun-insan and Guo Yeqin were commissioned by Guangzhou Q Nutritional Food Company (“Q Company”) to represent it in a trademark dispute with the State Intellectual Property Office (‘SIPO’) and the third party, an internationally renowned food company, Z Company (referred to as “Z Company”). (“Z”), an internationally renowned food company, and was eventually supported in the first instance by rigorous analysis and solid evidence, which revoked the State Intellectual Property Office's decision to revoke the trademark review and guarded Q's core brand assets, and provided useful reference for small and medium-sized enterprises (SMEs) to cope with similar trademark disputes.
I
Origin of the case
The core trademark was suddenly “revoked”.
Failure of Re-examination and Caught in a Desperate Situation
The starting point of the case dates back to 2012, when Company Q successfully registered the trademark “X” and continued to use the trademark in the market to carry out business activities, with the approved use category of Class 32, covering goods such as “ginger ale, sparkling water, fruit powder, plant drinks, bean drinks”. Its authorized use class is 32, covering “ginger ale, sparkling water, fruit powder, plant drinks, bean drinks” and other goods. After years of market cultivation, the trademark “X” has become the core brand identity of Company Q, carrying the commercial reputation and market competitiveness of the enterprise.
The calm business situation was broken in 2023 by an application for “revocation” by Z Company (hereinafter referred to as “Z Company”), an international food company. It was reported that Company Z had registered other food trademarks with the same character but different shapes of “x”, and recently, because of its plan to enter the 32nd category of beverage market, it needed to register relevant trademarks, and Company Q's ‘X’ trademark became an obstacle to it, and Company Z then applied for revocation of its trademark with “X” in accordance with Article 49 of the Trademark Law. Company Z then filed an application for revocation of Company Q's trademark “X” with the State Intellectual Property Office (SIPO) based on Article 49 of the Trademark Law on the ground of “non-use for three consecutive years”.
In the first round of revocation hearing, the State Intellectual Property Office determined that the trademark “X” held by Company Q had been openly, legally and truthfully used on the goods in the approved use of Class 32 during the period from October 31, 2020 to October 30, 2023, and did not belong to the situation of “three consecutive years of non-use”, and according to the law, the application for revocation of “X” against Company Q was rejected. “The trademark ”X" was not revoked according to the law. Company Q was temporarily relieved by the first round of victory, but Company Z did not rest on its laurels and immediately filed a trademark revocation review with the State Intellectual Property Office (SIPO).
The reexamination stage took a major turn against Company Q. The State Intellectual Property Office (SIPO) held that the trademark “X” was invalid. The State Intellectual Property Office considered that the evidence submitted by Company Q, such as evidence of product inspection, records and invoices of procurement of packaging consumables and raw materials, and records of sales and publicity on the Internet, failed to form a complete chain of evidence, and could not sufficiently prove that it had carried out actual use within the designated period on the goods in Class 32 under review within the meaning of the Trademark Law of the People's Republic of China, and ultimately made a revocation of the trademark “X”. The final decision was to revoke the trademark “X”. For the small and medium-sized enterprises which have been deeply engaged in the food industry for many years, the revocation of the core trademark means that the brand reputation accumulated for many years will be wasted, the market competitiveness will be substantially weakened, and the subsequent production and operation will be in a dilemma, and this result has put Company Q under great operational pressure.
Two
Entrusted to intervene
King&Capital Law Firm team of lawyers to face up to the evidence of the dilemma
Facing the crisis of losing its core brand asset “X” trademark, Company Q wished to appoint King&Capital Law Firm to represent it to file an administrative lawsuit against the State Intellectual Property Office to safeguard its lawful rights and interests of the “X” trademark.2025 After accepting the commission at the beginning of the year, Mr. Feng Yun-insan and Mr. Guo Yeqin formed a team of lawyers at the first time. After accepting the assignment in early 2025, Mr. Feng Yun-insan and Mr. Guo Yeqin formed a team of lawyers to comprehensively sort out the facts of the case and check the existing evidence, and a legal defense work around the survival of the brand was carried out in an orderly manner.
