By Joy Dong
Background
In this case, the applicant, a materials company based in Wuhan, sought registration of the trademark “赛力士(SAILISI)” in Class 1 for goods such as “unprocessed synthetic resins, unprocessed plastics, and industrial chemicals.”
The opposition was filed by a company in Bengbu, alleging that the applicant had maliciously hoarded trademarks without genuine intent to use them. According to the opponent, the applicant’s behavior violated Article 4 and Article 44(1) of the PRC Trademark Law, which prohibit registration obtained by “deceptive or other improper means.”
CNIPA initially rejected the application, finding that the applicant had filed over a thousand marks across various classes, many similar to famous brands, suggesting a pattern of bad faith.
However, upon review, the applicant argued that it owned the well-known “大力士 (DALISHI / STRONGLY)” mark, registered since 1998 for adhesives and related goods. Over the years, marks following the “*力士” (“-LISHI”) structure had been heavily imitated by others. To prevent dilution and confusion, the applicant had filed a series of “defensive marks” such as “大刀士,” “太力士,” and “大力石.”
The applicant contended that the “赛力士 (SAILISI)” application was another defensive filing intended to preserve its trademark family, not to mislead consumers or disrupt market order.
CNIPA’s Decision
After examining the evidence, CNIPA accepted the applicant’s reasoning. It found that:
- The applicant’s “大力士” mark had achieved wide recognition among relevant consumers for industrial adhesives.
- The use of “*力士” as a brand suffix had become a distinctive element of the applicant’s trademark family.
- The application for “赛力士” was based on a legitimate defensive strategy, not a deceptive or improper purpose.
- While the applicant indeed held numerous trademarks, the evidence did not prove that its filing behavior disrupted trademark registration order or harmed the public interest.
Accordingly, CNIPA ruled that the mark did not violate Article 44(1) and should be approved for registration.
Legal Analysis: Understanding “Improper Means” under Article 44(1)
Article 44(1) of the Chinese Trademark Law targets registrations obtained “by deception or other improper means.” Traditionally, this includes:
- Submitting falsified materials or concealing facts during application;
- Filing in bulk to block legitimate business activities;
- Registering well-known marks owned by others for unfair advantage; or
- Disturbing market order or public interest for illegitimate gain.
However, the Trademark Examination and Review Guidelines emphasize that the assessment must be case-specific, considering the applicant’s intent, use history, and rationale behind the application. Prior findings of bad faith do not automatically determine subsequent cases.
This case underscores that volume alone is not sufficient to establish bad faith. Instead, what matters is context, whether the trademark has a reasonable origin and is linked to bona fide business needs.
Why This Case Matters
(1) Clarifying the Scope of “Bad Faith”
As China continues to tighten its crackdown on malicious filings, there’s a growing concern that legitimate brand owners might be caught in the net, especially those managing large trademark portfolios. This decision highlights the regulator’s nuanced and evidence-based approach, distinguishing defensive protection from bad-faith hoarding.
(2) Recognizing “Defensive Marks” as Legitimate Strategy
In markets prone to imitation, companies often adopt “defensive filing” strategies — registering marks that are similar to their core brand to deter imitators. CNIPA’s recognition that such filings can have “reasonable origin” (合理来源) provides legal reassurance to long-established brand owners who actively protect their mark families.
(3) Consistency and Proportionality in Enforcement
The decision also signals CNIPA’s commitment to precise enforcement, targeting malicious squatters without “overcorrecting” against legitimate applicants. The authority explicitly rejected a “one-size-fits-all” approach (“一竿子打死”), instead favoring a balanced analysis that protects both the public interest and brand owner rights.
Implications for Brand Owners
- Document your brand’s evolution. Evidence of long-term use, recognition, and media exposure can support the legitimacy of your defensive marks.
- File strategically, not excessively. While multiple filings can be justified, ensure each has a clear rationale connected to your core brand.
- Respond proactively to oppositions. Providing context and historical evidence early can shift CNIPA’s perception from “hoarding” to “brand protection.”
- Leverage prior CNIPA or court precedents. Consistency in defending similar marks can demonstrate pattern and intent, key factors in avoiding Article 44(1) allegations.
Conclusion
The “赛力士 (SAILISI)” decision marks a significant step in refining China’s approach to bad-faith trademark regulation. It shows that enforcement is not only about punishing misuse, but also about protecting legitimate business strategies rooted in long-term brand development.
By affirming that defensive trademarks can have reasonable origin, CNIPA has drawn an important boundary between abuse and protection: one that international brand owners operating in China should carefully understand and strategically apply.