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No.205 August 28, 2023
In this issue
WIPO: New E-mail Requirement for Madrid System Users (Effective November 2025)
User Guide of IP5 Trial and Appeal Procedures Released for the First Time
China-Brazil PPH Pilot Program Extended to 2029
Cases in Spotlight
Unitalen Acted for C&S and Secured Victory in the Graphic Trademark Retrial Brought Up for Review and Reversed by the Supreme People's Court
Unitalen Secured Well-Known Trademark Recognition and Cross-Class Protection for "THERMOS" Trademark in Civil Litigation, Overcoming Five-Year Limitation against Registration in Bad Faith with Precise Arguments
Unitalen Acted for Client to Successfully Invalidate Part of Opposing Party's Patent for Invention for Injection Pen, Paving the Way for Product Commercialization for the Client
Unitalen News
Unitalen Shanghai Branch Received Multiple Honors, Including "Service Integrity Award" and "Knowledge Leadership Award"
Attorney Li Chunya, Unitalen Partner, Listed Among the "2025 Lexpress Luminary Lawyers 20: Intellectual Property (Trademark)"
Administration for Market Regulation of Chengdu Conducted Specialized Training and Presented Unitalen with Signage, Designating Unitalen as "Singapore Workstation of the Chengdu Sub-Center of the Overseas Intellectual Property Dispute Response Guidance Center of China"
Two Attorneys at Unitalen Shanghai Branch Honored with "2025 IP Service Star" and "2025 IP Service New Talent"
In this issue
WIPO: New E-mail Requirement for Madrid System Users (Effective November 2025)

As approved by the Madrid Union Assembly in July 2025, starting from November 1, 2025, all holders of international trademark registrations (referred to as “assets”) and their representatives must have a recorded e-mail address for each asset they hold or manage to submit requests for changes.

Please refer to the following link for details: https://www.wipo.int/documents/d/madrid-system/information-notices-en-2025-madrid_2025_30_e.pdf

(Source: WIPO China)

User Guide of IP5 Trial and Appeal Procedures Released for the First Time

Recently, the reexamination authorities of the five intellectual property offices — CNIPA, USPTO, EPO, JPO, and KIPO (collectively referred to as IP5) — released the first-ever User Guide of IP5 Trial and Appeal Procedures in 2025. The Guide compiles the fundamental procedural rules and practical operational processes for patent re-examination and post-grant proceedings across the five offices, including essential information, trial procedures, amendment rules, user policies, and commonly used resources of the IP5 reexamination authorities, and aims to assist global users in understanding patent grant and validity systems, flexibly utilizing relevant trial procedures, thereby facilitating transnational protection for global users and empowering international economic and trade cooperation.

Annex: User Guide of IP5 Trial and Appeal Procedures(EN)202509.pdf

(Source: CNIPA)

China-Brazil PPH Pilot Program Extended to 2029

During the 17th Meeting of BRICS Heads of Intellectual Property Offices held on September 22, 2025, the China National Intellectual Property Administration (CNIPA) and the Brazilian National Institute of Industrial Property (INPI) officially renewed the Patent Prosecution Highway (PPH) pilot program agreement. The renewal extends the validity of the agreement, originally set to expire on November 30, 2024, to November 30, 2029.

(Source: UNITALEN)

Cases in Spotlight
Unitalen Acted for C&S and Secured Victory in the Graphic Trademark Retrial Brought Up for Review and Reversed by the Supreme People's Court

Case Brief

The graphic trademark "" (designated colors) (hereinafter referred to as the "disputed trademark") of the retrial petitioner,  Zhongshun Jierou Paper Co., Ltd. (hereinafter referred to as "C&S"), was approved for registration on May 7, 2011. It is designated for use on goods in Class 16, including " facial tissues; toilet paper; paper towels".

