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Recently, Ms Yang Siping of JAVY Law Firm successfully assisted a Russian automotive chemicals company in overcoming numerous obstacles to register its ‘SHINE SYSTEMS’ trade mark in China.

The case faced two rejections from the China National Intellectual Property Administration (CNIPA), involving a total of 18 conflicting trademarks, and encountered the absolute ground for refusal known as ‘lack of distinctiveness’—one of the most difficult obstacles to overcome in trademark registration. Ultimately, through precise strategic judgement and in-depth legal argumentation, Ms Yang helped the client secure the trademark registration certificate.

The following is a chronicle of the case

01 Strategic Approach: A Four-Step Turnaround

Step 1: Assessing the Situation and Advising the Client to “Withdraw the Appeal and Redesign the Trademark”

Upon receiving the first rejection notice, we conducted a comprehensive analysis. With 10 conflicting trademarks and a lack of distinctiveness, the chances of success were extremely low if we had pressed ahead with the appeal.

Consequently, we frankly advised the client to abandon the review, redesign the trademark and submit a new application. Whilst this advice may have appeared to be a ‘retreat’, it was in fact a strategic ‘advance’. The client accepted our recommendation.

Step 2: Following the second rejection, we decided to ‘fight to the end’

After the client amended the trademark and resubmitted the application, the China National Intellectual Property Administration (CNIPA) rejected it once again.

This time, eight conflicting trademarks were cited, and the Office once again ruled that the trademark consisted solely of common commercial terms and lacked distinctiveness.

However, on this occasion, we assessed that there was a chance of success.

Step Three: Precise ‘Subtraction’ — Abandoning Secondary Goods to Bypass Most Obstacles

Overcoming all eight conflicting trademarks one by one would have entailed a massive workload and been fraught with uncertainty. We helped the client make strategic trade-offs: abandoning some non-core goods and retaining only the key ones.

This ‘subtraction’ directly eliminated six of the eight obstructing trademarks. We successfully helped the client remove the remaining two through revocation proceedings.

At this stage, all eight obstructing trademarks had been cleared.

Step Four: Overcoming the ‘Absolute Ground for Refusal’ — the challenge of lack of distinctiveness

With the opposing trademarks resolved, a more difficult problem remained: the China National Intellectual Property Administration (CNIPA) deemed the trademark to be a ‘common commercial term’, lacking distinctiveness and therefore ineligible for registration.

Such rejections are extremely difficult to overcome. Typically, applicants are required to submit a substantial amount of evidence of use in the Chinese market to prove that the trademark has acquired ‘secondary meaning’ through use — yet the CNIPA’s requirements for such evidence are extremely high, approaching the criteria for recognising a well-known trademark.

In this case, the client’s evidence of use in China was very limited. Rather than relying solely on the volume of evidence, we drafted a rigorous and in-depth legal argument from multiple perspectives—including the trademark’s word formation, industry conventions and distinctiveness—to demonstrate that the trademark was not a ‘common commercial term’ and possessed the distinctive characteristics required of a trademark.

At the same time, we elaborated on the importance of registering this trademark in China for the client’s business development from political, economic and legal perspectives. Ultimately, the CNIPA accepted our arguments, overturned the original decision of absolute refusal, recognised the trademark as distinctive, and granted registration.

02 Case Highlights and Lessons Learnt

Numerous obstructing trademarks: 10 on the first occasion and 8 on the second. Each one was a ‘sticking point’. Through strategic prioritisation and targeted action, we eliminated them one by one.

Absolute grounds for refusal are extremely difficult to overcome: cases involving a lack of distinctiveness typically require a substantial amount of evidence. In this case, with limited evidence available, we prevailed through in-depth legal argumentation—a considerable achievement.

Flexible strategy and precise judgement: Not every path needs to be forced. On the first occasion, we decisively advised ‘withdrawal’; on the second, we resolutely pursued ‘proceeding’. This saved the client time, effort and money, ultimately achieving their commercial objectives.

Comprehensive service capabilities: From analysing rejections, providing strategic advice, redesigning the mark, narrowing the scope of goods, and overcoming obstacles, to legal argumentation and persuading the China National Intellectual Property Administration (CNIPA) – we provided a fully integrated, end-to-end service.

03 Concluding Remarks

A trademark rejection is not to be feared. What is truly daunting is the absence of a clear strategy and professional judgement. We are not daunted by numerous obstacles or high levels of difficulty. The more complex the case, the more our professional value is demonstrated.

This case perfectly demonstrates our exceptional judgement, superior analytical capabilities, thorough understanding of laws and regulations, and adept practical skills in the field of trademark dispute resolution (non-litigation). We specialise in providing professional, efficient and tailor-made legal solutions based on our clients’ commercial realities, thereby maximising their interests.