Core Path 3 to Curb Malicious Trademark Registration: Instituting Civil Litigation Against the "Irregular Use" of Registered Trademarks
Introduction
Practitioners frequently encounter difficulties in rights enforcement: the opposing party holds a valid trademark registration certificate, yet in actual commercial operations, they use the trademark beyond the scope of approved goods, alter the distinctive identifying elements of the trademark, split and recombine multiple registered trademarks, and deliberately imitate our prior trademarks, resulting in consumer confusion and misidentification.
Many enterprises harbour a misconception: if the counterparty owns a trademark certificate, rights enforcement can only be pursued via administrative trademark invalidation proceedings. In practice, numerous malicious trademarks have exceeded the five-year time limit for invalidation, closing off the administrative remedy channel. Judicial interpretations have established a civil litigation remedy for irregular use of registered trademarks. Even where the opponent’s trademark remains in force, the right holder may directly institute civil proceedings for liability if the use falls within the categories of use beyond the approved scope, alteration of distinctive features, splitting or combination of trademarks, without the need to go through administrative confirmation of rights first.
Shanghai Boxiang Law Firm has long specialised in complex trademark conflict cases. We have represented numerous disputes involving distorted or combined irregular use of trademarks, and are familiar with the judicial boundary between "regular use" and "irregular use" in judicial practice. We can accurately identify the applicable scenarios for civil and administrative procedures. Drawing on two landmark cases, the Ganten (Baisuishan) Case and the Blue and White Porcelain Case, this article unpacks the legal rationale, judicial reasoning and practical operational guidance for enterprises under this rights enforcement route.
I. Core Legal Basis
Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Civil Dispute Cases Involving Conflicts between Registered Trademarks, Enterprise Names and Prior Rights (Revised in 2020), Article 1:
Where a plaintiff institutes an action on the ground that another party’s registered trademark used on the approved goods is identical with or similar to the plaintiff’s prior registered trademark, the people’s court shall, in accordance with Item (3) of Article 124 of the Civil Procedure Law, inform the plaintiff to apply to the competent administrative authority for resolution. However, where a plaintiff institutes an action on the ground that another party uses its registered trademark beyond the scope of approved goods, or uses it by altering its distinctive features, splitting, combining or other means, and such use is identical with or similar to the plaintiff’s registered trademark, the people’s court shall accept the case.
Core Interpretation of the Legal Provision
1.Regular use of registered trademarks → administrative proceedings required: Where the defendant uses its own registered trademark strictly in conformity with the specimen on the registration certificate on the approved goods and a trademark conflict occurs, the people’s court shall not accept the civil action, and the plaintiff shall file an application for trademark invalidation.
2.Irregular use of registered trademarks → civil litigation may be instituted directly, covering three typical scenarios
① Use beyond the scope of approved goods: Applying the registered trademark to goods not approved under the trademark certificate;
② Alteration of the trademark’s distinctive features: Modifying the core identifying elements of the trademark, resulting in a substantial difference between the mark actually used to the public and the specimen in the trademark registration file;
③ Splitting and combining multiple registered trademarks: Reassembling and rearranging several registered trademarks owned by the party to form a brand-new commercial identifier for external use.
3.The civil litigation targets the actual market use conduct and does not directly revoke the trademark registration certificate. Even if the trademark registration remains valid, the court may still order the cessation of such infringing use and award damages.
II. Benchmark Cases
Case 1: Use Beyond the Scope of Approved Goods — Ganten (Baisuishan) Case | Hubei Provincial High People’s Court, (2015) E Min San Zhong Zi No. 00608
Case Background
Shenzhen Ganten Food & Beverage Co., Ltd. owns the highly well-known trademark “Jingtian Baisuishan” for mineral water and drinking water. The defendants including Hubei Huichun Biotechnology Co., Ltd. hold Registered Trademark No. 8097985 “Jingtian Baisuishan”, which is approved for use on vitamin nutritional beverages. The nutritional indicators of the products actually manufactured by the defendants fall far short of the national standards for “vitamin nutritional beverages”. The physical products, sales channels and target consumers are highly consistent with ordinary mineral water. In essence, the products are drinking water, yet the defendants used the disputed registered trademark on such drinking water goods.
The defendants raised the defence: their trademark has been legally registered, and the use is limited to the approved goods of vitamin nutritional beverages, hence no infringement is constituted.
