In the field of intellectual property protection, every influential case serves as a milestone, guiding industry development and legal practice. The retrial of the administrative dispute over the invalidation of the “伊丽” trademarks is one such landmark. This case, handled by lawyers Nancy Qu and Susie Pang from Chang Tsi & Partners, highlights the team’s exceptional expertise in complex IP disputes.
Core conflict
Partner
Chang Tsi & Partners
Tel: +86 10 8836 9999
E-mail: nancyqu@changtsi.com
The respondent in the retrial, Inner Mongolia Yili Industrial Group, is a leading enterprise in China’s dairy industry. It is the only domestic company that met the standards of the Olympic Games, Winter Olympics and World Expo, having provided dairy products for these events. Yili also owns numerous highly valuable trademarks, including the “伊利” trademarks under class 29 (No. 613251), class 30 (No. 319285) and class 29 (No. 1706561).
The applicant for retrial, a company based in Hangzhou, began applying for and successfully registering the “伊丽” trademarks under class six (No. 14111747), class 20 (No. 14112088), class 21 (No. 14112114) and class 28 (No. 22841361) from 2014 onwards. On 31 March 2020, Yili filed invalidation requests against these four disputed trademarks. On 25 February 2021, the China National Intellectual Property Administration (CNIPA) rejected the invalidation requests and upheld the registration of the disputed trademarks.
Yili, in accordance with the Trademark Law, filed an administrative lawsuit with the Beijing Intellectual Property Court. After review, the first-instance court annulled the CNIPA’s decision and ordered it to re-adjudicate. Dissatisfied with the first-instance ruling, both the CNIPA and the Hangzhou company appealed, but the second-instance court upheld the original judgment. The Hangzhou company, still dissatisfied, applied for a retrial with the Beijing High People’s Court.
Litigation strategy
Associate and Trademark Agent
Chang Tsi & Partners
Tel: +86 10 8836 9999
E-mail: susiepang@changtsi.com
Faced with the complexities of the case, the legal team devised a highly targeted litigation strategy. Qu, holding dual qualifications as a lawyer and patent attorney, has nearly 20 years of experience, particularly in handling complex and challenging IP infringement cases. Similarly, Pang, who has specialised in IP since 2007, has accumulated significant expertise in trademark, copyright and domain name matters.
In this case, as the cited trademarks for the four disputed trademarks were revoked, the first-instance and second-instance judgments based on article 30 of the Trademark Law no longer applied in the retrial. It provides that: “Applications for trademark registration that do not comply with the provisions of this law, or are identical or similar to trademarks already registered or preliminarily approved for the same or similar goods, shall be rejected by the Trademark Office and not published.”
The team, led by Qu, invoked the principle of a change of circumstances, combined with the principles of comprehensive examination and the need-based recognition of well-known trademarks. The team emphasised that the disputed trademarks were copies or imitations of Yili’s well-known trademarks, specifically registration numbers 319285, 613251 and 1706561 for “伊利”, and strongly advocated for their protection as well-known trademarks.
To support the claim for the recognition of well-known trademarks, Qu’s team prepared and presented extensive evidence during the retrial stage to demonstrate the use and reputation of the “伊利” trademark. The evidence included specialised audit reports on sales and promotions, tax data, industry association rankings of Yili products, documentation from the National Library, product sales contracts, advertising contracts, media reports, product placements in television dramas, photographs of exhibitions and promotional events, as well as records of awards, rights protection actions and prior recognitions of well-known status. This comprehensive evidence highlighted the exceptional reputation and significant market influence of the “伊利” trademark.
The team also highlighted that the “伊利” trademarks evoke impressions of freshness, taste, health and nutrition in the food sector, particularly for ice cream, milk and dairy products. In contrast, the disputed trademarks were registered for goods such as pet litter boxes, feeding troughs, drinking troughs, metal animal cages and animal bells. This not only risked tarnishing and degrading the well-known “伊利” trademark but also posed a serious threat to the brand’s reputation, which Yili had built over years of operation.
The team further submitted substantial evidence to reveal the retrial applicant’s pattern of copying and pre-emptively registering numerous prior-used and well-known brands and trademarks, demonstrating clear intent and significantly disrupting the trademark registration system.
Case impact
Under the professional representation of Qu and Pang, the four retrial cases successfully recognised the “伊利” trademark as a well-known trademark. This marks the first time Yili Group has achieved such recognition in retrial proceedings, laying a solid foundation for its future trademark protection and registration strategy.
The retrial applicant, a company based in Hangzhou, owns more than 20 “伊丽” trademarks, which are similar to “伊利”. Despite the court’s determination of their similarity, the company continued to apply for registrations across multiple categories. The retrial judgment provides Yili Group with strong grounds to effectively block further attempts by the company to register such marks.
More importantly, the retrial judgment robustly protects the well-known “伊利” trademark, offering substantial case support for future cross-category protection claims. It effectively prevents malicious exploitation, tarnishing or disparagement of the trademark’s reputation. The court’s discussion on the scope of cross-category protection for well-known trademarks, emphasising that it should correspond to their level of recognition and warrant broader protection, reflects a strong judicial stance of IP protection. This approach positively and profoundly impacts the creation of a business environment based on good faith and integrity.
In the “伊丽” trademark invalidation retrial, Qu and Pang used their expertise to secure a pivotal victory for their client, setting a benchmark for intellectual property protection and showcasing the team’s excellence in the field.
Nancy Qu is a partner at Chang Tsi & Partners. She can be contacted by phone at +86 10 8836 9999 and by email at nancyqu@changtsi.com
Susie Pang is an associate and trademark agent at Chang Tsi & Partners. She can be contacted by phone at +86 10 8836 9999 and by email at susiepang@changtsi.com
