I. Core Legal Basis

1.Trademark Law of the People’s Republic of China, Article 13, Paragraph 3Where a trademark applied for registration in respect of dissimilar goods is a reproduction, imitation or translation of another party’s well‑known trademark already registered in China, which misleads the public and may prejudice the interests of the registrant of such well‑known trademark, the trademark shall be denied registration and prohibited from use.

2.Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving the Protection of Well‑Known Trademarks, Articles 2 and 11Where an infringement action is filed on the ground of violation of Article 13 of the Trademark Law, the people’s court may determine whether the trademark at issue is well‑known in such civil case. Where a registered trademark is obtained through malicious reproduction or imitation of a well‑known trademark, the right‑holder’s civil action shall not be subject to the five‑year preclusion period for cancellation. The people’s court may directly order the cessation of use of such trademark.

3.Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Trademark‑Related Civil Dispute Cases, Article 1Reproducing or imitating another party’s registered well‑known trademark and using it as a trademark on dissimilar goods, which misleads the public, shall constitute an act of trademark infringement.

Key Interpretation of Legal Provisions:

1.A well‑known trademark breaks through the protection limits applicable to ordinary trademarks and enjoys enhanced cross‑category protection.

2.Civil litigation operates independently of the administrative trademark invalidation procedure and may directly halt all market‑based use of the disputed mark.

3.For registered trademarks obtained through bad‑faith hoarding and free‑riding on others’ reputation, civil‑remedy claims are not subject to the five‑year preclusion period.

4.Even if the defendant’s trademark or trade name has been duly registered, such registration shall not constitute a valid defense against misappropriation of the well‑known trademark’s goodwill.

Case Background

Jiangsu Yanghe Distillery holds Registered Trademark No. 1470448 for “Yanghe”, which was recognized as a well‑known trademark by the Trademark Office as early as 2002. Fully aware of the nationwide high reputation of the “Yanghe” brand, Tang Xinmin filed applications for multiple similar “Yanghe” trademarks including No. 5540137 (2009) and No. 12356049 (2014) for dissimilar goods such as beverages and food. After registration, he did not engage in self‑operation, but granted bulk licences to multiple enterprises for use, specifically hoarding trademarks for profit. Jiangsu Yanghe Distillery instituted civil proceedings thereafter. The defendant raised a defence that all disputed trademarks had been granted registration, the 2009‑registered trademark had long exceeded the five‑year invalidation period, and therefore the plaintiff had no right to claim cessation of use.

The Plaintiff’s Evidence System for Well‑Known Trademark Determination

Yanghe Distillery submitted complete closed‑loop evidence in the first‑instance proceedings to prove that the “Yanghe” trademark qualified for judicial determination as a well‑known trademark:

1.Prior well‑known trademark recognition records: official documentation of the well‑known trademark recognition issued by the National Trademark Office in 2002;

2.Brand honour materials: industry awards and authoritative honours obtained from 2005 to 2016;

3.Promotion‑investment vouchers: national TV, offline and online advertising contracts and expenditure invoices from 2007 to 2016;

4.Business‑scale data: financial revenue and profit‑tax statements for 2003‑2016, and evidence of its leading position in the industry from 2007 to 2015;

5.Prior‑right enforcement records: local civil judgments and administrative penalty documents issued by market‑regulation authorities from 2006 to 2013.

Judicial Views of the First‑instance Court on Well‑Known Trademark Determination

Based on the comprehensive evidence of the whole case, the court found “Yanghe” to be a registered well‑known trademark pursuant to Article 13 of the Trademark Law:

1.Duration of continuous trademark use: The disputed “Yanghe” trademark had been continuously used for 17 years, covering all market channels for liquor products;

2.Market scale and industry status: The enterprise’s revenue and profits consistently ranked among the top of the industry. Its products were available nationwide and enjoyed high consumer recognition;

3.Omni‑channel promotion: Substantial advertising investment was sustained over many years via online and offline multi‑channels, making the brand deeply rooted among the public;

4.Regular rights‑protection practice: Counterfeiting acts had long been combated through both administrative and judicial channels, laying a solid foundation for the protection of its goodwill.

Key Adjudication Points of the Second‑instance Proceeding and the SPC Retrial Review

1.The defendant had obvious subjective bad faith: Fully aware that the “Yanghe” mark was well‑known, Tang Xinmin filed applications for multiple similar trademarks in batches. He conducted no genuine business after registration and profited merely from trademark licensing, which constituted typical bad‑faith hoarding and free‑riding on others’ reputation.

2.The five‑year time limit is inapplicable to circumstances involving bad‑faith imitation of well‑known trademarks: Pursuant to Article 11 of the Judicial Interpretation on Well‑Known Trademarks, given that the defendant reproduced and imitated the prior well‑known trademark, Yanghe Distillery retained the right to file a lawsuit to prohibit all use of the disputed registered trademarks, even though the trademark registered in 2009 had exceeded the five‑year term.

