A leading tile manufacturer from Russia has built a strong reputation in its home market and expanded successfully into China and multiple European countries, thanks to its unique antibacterial technology, artistically fluid designs, and outstanding cost performance.
In 2023, however, when the company sought to extend the territorial protection of its core international trademark registration into China, it encountered a significant obstacle. The China National Intellectual Property Administration (CNIPA) cited a prior identical trademark registered by a Chinese company and rejected the client’s extension application. This posed a serious threat to the brand’s ability to secure legitimate brand protection in the Chinese market.
The complexity of the case lay in the fact that the trademark squatter was no stranger to the client. Our in-depth investigation uncovered that the registrant of the cited trademark was closely connected to the client’s long-term manufacturer in China, and both companies shared the same supervisor (referred to here as “Natural Person A”). It became clear that the squatter had exploited this specific business relationship to file the trademark in bad faith, while being fully aware of the client’s rights. Proving such relational links and demonstrating malicious intent are often the most critical and challenging aspects of cases like this.
Faced with this intricate situation, our team quickly mobilized and developed a legal strategy centered on Article 15(2) of China’s Trademark Law, which expressly prohibits trademark squatting by parties who have acquired knowledge of another’s trademark through specific relationships, such as business dealings. Our focus was to build a solid and comprehensive evidence trail to establish the connection between the squatter and the client’s manufacturer, as well as to prove that the squatter should have been aware of the client’s trademark.
We worked closely with the client throughout the evidence-gathering phase. First, we systematically organized a series of Product Sales Contracts and corresponding payment invoices dating back to 2020, which clearly evidenced a sustained business relationship between the client and its Chinese manufacturer. Next, we secured a formal Statement from the manufacturer, confirming its authorized use of the disputed trademark, acknowledging the client as the rightful owner, and, crucially verifying that its supervisor, Natural Person A, also served as the supervisor of the squatting entity. Finally, to solidify the evidence of affiliation, we obtained the business registration files of both companies, providing authoritative documentation of the shared personnel.
This evidence was woven into a logically compelling chain and presented as our strong observation in our invalidation request.
Upon review, CNIPA fully accepted the evidence and reasoning presented in our submission. It ruled that prior to the filing date of the disputed trademark, a business relationship existed between the client and the manufacturer, and that through their shared supervisor, Natural Person A, the squatter was specifically connected to the manufacturer and therefore should have been aware of the client’s trademark. The registration was consequently found to violate Article 15(2) of the Trademark Law, and the disputed trademark was declared invalid. With this barrier removed, the client’s international trademark registration was duly extended for protection in China.
This successful outcome delivered significant strategic value: it safeguarded the client’s intangible assets, secured exclusive trademark rights for its core brand in China, and eliminated a major legal obstacle to market expansion. Moreover, it served as a deterrent against malicious squatting practices, upholding integrity and fair competition in the marketplace. Ultimately, it reinforced the client’s confidence and commitment to further invest in and grow its presence in China.
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.