Core Holdings of the Court:
To determine whether use is beyond the scope of approved goods, one shall not merely rely on the text marked on product packaging. A comprehensive assessment shall be made by considering the objective attributes of the product, component test data, the general perception of relevant public and sales channels.
The nutrient content of the accused products is far below the mandatory national standards for "vitamin nutritional beverages". The product appearance, sales channels and merchants’ billing notes all indicate that the products are sold as mineral water, and consumers perceive them as drinking water.
Therefore, the accused products do not fall within the approved category of "vitamin nutritional beverages" under the trademark. The defendant’s use of the registered trademark exceeds the scope of approved goods, which falls within the circumstances where civil litigation is admissible under the judicial interpretation, and such use constitutes trademark infringement.
Judgment:
The court found trademark infringement established, and ordered the defendants to cease infringement and bear liability for compensation.
Key Takeaways from this Case:
Judgment of whether goods fall within the approved scope shall not be based on the seller’s own labelling, but on the objective attributes of the products and actual market perception. Where a trademark for beverages is used for products sold as drinking water, it constitutes typical irregular use beyond the approved scope, for which liability may be pursued directly through civil litigation.
Case 2: Alteration of the Distinctive Features of a Trademark — Blue and White Porcelain Case | People’s Court of Binhu District, Wuxi City, Jiangsu Province,
Case Background
Beijing Blue and White Porcelain Wine Co., Ltd. owns a series of registered trademarks for “Qinghuaci (Blue and White Porcelain)”. On the bottle and outer package of the accused liquor products, the defendant used a distorted mark “青莊次瓦”. By narrowing the spacing between the characters “次” and “瓦” and adding a circular decoration, the defendant deliberately caused ordinary consumers to perceive these two characters as the single Chinese character “瓷”. The overall pronunciation and visual effect of the mark are equivalent to “Qinghuaci”. The defendant argued that the mark was derived from its own Registered Trademark No. 10375719 and constituted an exercise of the exclusive right to use its registered trademark.
Core Holdings of the Court
The defendant’s actually used mark “青莊次瓦” modified the character spacing and graphic decorations of the registered specimen. It deliberately guides the public to read the two split characters as “Ci (porcelain)”, which has altered the distinctive identifying features of the registered trademark and therefore does not amount to the normal use of a registered trademark.
The modified mark is visually and phonetically similar to the plaintiff’s registered trademark “Qinghuaci (Blue and White Porcelain)”. When used on the same liquor goods, it is likely to cause confusion as to the source and thus constitutes trademark infringement.
Jiajiahui Supermarket, the seller of such infringing goods, shall also bear corresponding tort liability.
Judgment
The court found infringement established, ordering the defendants to cease infringement and bear compensation liability.
Key Takeaways from this Case
Modifications to the text and composition of a registered trademark that deliberately alter consumer perception constitute irregular use by “changing the distinctive features”. The registered trademark specimen on file cannot be invoked to defend the modified infringing mark used in the market.
III. Four Core Judicial Reasoning Points for Instituting Civil Litigation Based on "Irregular Use"
Principle 1: Clarify Various Forms of Irregular Use
Use beyond the scope of approved goods: The trademark is approved for Class A goods, but is substantially used on Class B goods. Determination shall be based on the objective attributes of the product and market perception of the relevant public, rather than self-declaration on packaging.
Alteration of distinctive features: Modification of the trademark’s core characters, graphics or layout, resulting in a substantial difference between the market perception and the registered specimen. Minor adjustments to colours or typefaces generally do not constitute alteration of distinctive features.
Split and combined use: Reassembling multiple registered trademarks owned by the user, or swapping the vertical order of text and graphics to create a new external mark (e.g., the BOY LONDON case mentioned above).
If any of the above circumstances is satisfied, a civil action may be initiated, which is not subject to the five-year cancellation prescriptive period for trademarks.
Principle 2: A finding of civil trademark infringement does not directly invalidate the registration of the trademark.
A civil judgment finding trademark infringement merely prohibits the defendant from such modified / beyond-scope / combined use in the market. It does not directly declare the trademark invalid, and the trademark registration certificate remains valid in the registry.
Principle 3: Civil and Administrative Proceedings May Interact and Proceed in Parallel
Where the trademark registration is less than five years old: File civil litigation to preserve evidence of irregular use and claim cessation of use and damages. Meanwhile, file an application for trademark invalidation with the CNIPA. The findings of "malicious irregular use and free-riding on goodwill" in the civil judgment may serve as key evidence in the trademark invalidation administrative proceeding and improve the success rate of the administrative case.
