As the year is soon coming to an end, we have selected five of our many successful cases to share with you our experience in this challenging yet hopeful year of 2021.
I. SUCCESSFUL BUYBACK FROM CUNNING TRADEMARK SQUATTER AND REVERSAL OF CNIPA'S DECISION TO CANCEL THE ACQUIRED MARK
We represented an international pet food company which was at the time contemplating acquisition by a global food conglomerate. Because of the prospective acquisition, the client had to secure their trademark registration, which was being squatted by a bad faith filer urgently. The parties preliminary agreed on the assignment price but the squatter then assigned the marks to a related party and refused to follow through with the agreed assignment. The client thus filed a non-use cancellation against the squatter's marks so as to exert pressure on them but received an unfavourable decision.
It was clear that the squatter intended to drain money from our client. In order to exert even more pressure on the squatter, we advised our client to file a supplemental submission in the review application against the unfavourable non-use cancellation emphasizing the evidence submitted by the squatter was fabricated. Eventually, we successfully obtained a favourable non-use cancellation review decision and the squatter's mark was cancelled. But at that time, the client's own trademark applications were still pending examination and were still not yet registered. Upon rounds of negotiation, we successfully persuaded the squatter to surrender their marks to the client in view of the cancellation of their mark. Following the parties' agreement, we swiftly arranged with the notary the execution of the settlement agreement and completed the assignment recordation procedures during Covid restriction.
Although the squatter filed an appeal against the non-use cancellation review decision before the parties reached settlement, we successfully argued and convinced the Beijing Intellectual Property Court to maintain the registration of the squatter's mark, which had been assigned to our client, and ultimately secured registration for our client in China within the tight timeline before the acquisition.