The lawyers firstly made a detailed combing of the facts of the case and the existing evidence. Through in-depth communication and evidence verification, it was found that Company Q did actually use and expose the trademark in the approved use of goods in Class 32 during the designated period, and also authorized other companies to use the trademark in dispute for the purpose of production, publicity, operation and sale of the online store, etc., and it was not “not actually used” as determined by the decision of the re-examination.
Through in-depth analysis, the attorney pinpointed the core reason for the loss of the review: the evidence submitted by Company Q was flawed, failing to form a complete closed loop of evidence. What is more difficult is that, due to the later adjustment of the business strategy of Company Q, the operation and publicity work of the relevant online store has been suspended, resulting in some traces of network use difficult to trace, which has also become an important consideration for the State Intellectual Property Office to make a revocation decision in the retrial. Combined with Article 49 of the Trademark Law of the People's Republic of China, which states that “if a registered trademark becomes the common name of the goods for which it is authorized to be used or is not used for three consecutive years without any justifiable reason, any unit or individual may apply to the Trademark Office for revocation of the registered trademark,” the attorney believes that the key to the case is to supplement and improve the evidence and materials to form the evidence that proves that the “trademark” has been used. The lawyer believes that the key to the case is to supplement and improve the evidence to form a complete chain of evidence that can prove the real use of the trademark “X” within the designated period, so as to overturn the unfavorable decision in the review stage.
Three
Tackling the Difficulties
Adjustment of Strategy after Frustration of Evidence
Evidence closed loop finally formed
After clearing the direction of the case, the lawyers fully communicated with Company Q, and jointly discussed and determined the preliminary evidence and litigation program. Taking into account the company Q authorized other enterprises to use the trademark in dispute cooperation experience, decided to give priority to the cooperative enterprises and downstream customers, through field visits to verify the use of the relevant situation, retrieve written evidence. To this end, Mr. Feng traveled to Company Q's cooperative enterprises and key customers to carry out evidence collection. However, due to changes in the market environment, the termination of some cooperative relationships, changes in the relevant docking personnel and other objective factors, the forensics failed to achieve the expected results, and the case was temporarily in trouble. For small and medium-sized enterprises with limited resources, every obstruction of evidence collection means that the pressure of rights protection is further increased.
The brief setback did not shake the lawyer's determination. After re-examining the idea of evidence collection, decided to change the direction, directly against the Q company's own store background operation for evidence preservation and notarization, this idea adjustment became an important turning point of the case.
After adjusting the idea, the attorney will focus on the evidence collection to Q company's own business files and store operation records, carried out a comprehensive and detailed combing work, covering the history of sales orders, logistics and distribution records, customer communication records, trademark license agreement and fulfillment of all kinds of materials, one by one verification of each piece of evidence, one by one to trace back each business link, and strive to seemingly fragmented, flawed materials to dig out the key information with a We strive to uncover key information with relevance from seemingly scattered and defective materials. After days of meticulous sorting and analysis, a breakthrough was finally found. The product inspection report, packaging consumables and raw material procurement records and invoices which were found to be defective in the review stage were organically linked with the supplemented historical sales orders, feedback from customers, and details of the fulfillment of the trademark licensing agreement, which were able to completely restore Company Q's use of the trademark “X” for Class 32 within the designated period of time. The fact that Company Q used the trademark “X” for the production, sale and publicity of the approved goods of Class 32 during the designated period can be completely restored, forming a complete chain of evidence on the use of the trademark in the whole chain of “production-publicity-sale”. The chain of evidence formed not only made up for the defects of the previous evidence, but also became the key support for the subsequent first-instance litigation.
