Keys to success in trademark litigation
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Different people have different views when it comes to discussing the keys to success in trademark litigation in China; however, in general, there are two key points: the likelihood of trademark confusion and the legitimacy of the trademark applicant’s conduct.
Both points are crucial in trademark litigation; every lawyer or trademark attorney wins their case by basing their analysis and discussion on those two points to gain the judge’s support, and many articles have provided extensive academic discussion on those two points.
The relevant examination standards are explained in detail by the China National Intellectual Property Administration in the Trademark Examination and Trial Guide, which came into effect on 1 January 2022. The Beijing Municipal High People’s Court released the Guidelines for the Trial of Trademark Right Granting and Verification Cases on 24 April 2019, in which it summarises and discloses the judiciary’s opinions on, and practical experience of, administrative trademark cases.
In view of the academic discussion, the guidance released by the relevant administrative organs and judicial practice, there is an assumption that there has been sufficient practice and that a basic consensus has been reached on how to make arguments for the two points; in other words, it is assumed that there has been sufficient elaboration on them and how they are central to succeeding in trademark litigation.
The ability to analyse the two points is akin to mastering a weapon. Different parties may have different perspectives when it comes to interpreting and proving the two points during trademark litigation; however, they will all be able to find appropriate arguments and supporting materials for their case.
For the parties concerned, trademark litigation will be a tight battle between lawyers with equally strong weaponry; the two parties engaged in the trademark dispute stand face to face, and it is impossible to predict who will prevail.
According to Joel Ross and Michael Kami, two well-known American management scientists: “Without a strategy, the organisation is like a ship without a rudder, going around in circles. It’s like a tramp; it has no place to go.”
The same is true for trademark litigation. Without a strategy, engaging in a trademark dispute or trademark litigation is like roaming the land like a lost traveller: whether at the trial stage before the IP office or litigation before the court, all the lawyer can do is hold their documents and discuss the two points again and again.
If you recall your previous cases, you will usually find that the supplementary materials will all be additional proof of the likelihood of trademark confusion and the legitimacy of the trademark applicant’s conduct. Instead of analysing the two points, this chapter will try to help readers tap into the secrets of succeeding in trademark litigation from a strategic perspective, looking at the bigger picture.
The first key to a successful strategy in trademark litigation is to prepare for possible litigation before entering the litigation process – that is, during the review stage before the IP office.
When providing trademark evaluation services to clients, especially when the case is contentious yet important to the client, effective lawyers will analyse their strategies in advance. This includes discussing the framework of the litigation, organising the case structure, preparing materials and planning how to dominate the main points of dispute and lure the opposing party into a trap.
The preparation required is not always the same, but the strategy is clear: effective lawyers should be able to focus the judge’s attention on the strong points of their case and get the opposing party to debate and prepare materials that are relevant to that focus. By the time a case reaches the trademark litigation stage, effective lawyers will more or less know the general direction that the case will take.
At that point, it is tempting to say that victory is ripe for the taking; however, when reviewing the opposing party’s evidence, effective lawyers should be aware that the opposing party may be employing the same tactics. Counsel should remind clients to always focus on the key elements and respond strategically in accordance with the current stage of the case (eg, the review stage before the IP office or court litigation) to avoid falling into a trap.
The author once handled a trademark dispute case on behalf of a foreign clothing brand. Suspecting that the other party would file for trademark litigation if they failed the trademark review, the strategy was to purposely obfuscate the focus of the client’s case and prepare evidence that only met the standards of the IP office to lure the opposing party into thinking they had found a loophole. In the end, the other party was ensnared in a logical trap, and the author’s client won the case despite being at a disadvantage.
