Recently, LexField represented a renowned foreign artificial intelligence company in two trademark invalidation administrative litigation cases, winning both the first and second instances. The Beijing Intellectual Property Court and the Beijing High People's Court, based on Article 32 of the Trademark Law of the People's Republic of China, ruled that the registration of the disputed trademarks infringed upon the client's prior trade name rights, and ordered the invalidation of the two trademarks, which were identical to the client's trade name and applied for registration in 2015.

In the invalidation stage, the cases were handled by another trademark agency, and the invalidations were not supported by the China National Intellectual Property Administration (CNIPA). After taking over the administrative litigation proceedings, LexField team conducted a comprehensive and meticulous review of the case facts, legal basis, and evidence materials. By accurately identifying the breakthrough point in the cases, the team ultimately successfully overturned the unfavorable invalidation rulings in the first-instance of administrative litigations, with the second-instance court subsequently affirming the favorable judgements.

The challenges in these cases lie in:

1. There is a risk of "double jeopardy" in procedure. These invalidation proceedings represented the second attempt by the client to invalidate the disputed trademarks, and both invalidation requests had previously been rejected by the CNIPA.

2. Substantially, both disputed trademarks were applied for registration in 2015, with the application date even earlier than the client's own trademark applications in China, making the client's basis of rights relatively weak.

3. As a foreign enterprise primarily engaged in cutting-edge artificial intelligence, prior to the filing date of the disputed trademarks, the client had not directly conducted business in mainland China. It had no local branches, and was unable to provide traditional evidence of reputation, such as sales contracts, invoices, or advertising materials. Moreover, the application date of the disputed trademarks has been over a decade, making to the collection of historical evidence particularly challenging.

4. The applicant of the disputed trademarks is a locally-owned private enterprise of a certain scale, without obvious large-scale infringement or malicious imitation of others’ trademarks.

LexField team conducted a detailed review of the case evidence and ultimately decided to focus on the breakthrough point of the prior rights of the trade name under Article 32 of the Trademark Law of China in this case. In response to the above challenges, LexField team emphasized and supplemented targeted points during the trial process and in post-trial written opinions, including the following:

1. To address "double jeopardy" issue, LexField team meticulously compared the grounds and evidence presented in the two invalidation proceedings. We particularly supplemented a favorable judgment from another case that recognized the client's trade name had achieved a certain level of recognition as early as 2015. We emphasized that this judgment was newly generated after the initiation of the first invalidation proceeding, constituting substantial new evidence. This claim was accepted by the court.

2. Regarding the territorial issue of the client's prior trade name right, LexField team argued that, although the foreign enterprise was neither registered in mainland China, nor directly conducting business here, through extensive media coverage, online discussions, and technical exchanges, a sole association between the trade name and the client has been established among the relevant public in mainland China. As such, the client's trade name had generated legal interests in mainland China and should be protected.

The court upheld these arguments and ruled that the disputed trademarks infringed upon the client’s prior trade name rights. The judgments further noted that allowing trademarks identical to the well-known trade names of others to coexist would not only harm prior rights holders, but also damage consumer interests and disrupt market order. Such coexistence would be detrimental to the effective cultivation of independent brands by Chinese enterprises and their participation in broader international competition, thereby negatively impacting their long-term development.

These cases are of significant importance for foreign enterprises to safeguard their rights in mainland China. The court did not adhere strictly to the literal territorial principle, traditional modes of trade name use, or conventional evidentiary requirements for reputation. Instead, the court interpreted the law in light of its legislative intent and the specific characteristics of the artificial intelligence industry. In doing so, they provided effective protection for the prior trade name rights of foreign enterprises. At the same time, the court also provided guidance from a broader perspective, aiming to regulate the market order and assist the high-quality development of private enterprises in China, fully demonstrating the organic unity of legal effect and social impact.