3.Cross‑category use constitutes infringement: The defendant used “Yanghe” on unrelated goods such as beverages and food. Such conduct is highly likely to mislead the public into believing that there exists a licensing or affiliation relationship between the two parties. By improperly exploiting the goodwill of Yanghe’s well‑known trademark, the defendant’s acts constituted trademark infringement and unfair competition.

Judgment Outcome

Tang Xinmin and each licensed enterprise were ordered to immediately cease using the “Yanghe”‑series signs on all goods, packages and promotional materials, and to bear corresponding economic compensation.

Key Takeaways from This Case

1.Prior administrative well‑known‑trademark recognition records may serve as key evidence for well‑known trademark determination in civil litigation, substantially reducing the burden of proof.

2.Registered trademarks obtained through bad‑faith hoarding and free‑riding on others’ reputation cannot be sheltered by the five‑year invalidation period. Civil litigation can enjoin use across all classes of goods.

3.Well‑known trademark protection covers both identical/similar and dissimilar goods. No distinction between similar and dissimilar goods is required. Infringement is established where there exists free‑riding on the goodwill of a well‑known trademark.

Mindset 1: Well‑known trademarks enjoy dual protection for both similar and dissimilar goods

Ordinary registered trademarks can only prohibit the use of similar signs on similar goods, while registered well‑known trademarks are entitled to omni‑scope protection:

1.For similar goods: Directly enjoin counterfeiting and confusion‑causing acts;

2.For dissimilar cross‑category goods: Enjoin acts of dilution, disparagement and free‑riding, and prevent third parties from severing the unique market correspondence of the brand.

Mindset 2: Flexible Coordination between Civil and Administrative Procedures

1.Where the trademark has been registered for less than five years: File both an application for trademark invalidation and civil litigation for well‑known trademarks simultaneously. Seek administrative cancellation of the trademark and civil remedies including loss‑stoppage and compensation to impose dual‑pronged pressure.

2.Where the trademark has been registered for more than five years and the defendant engages in bad‑faith free‑riding on others’ reputation: Institute civil litigation directly. Such civil action is not subject to the preclusion period, and administrative procedures are not required.

3.Administrative procedures focus on cancellation of trademark ownership, while civil litigation focuses on halting market use and claiming economic compensation. The two procedures do not conflict with each other.

Mindset 3: Well‑known Trademark Determination Is Based on Its Reputation at the Time of Infringement

When determining whether a trademark is well‑known, the court shall take the brand influence at the time of the alleged infringing acts as the judging benchmark, rather than the time of trademark registration or institution of the lawsuit. Enterprises shall fully preserve sales, promotion and honour evidence accumulated over the years prior to the infringing acts, so as to form a complete time‑sequenced reputation‑proof chain.

Mindset 4: Prior Administrative / Judicial Well‑Known‑Trademark Recognition Records Carry Strong Evidentiary Weight

Where a trademark has previously been recognized as a well‑known trademark by the Trademark Office, the Trademark Review and Adjudication Board or other courts, such fact may be directly admitted by the court in the current civil proceeding, provided the defendant adduces no counter‑evidence to overturn it. This greatly simplifies the burden of proof and constitutes core advantageous evidence for enterprises’ rights‑protection.

This case went through the full procedural chain: dismissal at first‑instance, affirmation by the second‑instance court, and reversal by the SPC upon retrial. It clearly demarcates the boundary between the five‑year term in administrative procedures and civil litigation, and clarifies two key rules: copyright determination for secondary creation of public‑domain fonts, and that bad‑faith registered trademarks may constitute abuse of rights.

(I) Two Scenarios Where This Approach Is Preferred

1.A third party reproduces and imitates the enterprise’s well‑known trademark across dissimilar classes. The trademark registration has exceeded five‑year term, rendering trademark invalidation unavailable;

2.Multiple entities bad‑faith‑hoard similar trademarks across industries to free‑ride on the brand’s goodwill, and it is necessary to stop infringement across all channels in one single action.

(II) Mandatory Evidence List for Well‑known‑Trademark‑based Rights‑Protection

1.Basic well‑known‑trademark evidence: Prior well‑known‑trademark recognition documents, multi‑year sales and financial data, proof of national stores and market channels;

2.Brand promotion evidence: Annual advertising contracts, investment invoices, media reports, offline exhibition records and outdoor promotional materials;

3.Brand credibility evidence: Industry awards, top‑100 rankings, consumer survey reports and certificates issued by industry associations;

4.Prior rights‑protection evidence: Previous trademark infringement judgments and administrative penalty decisions issued by market‑regulation authorities;

5.Infringement‑preservation evidence: Complete notarized materials including notarized physical‑product purchase records, e‑commerce store pages, short‑video promotions and offline storefront posters.

(III) Long‑term Pre‑event Compliance Suggestions for Brands

1.Leading brands shall regularly sort out and file sales, promotion and honour materials, and build a dedicated evidence archive for well‑known‑trademark recognition;

2.Upon discovering third‑party bad‑faith trademark squatting, distinguish the registration term at the earliest opportunity and formulate dual‑track rights‑protection plans covering both administrative and civil procedures;

3.Prior to expanding into new product categories, conduct full‑class similar trademark searches to guard against advance bad‑faith hoarding of free‑riding trademarks.