Four
Reversal in the first instance
Professional empowerment, the court revoked the decision to be sued
During the trial, the lawyer focused on the core controversial focus of the case, combined with relevant laws and regulations and sorting out the perfect evidence chain, clear, rigorous to the court of first instance to show the use of the evidence after the reinforcement and elaborated on the agency opinion. The lawyer pointed out that according to the Trademark Law of the People's Republic of China and relevant judicial interpretations on the use of trademarks, the complete chain of evidence submitted by Company Q can fully prove that, within the designated period, through its own use, licensing the use of other people, etc., will be used in the production of approved goods of the 32nd class of the trademark “X”, the sale of goods, and publicity activities, the relevant use behavior is true, true, true, and true. The use of the trademark “X” has been continuously used in the production, sale and publicity of the approved goods in class 32 during the designated period by means of self-use and licensing, and the relevant use is real and legal, which conforms to the requirement of use in the sense of trademark law.
At the same time, the lawyer further argued and responded to the questioning of the evidence of Company Q's trademark use by the State Intellectual Property Office in the re-examination decision, explaining to the judge that the objective reality that small and medium-sized enterprises have difficulties in retaining evidence in their daily operation should be taken into account, and that the frequency of the trademarks in dispute in certain specific regions would be significantly higher than the average, but it is true that the frequency of the trademarks in use in some specific regions is higher than the average. Higher than the average, but is indeed a real sales order, is an effective use. The chain of evidence formed by the supplementary evidence, can corroborate each other, complement each other, complete restore the real situation of company Q using the “X” trademark to carry out commercial activities, enough to overturn the review decision of the relevant determinations.
In the end, the court of first instance adopted the attorney's opinion, and concluded that the evidence submitted by Company Q, such as sales documents, business cooperation records, trademark license agreement and fulfillment documents, could prove that the trademark “X” had been used truthfully, legally and effectively on the approved goods, and that the conclusions of the revocation decision made by the State Administration of Public Knowledge were incorrect, and decided to revoke the decision. The decision of the State Intellectual Property Office was erroneous, and it was decided that the decision should be revoked and the State Intellectual Property Office should be ordered to make a new decision. After the verdict was delivered, the person in charge of Company Q breathed a sigh of relief and highly recognized the professional services of King&Capital Law Firm, and this victory initially saved its core trademark and years of brand accumulation, which is of great significance to its future business and brand planning.
V
Inspiration of the case
Low probability of winning the case behind the professional perseverance
Looking back on this case, from the loss of the trademark “withdraw three” re-examination to the victory in the first instance, the perseverance and cooperation of Company Q and its lawyers were indispensable, which highlighted the hardship of small and medium-sized enterprises in defending their rights in the face of the encirclement of internationally renowned brands. In practice, the probability of the first instance judgment being changed after the trademark “revocation” review is revoked is not high. In the face of competition from multinational enterprises, small and medium-sized enterprises still need to overcome multiple difficulties such as limited resources, weak ability to retain evidence, and insufficient professional reserves, which made it difficult for them to win the case. (According to the statistics released by the State Administration of Knowledge (SAT), in 2021, excluding the reasons for change of circumstances, the SAT won 91.8% of the trademark administrative litigation cases in the first instance, and 86.1% of the cases in the second instance. This data implies that the success rate of trademark registrants overturning the decision of the State Intellectual Property Office through administrative litigation for revocation and review is extremely low.)
King&Capital Law Firm lawyers in this case to play out the professional ability is the key to win the support: First, accurate diagnosis of the core of the case, combined with the “Trademark Law of the People's Republic of China” and the relevant judicial interpretations, rapid positioning of the evidence defects and clear direction of reinforcement; second, flexible adjustment of the evidence collection strategy, in the off-site forensic obstruction of the timely turn to the enterprise's internal business file breakthroughs, effective control of the cost of the right to defend; third, careful combing of the evidence, digging out relevant information from the scattered materials, the evidence of the case. The third is to carefully sort out the evidence and dig out related information from scattered materials to build a complete chain of evidence, laying the foundation for the litigation victory.
This case also provides practical inspiration for small and medium-sized enterprise brand management and rights protection: daily operation needs to strengthen the awareness of trademark protection, standardize the retention of procurement, sales, publicity, licensing and other types of trademark use evidence; encountered trademark disputes, should be timely use of professional lawyers team of experience and resources, and efficiently safeguard the rights and interests of their own brands, for the long-term development of the enterprise to build a solid foundation of intellectual property rights.