In another trademark dispute the author acted in, the client had not obtained stable basic rights on Chinese trademarks. The client brought opposition proceedings against five disputable trademarks before the IP office, but was unsuccessful. The solution was to prosecute the applicant for unfair competition. Having shown the malicious intent in trademark application and use and the corresponding likelihood of confusion in the unfair competition case, the client succeeded in subsequent invalidation proceedings. The applicant litigated to maintain registration of his trademark but was ultimately unsuccessful. Creating a comprehensive strategy requires not only taking into account the overall perspective and extensive experience but also the client’s patience to wait for eventual success in the long term.
The second key to a successful strategy in trademark litigation is to empathise with the judge to gain their support or to prevent the other party from influencing the judge’s emotions or disrupting the litigation.
According to a public report in November 2021, the Beijing Intellectual Property Court has handled more than 110,000 litigation cases over the past seven years since its establishment. In 2021, 85,954 civil and administrative IP cases were accepted, and 74,805 cases were concluded, with more than 300 cases per judge per year, despite there being only 250 working days in a whole year. From 1 January to 28 July 2022, the Beijing Intellectual Property Court received 16,936 trademark administrative cases, of which it concluded 10,371 cases.
From those statistics, it is evident that judges handle far more cases per year than most lawyers and trademark attorneys. It would, therefore, be difficult for lawyers to get judges to understand their perspectives and help their clients by simply talking about the legal issues at hand.
The simplest way to obtain the judge’s empathy is to inform the judge of the details of the case. It is difficult for the judge to learn the full extent of the details provided by the evidence because they are busy and are often only able to take a quick glance at the files shortly before the court hearing; therefore, helping the judge learn the details of a case, telling stories in different ways and creating an impact on the judge on the first impression can help lawyers immensely.
Visual aids can be highly effective in this regard. Attaching charts after presenting evidence allows the judge to understand the timeline and the facts in dispute that are relevant to understanding the case from your perspective as soon as possible. Following this, the judge will find it easier to empathise with your case.
There are many ways to obtain the judge’s empathy. The general approach is to drop the professional titles of lawyer and judge and appeal to the judge’s humanity, letting the judge know how fairness and justice should be applied from the point of view of an average person rather than from a lawyer’s perspective. The crux of this approach is to discuss rather than suggest, and to tell rather than accuse.
At the same time, lawyers must also be aware of the other party’s attempts to influence the judge’s emotions; if the judge has negative preconceptions of the lawyers, providing explanations and conducting cross-examination will be much more difficult in the court hearing.
At the peak of the Sino-US trade war, the author represented a high-tech US company that had entered litigation against a Chinese company in a trademark dispute. In the submitted materials, the other party had harshly accused the author’s client of taking advantage of being a large company to hinder the development and technological innovation of Chinese companies with trademark litigation and used reports of the client defending its rights in China as evidence. It was clear that the other side intended to portray the client as a monster who uses its financial power to suppress small companies with similar business interests.
At first, the judge was a little impatient with the client; however, it was possible to rebut the other party’s attempt to demonise the client by reminding the judge that the case was a trademark dispute between two equal subjects, that the client had acted in accordance with Chinese law and had been treated justly in the past, and that nationality should not be a reason for discriminatory treatment in the trial.
In the ensuing process, it became clear that the influence of nationalism on the judge was significantly decreasing, and the US client ultimately won the case.
If a trademark dispute develops into trademark litigation, the trademark in dispute must clearly be important to all the parties involved.
Trademark litigation is not just about the likelihood of confusion and the legitimacy of the conduct; those two points are only the manifestation of various problems.
A distinguished lawyer understands that succeeding in trademark litigation requires a sensible strategy: he or she should examine the full details of the case, know when to use or forgo the evidence at hand, plan carefully in accordance with the progression of the case, and know when to appeal to the judge’s emotion to gain support. This will allow for the creation of effective plans that will lead to success in the trademark dispute.
In this chapter, the author shared some personal experiences in the hope of providing and inspiring readers with new ideas that they can employ in their practice; however, lawyers should also take the opportunity to review their own legal work so that they can continue to develop their practice and succeed in future trademark disputes.