Recently, the Beijing High People's Court issued a second instance judgment in a trademark invalidation case, initiated by an internationally renowned mechanical equipment enterprise (hereinafter “the Right Holder”) represented by NTD IP Attorneys Lily FU and Hongxin WANG, against the China National Intellectual Property Administration (CNIPA) and the third party, a Chinese machinery company. The court upheld our appeal, ruled to revoke the first instance judgment and the contested invalidation ruling, and ordered the CNIPA to issue a new decision. In this case, NTD legal team precisely addressed key legal issues, including trademark similarity determination, association between goods, and bad-faith of third party, successfully overcame the classification of goods under the Classification of Similar Goods and Services, achieved a second instance reversal, and further consolidated the Right Holder's trademark protection barrier in the hydraulic, pneumatic, and sealing sectors.
Case Summary
The Right Holder's “P” trademarks (registered under Class 7) have been registered in China since the 1980s and have enjoyed very high popularity in hydraulic equipment, seals, and hydraulic valves. In 2022, the third party applied for the “T” trademark (differing from the Right Holder's mark only in the first letter), which was approved for use on goods under Class 7 including “superchargers; air compressors for vehicles”. The Right Holder subsequently filed invalidation against this mark, but was rejected by CNIPA on the ground that the designated goods are not similar. The Right Holder then appealed to the first instance court, which upheld the invalidation ruling. Subsequently, the Right Holder further appealed to the Beijing High Court, which finally ruled that the disputed mark constitutes similar trademark with the cited trademark, and the registration violated Article 30 of the Trademark Law.
Case Highlights
In this case, the attorneys submitted to the court multiple precedents where CNIPA and courts had previously deviated from the Classification of Similar Goods and Services in determining similarity of goods or services. They also assembled extensive evidence of the cited mark's reputation to demonstrate its high recognition in the market. In addition, the attorneys presented evidence that the third party had filed applications for the same mark in other classes, and the shareholder of the third party had previously applied for an identical mark to the cited mark, thereby establishing that the third party, as a competitor in the same industry, had clear bad faith in applying for the disputed mark. Furthermore, the attorneys emphasized the strong relatedness between the designated goods of the disputed mark and the cited mark in terms of function, purpose, consumer base, and sales channels, as well as the likelihood of confusion in actual use. Ultimately, the attorneys successfully persuaded the second instance court to depart from the classification of goods under the Classification of Similar Goods and Services, ruling that the simultaneous use of the disputed mark and the cited mark on their designated goods would likely cause confusion among the relevant public regarding the source of the goods, thus constituting similar trademarks within the meaning of the Trademark Law.
Significance
In this case, the second-instance court no longer mechanically applied the classification in the Classification of Similar Goods and Services, but instead comprehensively considered factors such as the function, purpose, consumer base, and sales channels of the goods, combined with the reputation of the cited mark and the subjective state of the third party, and found that the disputed mark carried a likelihood of confusion in actual use. This decision provides strong guidance for future cases.
This case was handled by two teams of NTD IP Attorneys Lily FU and Hongxin WANG. At the second instance stage, the attorneys precisely identified the key breakthrough points, systematically organized evidence of the Right Holder's global and China-based sales, advertising, exhibitions, and awards, and constructed a complete chain of evidence for reputation. They focused their arguments on dimensions such as goods relatedness, the reputation evidence chain, and the facts of bad-faith registration, successfully overturning the first-instance judgment and the contested administrative ruling. This case once again demonstrates NTD's profound strength in the field of trademark prosecution and administrative litigation, particularly its ability to secure second-instance reversals in complex and difficult cases.
Lily FU
Senior Partner
Attorney-at-Law
Lily Fu is a seasoned attorney with 26 years of extensive experience in intellectual property and commercial legal services. She has successfully managed over 6,000 legal matters, including numerous complex cross-border IP and commercial disputes. Known for her exceptional expertise and strategic litigation approach, she consistently delivers high success rates and client satisfaction, earning widespread recognition for her professional excellence and service quality.
Ms. Fu’s practice spans the full spectrum of intellectual property services—including litigation and enforcement, patent and trademark portfolio strategy, invalidation actions, administrative investigations, and trade secret protection—as well as end-to-end commercial contract management, from drafting and review to negotiation and dispute resolution (arbitration/litigation). She also advises on comprehensive corporate compliance systems, covering data compliance, cross-border operations, and related areas.
With a deep understanding of business fundamentals, Ms. Fu effectively identifies and addresses core client needs such as market expansion, technological innovation, and risk mitigation. By integrating legal insight with commercial strategy, she helps clients build a solid legal foundation for technology commercialization and brand development while supporting sound, forward-looking business decisions. She serves as retained counsel and specialized legal partner to multiple Fortune 500 companies and industry leaders.
Leveraging a global network across the United States, the European Union, South Korea, and China, Ms. Fu is adept at navigating cross-jurisdictional legal frameworks, judicial practices, and business norms. She provides seamless and efficient international legal support, helping clients manage cross-border trade, resolve legal conflicts, mitigate compliance risks, and execute global strategies smoothly.
As a team leader, Ms. Fu is committed to mentoring the next generation of lawyers through case reviews, hands-on guidance, and targeted training, fostering a team known for its professionalism, service excellence, and ethical rigor. She actively contributes to global IP policy discussions and industry compliance standard-setting, drawing on her decades of experience to help clients anticipate regulatory trends, address potential risks, and implement proactive, refined legal risk management frameworks.
Hongxin WANG
Senior Partner
Attorney-at-law
Patent Attorney
Trademark Attorney
Hongxin WANG joined NTD in 1997 and started his profession in intellectual property. Ms. Wang earned a Master of Law degree in Renmin University of China. Ms. Wang has been qualified to practice as trademark attorney, patent attorney and attorney at law.
Ms. Wang concentrates her practice in IP strategy counseling, and foreign-related IP litigation. Ms. Wang has more than 20 years of experience in representing many famous companies in the protection of their IP rights in China. Ms. Wang has rich experience in the field of trademark prosecution, license, opposition, invalidation, recognition and protection of well-known marks and administrative litigation.