On March 1, 2021, an X paper company filed a request for invalidation against the disputed trademark on the grounds that it lacks distinctiveness and occupies public resources. The China National Intellectual Property Administration issued a ruling,  upholding the registration of the disputed trademark. The X paper company was dissatisfied and filed lawsuits with the Beijing Intellectual Property Court and, subsequently, the Beijing High People's Court. The court of first instance dismissed its claims. However, the court of second instance held that the disputed trademark was more likely to be perceived by the relevant public as a product decoration, rather than functioning to distinguish the source of the goods, and thus the trademark lacked inherent distinctiveness. Moreover, the evidence submitted by C&S was insufficient to prove that the disputed trademark had acquired distinctive features through use. Consequently, in accordance with  Article 11.1(3) of the Trademark Law, the court of second instance reversed the judgment of the first instance and revoked the challenged ruling. C&S, dissatisfied with the judgment of the court of second instance, filed a request for retrial with the Supreme People's Court.

After the Supreme People's Court brought the case up for review, it reversed and revoked the judgment of the court of second instance, i.e., the Beijing High People's Court, which had ruled in favor of the X paper company in the lawsuit.

Typical Significance

The core issue in this case relates to the criteria for determining trademark distinctiveness under Article 11 of the current Trademark Law.  The judgment of retrial emphasized that issues arising from a trademark's use after its registration can be addressed through the procedure of trademark right revocation, rather than through an abuse of the absolute grounds of lacking distinctiveness under Article 11 of the Trademark Law to invalidate the trademark. The retrial judgment in this case holds significant reference value for clarifying misconceptions in the handling of similar cases in judicial practice.

Unitalen Secured Well-Known Trademark Recognition and Cross-Class Protection for "THERMOS" Trademark in Civil Litigation, Overcoming Five-Year Limitation against Registration in Bad Faith with Precise Arguments

Recently, Unitalen acted for Thermos (China) Housewares Co., Ltd. (hereinafter referred to as "Thermos" or "the Plaintiff")  in a trademark infringement and unfair competition dispute with a Tianjin company and others. The Beijing Intellectual Property Court issued a first-instance judgment recognizing that Thermos's Trademark No. 688940 ""  constituted a well-known trademark for goods of Vacuum bottles in Class 21 before April 12, 2017. The signs "膳魔師" and "SHANMOSHI" used by the defendant constituted trademark infringement, and the use of "膳魔師" in its corporate name constituted unfair competition. The court ordered the Defendant to cease the infringing acts and pay RMB  520,000 in damages. The judgment has now taken legal effect.

Case Brief

The Thermos brand was founded in Germany in 1904 and has evolved into the world's largest professional manufacturer of high-vacuum stainless steel household products, with products sold in over 140 countries and a substantial international market share, enjoying an extremely high reputation worldwide. In 1995, the Thermos brand officially entered the Chinese market. After nearly 30 years of development, its branches are spread across provinces and cities nationwide, and its products include vacuum stainless steel thermos cups, stewing pots, and other household kitchen insulation products. Its registered trademarks and Thermos company have repeatedly been honored with awards at the municipal, provincial, and national levels. Furthermore, the trademark in question has been recognized as a well-known trademark by competent administrative authorities and the People's Courts on several occasions.

The Defendant, X company in Tianjin, used the signs "膳魔師" and "SHANMOSHI" on goods such as "Pet food", and conducted promotion, marketing, and sales through e-commerce platforms, we-media platforms, and the like channels. Additionally, the X company in Tianjin registered "膳魔師" as its trade name. Regarding the Defendant's abovementioned acts of trademark infringement and unfair competition, Thermos filed a lawsuit with the Beijing Intellectual Property Court in September 2024.

 


Judgment Opinions

 I. The defendant registered and used the disputed mark in bad faith; as the owner of a well-known trademark, the plaintiff’s claim is not subject to the five-year limitation period.

 II. The defendant’s use of the signs “膳魔師” and “SHANMOSHI” on pet food would dilute the distinctiveness of the plaintiff’s well-known trademark and infringe its exclusive rights therein.

 III. The defendant’s use of “膳魔師” as part of its corporate name and in its business activities constitutes unfair competition.

