Trademark practice has been our traditional strength since the firm's creation. In this area, we are known to clients and peers for our stellar credentials on trademark laws and regulations. Our top-notch practice team has generated a record of firsts and landmark cases in the nation's trademark prosecution and litigation history. We also made frequent contributions to the development of trademark laws in China.
Our landmark cases include:
• the "first registration of a color combination trademark"
• the "first exhibition priority application" with the China Trademark Office
• the "first well-known trademark status to an unregistered trademark" by court
• the "first infringement court decision against a distributor of parallel imports"
• the "first court's decision on infringement of a registered 3D trademark"
• the first Court decision in which China's court confirms that pure color combination, before it is registered as a trademark, may be protected as "trade dress" under the Anti-Unfair Competition Law and more recently
• the "first criminal ruling on geographical indication collective trademark" and the "first court decision that granting GI collective trademark 'Bordeaux in Latin & Chinese' judicial protection in China".
Our trademark practice is actively exploring frontier matters such as parallel import, fair use, co-existence, liability of online trading platform, super well-known trademark status, character merchandising and conflicts of rights.
SPC IP Report Cases: Representing Mr. Manolo Blahnik in successfully invalidating through retrial proceeding the registration of trademark “MANOLO&BLAHNIK马诺罗•贝丽嘉” filed by a Chinese squatter in class 25 in 1999, based on the designer’s name right and bad faith of the registrant. The client went through opposition, review of opposition, invalidation and the ensuing administrative suits, but to no avail. The retrial decision turned the table for the client in a decades-long battle against the copycat mark.
SPC Top 50 Cases: Representing a major player in wedding photograph shooting business in reversing unfavourable CNIPA and court decision invalidating its registered trademark “米兰” (Chinese transliteration of “Milan”) in class 41. The court of appeal found that the trademark had acquired secondary meaning through extensive use and is unlikely to cause confusion, thus ruled to maintain the registration.
SPC Top 50 Cases: Representing Lacoste in the invalidation proceeding and subsequent administrative litigation initiated by CARTELO CROCODILE PTE LTD against Lacoste's registered trademark “
” in Class 25. The SPC, in a re-adjudication procedure, finally decided to maintain the validity of the trademark.
SPC Top 50 Cases: Representing a major Keemun tea maker in invalidating the registration of Keemun Black Tea certification trademark, which erroneously designated Qimen County as the exclusive growing region of Keemun Black tea. The court of appeal and the re-adjudication court (SPC) found the registrant breached the good faith principle and upheld the invalidation decision.
SPC Gazette Cases: Representing China Spider King Group in the opposition review administrative proceeding, obtained favorable court decisions and the SPC’s affirmation that the goodwill built up by a market player may be shifted among or extended to a variety of carriers that may serve as the source identifier of its goods or services, but there is no alternative form of trademark extension other than trademark renewal.
SPC Top 50 Cases: Representing Michelin in winning the civil suit against Shanghai Mi Zhi Lian Catering Management Ltd. et al., which used the Chinese transliteration of the Cantonese pronunciation of Michelin in business operation and as registered trade name. The Wuhan Intermediate court and the Hubei High Court affirmed trademark infringement and unfair competition, ordered cessation and awarded damages of RMB 10 million.
Suzhou Intermediate Court Top 10 Cases: Representing BNIC, the French National Bureau of Cognac Industry in prevailing in the unfair competition suit launched against Ford. Both the first and second instance courts found that Ford China exploited the reputation of ‘Cognac’, a protected GI to elevate its own brand, thereby gaining an unfair competitive edge. The courts thus ordered cessation and awarded damages of RMB 2 million.
QBPC Top 10 Cases: Representing New Balance in obtaining a permanent court injunction and landmark damages of RMB 30.04 million (inclusive of reasonable costs) in the second instance of a trademark infringement and unfair competition suit against the infringers using a slavish copycat of the client’s iconic slanting “N” logo and its Chinese trade name, which has acquired certain influence.
QBPC Top 10 Cases: Representing Lacoste in obtaining favourable court decision in a trademark infringement lawsuit against Nanji E-Commerce, owner of Cartelo brand. The courts at both instances affirmed trademark infringement, ordered cessation and awarded damages of RMB 15 million.
Beijing High Court Top 10 Trademark Cases: Obtaining for the client the revocation of “千页豆腐” (thousand-layer tofu) trademark registered by a Chinese food producer in class 29 in 2013. The court of appeal affirmed that the trademark has degenerated into a generic name of tofu and tofu varieties when the revocation application was filed.
SPC Top 10 Cases: Representing Wyeth in securing a favorable decision in a civil appeal proceeding against a long-term infringer Guangzhou Wyeth Baby Products Ltd. et al. The Zhejiang High Court upheld the decision rendered by the Hangzhou Intermediate Court, which found trademark infringement and unfair competition, ordered cessation, and granted punitive damages of RMB 30 million and reasonable legal expense of RMB 550,000.
SPC Top 10 Cases: Representing the Commercial Press in bringing a trademark infringement and unfair competition action against an infringer that published copycats of the client's best-selling dictionary, obtained a favorable court decision, the recognition of the well-known status of the client's unregistered trademark, an injunction and damages of RMB 3 million.
