Practical Insights: In-Depth Analysis and Future Prospects in the Trademark Prosecution Field by Nana Zhang

Source: IPR Daily

In the field of intellectual property prosecution, Nana Zhang and her team at Chang Tsi & Partners have become a solid support for numerous multinational companies in China and surrounding regions, thanks to their exceptional professional skills and extensive practical experience. Nana Zhang graduated from George Washington University with a Master of Laws in Intellectual Property and has been specializing in intellectual property rights since 2008. Leading a team of nearly 20 professionals, she has amassed rich experience in trademark portfolio management, trademark evaluation, searches, filings, oppositions, invalidations, and cancellations, and has also shown outstanding performance in copyright registration and copyright claims in related conflict cases.

Nana Zhang works for multinational companies from various sectors such as e-commerce, telecommunications, banking, retail, consumer goods, industrial, medical, sports events, and apparel. She provides intellectual property legal services domestically and also assists clients with IP matters in Hong Kong, Macau, Taiwan, and other neighboring countries and regions, offering a one-stop service. This international perspective and service capability have earned her a high reputation in the industry.

Nana Zhang's professional achievements have been widely recognized. She was named a Boutique Intellectual Property Lawyer by Legal Vision in the "Boutique Intellectual Property Legal Services Brand Guide (2023)" and was honored as one of the Top 50 Intellectual Property Elite Lawyers under 50 in China by IPR Daily in 2024. These accolades not only highlight her outstanding achievements and professional standing in the field of intellectual property but also reflect her influence and leadership within the industry.

Case Analysis: The Diversity and Challenges of Trademark Prosecution Work

Nana Zhang and her team have handled numerous landmark cases, covering a wide range of issues in both trademark prosecution and protection phases. Below are a few representative cases that highlight their extensive experience and strategic approach in the field of trademark prosecution:

1st Case: Successfully Overcoming an Official Examination Opinion for a State-Owned Enterprise to Register a Trademark Containing the Word "China"

A state-owned enterprise entrusted Nana Zhang's team with a trademark application. The China National Intellectual Property Administration (CNIPA) issued an Official Examination Opinion, stating that the trademark contained the name of the country "China", which could negatively impact public interest and order. The opinion required authorization proof from the State Council or its competent authority. Nana Zhang’s team argued that the applicant was under the supervision of the State-owned Assets Supervision and Administration Commission (SASAC) of the State Council, and its name had been approved for use by the State Council. They cited similar previously approved cases, asserting that the trademark should be registered. By providing detailed explanations and relevant supporting documents (such as the Baidu Encyclopedia entry on the applicant, the applicant's institution certificate, SASAC approval documents, and the SASAC list of central enterprises, etc.), they successfully overcame the Official Examination Opinion, ensuring the trademark's registration. This case demonstrated the team's effective strategies and experience in addressing such opinions.

2nd Case: Overcoming Rejection Due to "Adverse Effects" in the "SAPIM SPOKES AND NIPPLES" Trademark Review Case

This case is a typical example of overcoming rejection based on absolute grounds. Nana Zhang's team represented a client whose Class 12 trademark "SAPIM SPOKES AND NIPPLES" was rejected by the CNIPA on the grounds of having adverse effects, thereby violating Article 10.1.8 of the Trademark Law. It is normally very hard to overcome adverse effects at the review stage. Nana Zhang’s team analyzed the rejection and identified that the primary issue was the sensitive term "NIPPLES" (one of its meanings being "nipple"). Based on this, they argued from the perspectives of the trademark's composition and meaning, features of its designated goods, and the applicant's actual usage, to demonstrate that the trademark did not have any adverse effects.

Firstly, the trademark as a whole did not have any derogatory meaning and would not cause adverse effects when used on the designated goods. Secondly, "SAPIM SPOKES AND NIPPLES" is a unique combination of words, not an inherent term or common expression. Lastly, "NIPPLE" has multiple meanings in the dictionary, and when combined with "SPOKE," it refers to bicycle parts, carrying no adverse connotations. Additionally, Nana Zhang and her team worked closely with the client to collect and submit relevant use evidence from the client's official website, proving that the trademark was not related to the meaning of "nipple".

Ultimately, the Trademark Review and Adjudication Department (TRAD) at the CNIPA determined in the review that the trademark as an entirety did not have adverse effects and approved its registration. This case showcased Nana Zhang's team's professional ability to overcome absolute grounds for refusal, successfully protecting the client's interests.

3rd Case: Combating Malicious Registration and Breaking the Five-Year Limitation – The "美运三福红环 USASANFORD ROTRING" Trademark Invalidation Case

This case is a typical example of a trademark invalidation proceeding involving malicious registration beyond the five-year limitation period. The complainants, Luxembourg Brand S.à.r.l. and Sanford L.P., respectively owned the "ROTRING" and "SANFORD" trademarks. The disputed trademark, "美运三福红环 USASANFORD ROTRING", was registered by Shanghai Hui Bai Jia Commercial Trade Co., Ltd. in 2013 and later transferred to Mei Yun San Fu Hong Huan (Shanghai) Trading Co., Ltd. Nana Zhang's team, on behalf of the complainants, filed for invalidation, focusing on overcoming the five-year limitation by arguing that the disputed trademark was obtained through improper means.

