Trademark Administrative Dispute｜Guangdong Sanjiao Electric Appliance Co., Ltd. v. National Intellectual Property Administration (Involved Trademark: DIAMOND BAOLAN)

Selected as One of the Top Ten Typical Key Trademark Cases of 2024 by the Guangdong Trademark Association

Case Overview

Guangdong Sanjiao Electric Appliance Co., Ltd. (hereinafter “Sanjiao Company”) is the exclusive owner of Registered Trademark No. 47099. Approved for registration and published in 1964, the trademark is designated for Class 11 goods including electric fans and electric cooking appliances.

Launched in the 1960s, the “DIAMOND” brand is one of China’s earliest home appliance brands. Its iconic electric fans debuted in the 1960s. From the 1970s to the 1980s, DIAMOND products were exported to more than 50 countries and regions across Asia, Europe and other overseas markets, and still enjoy high reputation in Southeast Asia to date. In recent years, DIAMOND electric fans have consistently ranked among the top in the industry, with an annual production and sales volume of nearly 8 million units. The brand has obtained numerous authoritative honors, including China Well-Known Trademark, Famous Trademark of Guangdong Province, Famous Trademark of Guangzhou City and Guangzhou Time-Honored Brand. Through over 60 years of continuous use and market operation, the DIAMOND trademark has achieved extensive public awareness and high market reputation.

The disputed Trademark No. 3751728 was filed for registration by Peng Shenghua on October 14, 2003, and formally approved for registration on December 28, 2015, covering Class 11 products such as disinfection cabinets, electric water heaters and ventilation fans. On August 29, 2022, Sanjiao Company filed a trademark invalidation request, claiming well-known trademark protection for its prior trademark. The National Intellectual Property Administration (CNIPA) rendered a decision maintaining the validity of the disputed trademark, holding that the prior Trademark No. 47099 had not acquired well-known status prior to the disputed trademark’s filing date, and no subjective malice on the applicant’s part was established.

Entrusted by Sanjiao Company, Shanghai Boxiang Law Firm initiated administrative litigation before the Beijing Intellectual Property Court against the CNIPA’s decision. Since the invalidation application was filed more than five years after the disputed trademark’s registration, and the earliest officially recognized well-known status of the prior trademark was recorded in 2006 (later than the 2003 filing date of the disputed trademark), the legal team focused on supplementing, reorganizing and submitting evidence to prove two core facts: that the prior trademark had already attained well-known trademark status before 2003, and that the disputed trademark application was filed with obvious subjective malice.

After trial, the Beijing Intellectual Property Court confirmed that Trademark No. 47099 constituted a well-known trademark on electric fan products prior to 2003. The court held that the registration of the disputed trademark violated Paragraph 2 of Article 13 of the 2001 Trademark Law, and revoked the CNIPA’s ruling. Dissatisfied with the first-instance judgment, the CNIPA filed an appeal with the Beijing Higher People’s Court, which dismissed the appeal and upheld the original judgment.

On January 17, 2025, the CNIPA issued a new reexamination ruling No. [2023] 0000232418 (Reexamination No. 0000000200), officially declaring Trademark No. 3751728 “DIAMOND BAOLAN & Device” invalid. After going through invalidation review, first-instance administrative litigation, second-instance administrative litigation and reexamination procedures, the improperly registered trademark was finally invalidated after more than 21 years of registration.

Judgment Results

First-Instance Judgment

1. The CNIPA’s trademark invalidation review decision No. [2023] 232418 concerning Trademark No. 3751728 is revoked;

2. The CNIPA shall render a new administrative decision in accordance with law.

Second-Instance Judgment

The Beijing Higher People’s Court dismissed the appeal filed by the CNIPA and upheld the first-instance judgment.

Typical Case Significance

1. Adopting Precise Rights Enforcement Strategies to Break the Five-Year Time Limit for Trademark Invalidation and Curb Malicious RegistrationThis case successfully invalidated a trademark registered for more than 21 years. By dissecting the core legal controversies, the legal team pinpointed two key evidentiary objectives: proving the applicant’s malicious registration intent and establishing the prior trademark’s well-known status prior to 2003. Based on precise case positioning, a targeted litigation strategy was formulated.

Since the earliest official well-known trademark recognition record for the DIAMOND brand dated back to 2006, while the disputed trademark was filed in 2003, the legal team focused on collecting and sorting first-hand evidence fully demonstrating the brand’s high popularity between 2001 and 2003, including honor certifications, sales archives, advertising investment records and exhibition documents. Meanwhile, the team comprehensively investigated the applicant’s trademark filing history to corroborate subjective bad faith. By presenting complete evidence chains and targeted legal arguments during court hearings, the case successfully broke through the five-year procedural restriction on trademark invalidation and secured well-known trademark protection for the decades-old DIAMOND brand.

2. Multi-Dimensional Evidence Collection Advanced the Well-Known Recognition Timeline, Strengthening Judicial Protection for Time-Honored BrandsWell-known trademark recognition follows the case-by-case adjudication principle, and many time-honored enterprises face difficulties in retaining complete historical popularity evidence. To overcome historical evidentiary gaps, the legal team adopted multi-channel evidence collection methods, including reviewing Guangzhou yearbooks, historical newspapers, official library retrieval reports and archived corporate records. The court finally recognized that the DIAMOND brand had attained well-known trademark status prior to 2003, advancing the earliest well-known recognition record from 2006 to 2003.

On December 28, 2024, Sanjiao Company’s “SANJIAO” and “DIAMOND” brands were officially listed in the first batch of Guangdong Time-Honored Brands. With a brand history of over 60 years, both trademarks are iconic domestic household appliance brands representing Lingnan manufacturing culture and enjoying extensive public recognition. The inclusion among 281 officially accredited Guangdong time-honored brands further confirms the profound historical heritage and superior commercial reputation of the two brands.

3. Integrating Multiple Adjudication Factors to Reverse Administrative Ruling Results and Set a Model for Time-Honored Brand ProtectionFactors determining well-known trademark protection are mutually supportive and collectively decisive in judicial practice. In this case, the Beijing Higher People’s Court comprehensively considered multiple key factors, including the prior trademark’s well-known status before the disputed filing date, high similarity between the two marks, strong relevance of designated goods, the applicant’s history of filing multiple similar trademarks, and the applicant’s refusal to appear in court or submit any defense evidence throughout administrative and judicial proceedings. The court collectively confirmed the applicant’s improper and malicious registration intent.

By comprehensively evaluating trademark popularity, mark similarity, product relevance and registration malice, the judicial authority reversed the prior administrative decision that had upheld the disputed trademark and failed to recognize the prior brand’s well-known status. To date, the DIAMOND trademark has obtained well-known recognition for 32 times in total, achieving unprecedentedly strong judicial protection.

The ruling legally safeguards the market advantages accumulated by time-honored enterprises through decades of brand operation. It effectively prevents improper market share seizure and trademark dilution caused by malicious squatting and infringement, resolves the industry dilemma of malicious applicants profiting from reselling long-squatted old trademarks, and rectifies disordered trademark registration and management order. It also lays a solid rights foundation for subsequent rights enforcement of time-honored brands.

The judicial protection of time-honored well-known trademarks relies not merely on mechanical legal application, but on a three-dimensional defense system integrating commercial logic, historical context and professional evidentiary techniques. This successful case fully embodies Boxiang Law Firm’s practice philosophy of Evidence is the King of Litigation, and Strategy is the Key to Victory, providing a replicable and practical enforcement model for time-honored brands to realize effective IP protection through professional evidence sorting and strategic litigation layout.