SPC Top 50 Cases: Representing Michelin in a trademark infringement suit against a Chinese infringer exhibiting and promoting toys using the "Tire man device", obtained favorable re-adjudication decision, cessation and damages of RMB 100,000. The re-adjudication court ascertains that using a figurative trademark as a three-dimensional object constitutes trademark infringement.
SPC Top 50 Cases: Representing Michelin in a trademark infringement and unfair competition suit against the prominent use of its trade name and registered trademark by an acoustic equipment manufacturer, winning the suit and the judicial recognition of Michelin’s super well-known trademark status.
SPC Top 50 Cases: Representing Michelin in a trademark infringement suit against the blatant misuse of its trade name and registered trademark by a local electric bicycle maker, obtained a court injunction against the defendant.
SPC Top 50 Cases: Representing United Family Healthcare in a re-adjudication proceeding against a copycat, in which the SPC affirmed trademark infringement and unfair competition, ordered the cessation of the infringing acts and name change and awarded RMB 3 million for damages and costs.
SPC Top 50 Cases: Representing 3M in obtaining damages of RMB 3.5 million (exceeding the statutory limit in the Trademark Law) against a Chinese infringer, a decision upheld by the court of second instance and by the SPC.
SPC Top 50 Cases: Representing Pierre Fabre Dermo Cosmetique in obtaining an unfair competition decision against an online seller of genuine Avène products that promotes business in a misleading way.
SPC Top 50 Cases: Representing L’Oréal in a trademark infringement and unfair competition suit against the combined use of its trade name and an infringing mark on goods of the same class, obtaining a favorable court injunction and damages of RMB 500,000, the highest statutory damages then provided by the Trademark Law.
SPC Gazette Cases: Representing Lacoste in a trademark infringement suit against the operator of a market where counterfeit distributors were located, obtaining a court injunction and decision holding the market operator liable for trademark infringement, due to its failure to fulfill the duty of care.
SPC Top 50 Cases: Representing ABB in bringing a private criminal prosecution against a counterfeit seller before a primary court in Wuhu, which found exporter Teaton and its owner Zhang guilty of selling goods bearing counterfeit registered trademarks, sentencing Zhang to 3.5-year imprisonment and imposing RMB 800,000 fines to Zhang and RMB 850,000 fines to Teaton. Both defendants appealed to the Wuhu Intermediate Court, which upheld the decision of the court of first instance.
SPC Top 50 Cases: Representing L’Oréal in coordinating Shanghai PSB and the PSB authorities in 4 provinces to launch a coordinated raid operation against 16 targets. The action led to the apprehension of 13 suspects and seizure of substantial amounts of counterfeits. The case was later prosecuted before the Shanghai courts, which led to the conviction, imprisonment and fines of 10 culprits.
Tier 1 PRC firm in both “Intellectual Property Contentious” and “Intellectual Property Non-contentious”, 2012 - 2024
Tier 1 PRC firm (domestic) in both “Trademark Prosecution” and “Trademark Contentious”,2011 - 2023
Gold-band PRC firm (domestic) for both “Prosecution and Strategy” and “Enforcement and Litigation”, 2011 - 2024
China Business Law Awards Winner in the category of intellectual property (Trademark & Patent), 2023
Outstanding firm (top tier) in intellectual property in China, 2016 - 2023
China Domestic Trademarks / Copyright Law Firm Tier 1, 2021 - 2024
Intellectual Property: Litigation & Non-litigation (PRC Firms) in China, Band 2, 2019 - 2024
Managing IP APAC Awards Firm of the Year: China Trademark Prosecution Firm of the Year and China Trademark Disputes Firm of the Year, 2023
The Global IP Awards jointed presented by IAM and WTR, China: Trademark Litigation Firm of the Year, 2021 - 2022
A formidable force at the forefront of Trademark Law in China.
The go-to firm for high profile technical cases.
A firm sitting comfortably at the apex of the Chinese market.
A go-to trademark firm in China for its open and honest communication, high efficiency and good service, as well as proactive work attitude.
Wanhuida is a Chinese IP titan with unmatched stature and reputation in the IP field, which has dominated the trademark market.
The firm’s leading trademark team have contributed frequently to the development of Chinese IP law and set precedent after precedent in the realm of trademark application and infringement lawsuit.
Wanhuida provides practical advice to clients, keeping the client's overall strategy and portfolio in mind and works hand in hand in different trademark matters for a holistic approach.
The firm is equally adept at portfolio management as in any contentious scenario.
Wanhuida is a one-stop IP troubleshooter par excellence, which enjoys a glittering reputation and has an illustrious list of household names across the globe flock to the doors.
The firm’s multi-talented IP professionals delivers the best and most comprehensive strategies for its discerning clients consistently, with pushing the boundary of Chinese IP law in its DNA.
Legal Protection for Well-known and Famous Marks
Trademark Law (1st, 2nd & 3rd Edition)
China Trademark Report (Vol. I – XII)
Trademark Laws of Twelve Nations
Legislative Part of the Intellectual Property Code of France (1st & 2nd Edition)
Trademark Section of "Intellectual Property in European Union" (1st & 2nd Edition)
Zheng Chengsi IP Anthology – Trademark & Unfair Competition
China Trademark 1978 - 2018
Trademark & Unfair Competition Cases in China
Impact of Use on the Protection Scope of Trademark: A Comparative Law Study of China and European Union
Trademark Chapter of Study on Global Intellectual Property Developments (2019 & 2020 Edition)
