On June 27, 2025, a case seminar on "Determining Malicious Use Before Trademark Invalidation" was successfully held at Guangdong Hebang Law Firm. The seminar was jointly organized by the Trademark and Copyright Law Professional Committee of the Guangzhou Lawyers Association and the Trademark Law Professional Committee of the Guangdong Lawyers Association. Based on the legislative intent and scope of application of Article 47 of the Trademark Law, the seminar delved into issues such as how to identify "malicious use before trademark invalidation" in judicial cases.
Zhong Qisheng, Vice President of the Guangzhou Lawyers Association and Secretary of the Party Branch of Guangdong Hebang Law Firm, Li Ye, Director of the Trademark and Copyright Law Professional Committee of the Guangzhou Lawyers Association, Yang Aibin, Founding Partner and Chairman of the Partner Meeting of Guangdong Hebang Law Firm, attended the event and delivered speeches. Bu Xiaojun, Deputy Director of the Trademark Law Professional Committee of the Guangdong Lawyers Association and the Trademark and Copyright Law Professional Committee of the Guangzhou Lawyers Association, Qiu Binbin, Secretary-General of the Trademark Law Professional Committee of the Guangdong Lawyers Association, and Tang Siyuan, member of the Foreign-related Committee of the Guangzhou Lawyers Association, served as sharing guests. Lin Zeren, Secretary-General of the Trademark and Copyright Law Professional Committee of the Guangzhou Lawyers Association, along with some committee members, He Qiuting, Lawyer and Head of the International Department of Guangdong Hebang Law Firm, Partner Peng Manyun, and Partner Gong Niaya, jointly participated in the seminar. The seminar was chaired by Lin Xiaoming, a member of the Trademark and Copyright Law Professional Committee of the Guangzhou Lawyers Association and a partner of Guangdong Hebang Law Firm.
In his speech, Vice President Zhong Qisheng highly recognized intellectual property as a competitive specialty among Guangzhou lawyers. He encouraged Guangzhou lawyers to continue to maintain their enthusiasm for learning and research. At the same time, he proposed that the activities of the various professional committees of the Lawyers Association should be held more frequently at member law firms, so that everyone can participate by visiting each law firm.
In his speech, Chairman Yang Aibin shared his experiences since he began his legal career, mentioning that the development of intellectual property is a dynamic process, and so is the development of lawyers' practice. There is no end to learning and exploration, and we need to maintain a thirst for knowledge and keep learning.
In his speech, Director Li Ye emphasized that enterprises should not only pay attention to the compliance of trademark registration, but also the compliance of registered trademark use. In particular, it should be noted that after a trademark is declared invalid, the use of the trademark before its invalidation may be subject to compensation claims from the applicant for invalidation. Currently, judicial decisions vary on whether the use of a trademark before its invalidation constitutes infringement and whether liability for compensation should be borne, which is worth learning and discussing.
The seminar began with lawyer Tang Siyuan introducing a particularly significant retrial case that she is currently handling as a starting point for discussion. Subsequently, Deputy Director Bu Xiaojun elaborated on the development of the trademark revocation to trademark invalidation procedure and the evolution of Article 47 of the Trademark Law. Then, Secretary-General Qiu Binbin raised questions based on the case that lawyer Tang Siyuan is currently handling, officially initiating an in-depth discussion on the topic of this meeting.
During the discussion session, Director Li Ye, Deputy Director Bu Xiaojun, Secretary-General Qiu Binbin, lawyer He Qiuting, lawyer Tang Siyuan, and other guests present engaged in lively discussions on multiple key elements of the topic. These key elements included the scope and understanding of Article 47, paragraph 2, of the Trademark Law, whether the proviso part of this provision could be referenced for the use behavior before the trademark invalidation announcement, under what circumstances the use behavior before the trademark invalidation announcement could be deemed as infringement, whether such infringement determination was premised on bad faith, the criteria for determining bad faith, and how bad faith affected the liability for compensation. The academic discussion atmosphere was very intense.
During the discussion, three major focal issues became the core of attention. Firstly, the retroactive effect of Article 47 of the Trademark Law sparked extensive debate. The key question of whether this provision has retroactive effect in principle or not remains a mystery that urgently needs to be clarified. Participants engaged in in-depth analysis from multiple perspectives, including the legislative intent of the legal provisions, specific cases in judicial practice, and the functional orientation of the trademark system. They expressed their own views and engaged in intense clashes of ideas.
Secondly, the issue of determining the degree of "bad faith" in the proviso of Article 47, paragraph 2 of the Trademark Law is the top priority of this seminar. "Bad faith" is a key factor in determining whether relevant behaviors are applicable or referable to the proviso clause, and its judgment standard directly affects the rights and interests of the parties and the fair implementation of the law. However, "bad faith" itself is a highly subjective concept, and how to accurately grasp its degree in judicial practice is a matter of discretion for judges. Participants conducted in-depth discussions on whether there is "bad faith" from multiple aspects such as the perpetrator's subjective cognition, behavior patterns, and behavioral consequences. For example, whether the perpetrator adopted improper means to obtain trademark registration and use, whether it is necessary to knowingly use a trademark despite its dispute as a prerequisite for infringement determination, and whether it is necessary for the user to knowingly use the trademark in a way that constitutes infringement, all become important considerations in judging the degree of "bad faith". Another important issue is whether the standards for determining "bad faith" should differ between the original trademark registrant, trademark licensee, and trademark assignee.
Thirdly, how to determine the retroactive time of infringing use. In the context of trademark invalidation, accurately defining the retroactive time of infringing use is a highly challenging problem. If the retroactive time is set too early, some use behaviors carried out based on reasonable reliance during the early stages of trademark registration may be deemed as infringement, damaging the reasonable expectations of market entities. If the retroactive time is set too late, it may not effectively curb infringing behaviors, leading to continued profit-making by infringers and harming the legitimate rights and interests of trademark owners. During the discussion, the participants explored various methods and standards for determining the retroactive time, taking into account factors such as the market characteristics of different industries, trademark usage habits, and the potential concealment and persistence of infringing behaviors.
Lastly, Director Li Ye also enlightened everyone on how to interpret the phrases "has been executed" and "has been fulfilled" in Article 47, Paragraph 2 of the Trademark Law. Specifically, whether "has been executed" requires the complete execution and closure of a case or only partial execution. Similarly, how should "has been fulfilled" be understood, and what are the criteria or conditions for fulfillment? Different interpretations of these details can lead to varied handling and response strategies at different stages of a case. Participants shared their tips for handling enforcement cases.
This seminar was meticulously organized and standardized, with a precise focus on the theme and rich and substantial content. The participating guests, leveraging their solid professional expertise, conducted an in-depth analysis of malicious intent determination before trademark invalidation from multiple perspectives, including legal theory, judicial practice, and case breakthroughs. Through multiple rounds of discussion and intellectual exchange, they not only generated innovative academic viewpoints but also opened up new avenues for solving difficult problems in trademark legal practice. The professional insights and practical experience formed during the meeting not only provided intellectual property practitioners with operational ideas for reference but also injected strong momentum into promoting the improvement and development of China's trademark legal system, achieving dual effectiveness in theory and practice.
