by Joy Dong
You may have heard that a trademark can be revoked if it hasn't been used for three consecutive years, or it may expire if not renewed. But have you ever wondered: if the trademark was problematic from the very beginning, should a lawsuit about declaring it "invalid" still proceed even after it has expired? This might seem contradictory, but it touches on a fundamental principle in trademark law: void ab initio (invalid from the outset).
A recent ruling by the Beijing High People's Court in the "BABUTONG" trademark case clearly explains this logic.
I. The Core of the Case: A Dispute Over an Expired Trademark
The protagonist of this case was the trademark "巴布童BABUTONG" (No. 14657502). It was applied for by an individual named Sun in 2014, approved for use on goods like toys, and was later transferred to Putian Yutian Trading Co., Ltd.
The other party was Bobdog Company, the owner of the well-known "巴布豆" (Bobdog) trademark.
In 2023, Bobdog Company filed a request for invalidation against the "BABUTONG" trademark with the China National Intellectual Property Administration (CNIPA), arguing that "BABUTONG" was a malicious imitation of its famous "Bobdog" trademark.
Initially, the CNIPA considered the evidence insufficient and noted that the request was filed beyond the statutory five-year time limit; therefore, it maintained the registration of the "BABUTONG" trademark.
Bobdog Company disagreed and filed a lawsuit.
II. The Core Logic: Expiration ≠ Never Existed, Invalidation = Never Existed from the Start
The court's answer was: Yes, it is necessary, and the case must be heard. This gets to the heart of the fundamental difference between "revocation/expiration" and "invalidation" in trademark law.
Revocation or Expiration for Non-Renewal: This only means the trademark ceases to be a "registered trademark" from that point forward, losing its exclusive rights for the future. However, it acknowledges that the trademark's legal status was valid during its past period of registration.
Declaration of Invalidity: This fundamentally negates the original registration decision. Once declared invalid, the law treats the trademark as if it never legally existed from the date of its registration; it is "void ab initio."
This distinction is crucial because it directly impacts two fundamental issues:
1. Characterizing Past Acts: Were the acts of using this trademark during its existence considered infringement? If it was merely an "expired registered trademark," its past use might not constitute infringement of others' trademark rights.
However, if it is declared a "trademark invalid from the outset," it was essentially an "unregistered trademark" all along. Its use could then constitute infringement of others' legally registered trademarks, allowing the right holder to seek damages retrospectively.
2. Assessing the Registrant's Good Faith: A declaration of invalidity is often based on "bad faith" at the time of registration (e.g., squatting, imitating a well-known trademark). Finding that a trademark was registered in bad faith not only affects that specific trademark but can also serve as a basis for evaluating the overall credibility of the registrant, potentially impacting the stability of their other trademarks.
III. How Did the Court Adjudicate the "BABUTONG" Case?
Having established the necessity of the trial, the Beijing High Court delved into the substantive issues, focusing on two main points:
First, did the cited trademark "Bobdog" constitute a well-known trademark?
The court examined extensive evidence submitted by Bobdog Company, including years of sales data, advertising, media reports, and awards. It concluded that before the application date of the "BABUTONG" trademark in 2014, "Bobdog" had become widely known to the relevant Chinese public for children's clothing and shoes, reaching the status of a well-known trademark.
Second, did the registration of "BABUTONG" constitute malicious imitation?
1. High Similarity of the Marks: "巴布童" (Babu Tong) differs from "巴布豆" (Babu Dou) by only one character. Their pronunciation and overall appearance are very similar, constituting imitation.
2. Close Connection of Goods: The goods ("toys," etc.) for which "BABUTONG" was approved are highly related in terms of target consumers (children and parents) and sales channels to the children's clothing and shoes for which "Bobdog" became famous.
3. Obvious Bad Faith of the Registrant: It was found that Sun, the original applicant of "BABUTONG," had applied for several other trademarks similar to others' famous marks. Yutian Company, as a business in the maternal and child products sector, should have been aware of the reputation of "Bobdog" but still chose to acquire the trademark, demonstrating an intent to free-ride on its goodwill.
IV. Implications and Warnings
The "BABUTONG" case offers a vivid legal lesson for all market participants:
1. For Brand Owners (Right Holders): Protecting your trademark requires determination and patience. Even if an infringing trademark has expired for various reasons, as long as its registration was fundamentally flawed (e.g., done in bad faith), it is still worth actively pursuing an invalidation to set the record straight, eliminate potential risks, and potentially lay the groundwork for claiming damages for past infringements.
2. For Trademark Applicants/Registrants: Trademark registration must adhere to the principle of good faith. Attempts to "free-ride" by imitating or squatting others' well-known trademarks carry extremely high risks. Even if a trademark is侥幸 registered and used for years, once it is found to have been registered in bad faith and declared invalid, the registrant faces losing everything: not just the trademark rights but also potential liability for infringement damages. This case also shows that courts will consider a registrant's series of applications as important evidence of their subjective bad faith.
The invalidation procedure acts like a "scalpel," aiming to remove trademarks that were tainted with "original sin" from the very moment of registration, regardless of whether they later died a natural death or were voluntarily abandoned. This safeguards not only the purity of individual trademarks but also the fairness and integrity of the entire trademark registration system.