Through in-depth research and evidence collection, the team demonstrated that both the original applicant and the current registrant had engaged in extensive copying and imitating of others' trademarks. They also argued that the complainants' trademarks were highly distinctive and had a certain level of recognition. Ultimately, the TRAD found that the registration of the disputed trademark constituted obtaining registration through improper means, as stipulated in Article 44, Paragraph 1 of the Trademark Law, thus overcoming the five-year limitation and ruling the disputed trademark invalid.

This case highlighted the CNIPA's more proactive stance against malicious trademark registrations, providing important guidance for similar cases. It also demonstrated Nana Zhang and her team's expertise and strategic approach in combating malicious registrations, successfully protecting the clients' interests.

4th Case: Token Use – The Review of the "FRISIAO" Trademark Non-Use Cancellation Case Against Mr. Chen(registrant)

The challenge in this case was to prove that the evidence of use provided by the registrant (including five licensing agreements, fifteen invoices, etc.) constituted mere token use. Nana Zhang and her team conducted an in-depth analysis of the authenticity, legality, and relevance of the evidence. They meticulously examined the flaws of the invoices, such as their scattered dates, small quantities, and low amounts. The team also uncovered the relationship between the registrant and the licensees, as well as the registrant's malicious intent in copying and imitating others’ trademarks.

By referencing prior cases and the criteria for determining token use, they focused on questioning the registrant's subjective intent and the objective flaws in the evidence of use. Ultimately, the TRAD concluded that the registrant's actions constituted token use, leading to the cancellation of the trademark registration. This case provided significant guidance on the cancellation of trademarks based on token use and showcased Nana Zhang and her team's meticulous approach and expertise in handling such complex matters.

5th Case: Defending Against Non-Use Cancellation – The "Carrier" Series Trademarks Non-Use Defense Case

In this case, three core trademarks of Carrier Corporation faced non-use cancellations for all designated goods due to alleged non-use for three consecutive years. The challenge lay in the fact that the designated goods of the earlier registered trademarks did not directly correspond with the goods actually in use, and the forms of trademark use were varied. Nana Zhang and her team had only two months after receiving the notification to urgently devise a strategy, actively collect and review evidence of use, and submit new trademark applications as a backup.

Through detailed evidence collection guidance, close communication with client, evidence organization, and a new application strategy, the team successfully demonstrated the use of the trademarks. Ultimately, the CNIPA upheld the registration of Carrier's three core trademarks, ensuring the stability of its commercial operations and laying a solid foundation for the future protection of its trademark rights.

Insights and Future Prospects in the Field of Trademark Prosecution

Drawing from the aforementioned cases, Nana Zhang has profound insights into the changes and trends in the field of trademark prosecution.

1.Stringent Examination Standards: In recent years, the standards for trademark examination have become increasingly stringent, particularly in the scrutiny of absolute and relative grounds. Absolute grounds involve prohibitions on registration and/or use, while relative grounds focus on the similarity between the trademark in question and prior trademarks. This trend enhances the quality of trademarks and effectively curbs malicious registrations, yet it also brings new challenges for trademark applications.

2.Role of Examination Opinions: Examination opinions are an increasingly significant role in the trademark examination process. Applicants can better understand the examination standards and requirements through these opinions, thereby improving their chances of successful application.

3.Combating Malicious Registrations: Moreover, the CNIPA has intensified its efforts to combat malicious registrations. By improving relevant laws and regulations and strengthening enforcement, these measures effectively deter unfair competition and enhance China's overall reputation in the international intellectual property arena.

4.Non-Use Cancellation Risks: At the same time, the risk of registered trademarks being subject to non-use cancellation after three years has increased, and the scrutiny of evidence of use has become more stringent. This requires trademark owners to pay more attention to the actual use of their trademarks and the preservation of evidence to ensure continuous and effective protection of their trademarks.

These changes prompt trademark owners and related institutions to be more cautious and professional in trademark management and protection, fostering healthy development in the field of trademark prosecution.

Future Prospects

Looking forward, the field of trademark prosecution in China will witness a series of innovations and developments, including but not limited to:

1.Innovations and Developments: The widespread application of big data technology will significantly enhance the efficiency and accuracy of trademark examinations, reduce human errors, and ensure consistency and coherence in examination standards.

2.International Cooperation: International cooperation and exchanges will continue to strengthen, promoting the harmonization and unification of trademark laws and facilitating cross-border trademark protection.

3.Specialization of Legal Services: The specialization and refinement of legal services will improve, with legal service institutions focusing on in-depth research of trademark laws and practical skills, providing comprehensive, precise, and personalized legal services to clients.

4.Impact of Artificial Intelligence(AI): The rapid development of AI technology presents new challenges and opportunities for copyright protection. In the future, the legal framework will continually update to accommodate changes brought by AI creations, clarifying the ownership and protection mechanisms of AI-generated content, thereby promoting high-quality development and innovation in the industry

The field of trademark prosecution in China will continue to advance, providing more efficient and comprehensive protection for trademark owners, and driving the continuous optimization and innovative development of the business environment. Nana Zhang and her team will also continue to refine their professional expertise, offering comprehensive, precise, and tailored legal services to clients, and contributing to the sustained development of the field of trademark prosecution.

Author's Profile

Nana Zhan
Chang Tsi & Partner
Counsel/Attorney at Law/Trademark Agen
Email: NanaZhang@changtsi.co
Tel: +86 10 88369999

Source: IPR Daily