Where the trademark registration has been in force for more than five years and administrative invalidation is no longer available: Institute standalone civil litigation solely to pursue liability for the actual infringing use in the market. While the trademark registration certificate cannot be revoked, the defendant may be prohibited from using the mark in the infringing form in commerce.
Principle 4: The subject of comparison is the mark as actually used in the market, not the specimen in the trademark registry
Focus on preserving evidence of the mark actually displayed by merchants on e-commerce pages, physical products, tags and posters for rights enforcement. Infringement comparison shall not be conducted based on the specimen kept in the Trademark Office’s archive. In practice, many defendants adopt the strategy of “one mark on the registration certificate and another mark for sales”. Notarized evidence collection must preserve the true presentation of the mark in the market.
IV. Practical Guidance for Corporate Brand Compliance and Rights Enforcement
(I) Typical Scenarios Suitable for This Approach
The opponent holds a valid trademark registration certificate, yet modifies the graphics and text or splits and recombines multiple trademarks in actual use to imitate our brand as a whole.
The opponent’s trademark is registered for Class A goods, but is massively used for the production and sale of Class B goods, constituting use beyond the approved scope.
The opponent’s trademark has been registered for more than five years, rendering invalidation unavailable, yet the party continues to counterfeit our trademark through modified or out-of-scope use.
(II) Essential Evidence List for Rights Enforcement
Our proprietary rights evidence: Prior trademark registration certificates and materials proving brand reputation.
The defendant’s trademark archive: Obtain the registered specimen of the opponent’s trademark to compare it with the mark actually used in the market, to prove modification, recombination or out-of-scope use.
Physical evidence of infringement: Notarized purchased products, e-commerce product pages, short video promotions, offline posters and tags, to fully preserve the form of the mark as actually used in the market.
Supplementary evidence: Product composition test reports (for cases involving out-of-scope use), consumer comments, to prove confusion and misrecognition in the market.
(III) Compliance Reminders for Corporate Operations to Avoid Risks
When using multiple self-owned registered trademarks, enterprises shall use them in strict conformity with the registered specimen on file.
Where multiple trademarks require re-combination of text and graphics or substantial modification to the original trademark’s graphics and text, a separate trademark application shall be filed for the new combined version.
A trademark may only be used on the approved goods. When expanding business into new categories, enterprises must file trademark applications for the corresponding classes in advance and shall not directly deploy existing trademarks across classes.
Reminder by Shanghai Boxiang Law Firm
Many enterprises fall into a common misunderstanding in trademark enforcement: if the opposing party holds a trademark registration certificate, the only remedy is to file for trademark invalidation. Judicial rulings reflected in typical cases such as the Baishuishan and Qinghuaci cases illustrate that the scope of protection for the exclusive right to a trademark is limited to the “approved specimen and approved goods”. A registration certificate does not entitle the holder to arbitrarily modify, cross-class use, or splice and recombine trademarks to free-ride on others’ goodwill.
Even if the opponent’s trademark remains valid, or has exceeded the five-year window for invalidation, the right holder may directly institute civil litigation for irregular use as stipulated in judicial interpretations, seeking an injunction against the infringing use and claiming economic losses, notarization fees, attorney’s fees and other reasonable expenses.
Shanghai Boxiang Law Firm has handled numerous complex trademark disputes involving trademark modification, combined use and use beyond the approved scope. It can assist in retrieving trademark archives, designing notarized evidence collection plans, and flexibly deploying combined enforcement strategies of “administrative invalidation plus civil litigation”. In trademark enforcement, enterprises should not merely focus on trademark registration certificates but pay close attention to how merchants actually use the mark in the marketplace.
Drawing on leading precedents concerning irregular trademark use including the Baishuaci and Qinghuaci cases, Shanghai Boxiang Law Firm systematically unpacks the full logic of civil litigation targeting irregular use of registered trademarks. It clarifies the criteria distinguishing “normal use” from “irregular use” and the interplay between civil infringement litigation and trademark invalidation administrative procedures. For existing infringing trademarks involving malicious modification, splicing, use beyond approved scope, or those that have passed the five-year invalidation period, the firm provides actionable enforcement solutions for brand owners across various industries.