Typical Significance

This case marks the first time the "" trademark has received cross-class protection, extending from goods of vacuum flasks in Class 21 to pet food in Class 31. Moreover, this case is another landmark victory where protection has overcome the five-year limitation against a bad-faith registered trademark. It establishes crucial judicial precedent for renowned brands to combat infringement under a "legitimate facade" and further demonstrates the judicial orientation of strengthened protection for renowned brands.

Unitalen Acted for Client to Successfully Invalidate Part of Opposing Party's Patent for Invention for Injection Pen, Paving the Way for Product Commercialization for the Client

Recently, in a patent invalidation proceeding, Unitalen, acting on behalf of a client, successfully secured partial invalidation of a patent for an invention related to an injection pen held by the opposing party, thereby paving the way for the client's product commercialization.

Case Brief

Previously, Unitalen's client was planning to launch an injection pen product. During a Free to Operate (FTO) analysis conducted on this product, Unitalen identified a Chinese patent for invention relevant to the product (hereinafter referred to as the "patent involved patent"). To prevent the patent involved from obstructing the commercialization of the injection pen product, Unitalen initiated an invalidation proceeding against the patent involved upon accepting the entrustment.

The patent involved protects an injection pen. Its technical solution comprises multiple interconnected mechanisms such as a dose display mechanism, a drive mechanism, and a clutch mechanism, which makes the technical solution complex. Furthermore, the patent involved has an early filing date, and its family patents have been granted by multiple patent offices. Meanwhile, the technical terms are inconsistent, which significantly increases the difficulty in reviewing prior art documents and feature matching.

After accepting the entrustment of the client,  the Unitalen team carefully reviewed the examination history of its family patents, found the closest prior art from the examination history, and determined the optimal combination of evidence by combining the above findings with the result of the search, thereby partially invalidating the patent involved and achieving the client's business objectives.

Summary of Highlights

In this case, the Unitalen team approached the matter from both the examination history of the family patents and the invalidation search. When checking the examination history of the family patents, the Unitalen team conducted a supplementary search on relevant patents by searching the citations. When performing the invalidation search, the Unitalen team, drawing on experience from prior injection pen cases, prioritized the prior patents of several major injection pen manufacturers and identified suitable documents for combination, thereby improving search efficiency.

Unitalen News
Unitalen Shanghai Branch Received Multiple Honors, Including "Service Integrity Award" and "Knowledge Leadership Award"

On October 16, 2025, the 30th Anniversary Celebration of the Shanghai Trademark Brand Association — "Glorious 30 Years, Setting Sail Again with One Heart" — grandly commenced in Shanghai. At the ceremony, organizations and individuals who had made outstanding contributions to the trademark and brand sector were honored, and awards were presented for 2024-2025 Exemplary Trademark Agency Cases and Nominated Exemplary Trademark Agency Cases.

Unitalen Shanghai Branch secured a total of four awards:

Unitalen Shanghai Branch was honored with the "Service Integrity Award"

Attorney Li  Bo, partner of Unitalen Shanghai Branch, was honored with the "Knowledge Leadership Award"

★The "Case on Trademark Infringement and Unfair Competition Involving Hengdeli (亨得利)" represented by Unitalen Shanghai Branch was recognized as a "2024-2025 Exemplary Trademark Agency Case"

★The "'Lideheng (利得亨)' Trademark Opposition Case" handled by Unitalen Shanghai Branch was recognized as a "2024-2025 Nominated Exemplary Trademark Agency Case".

Attorney Li Chunya, Unitalen Partner, Listed Among the "2025 Lexpress Luminary Lawyers 20: Intellectual Property (Trademark)"

On October 22, 2025, Lexpress grandly unveiled the list of "2025 Lexpress Luminary Lawyers 20: Intellectual Property (Trademark)". Attorney Li Chunya, Unitalen partner, was distinguished with a place on the list  for her profound expertise, outstanding case achievements, and strong client acclaim in the field of intellectual property.

Administration for Market Regulation of Chengdu Conducted Specialized Training and Presented Unitalen with Signage, Designating Unitalen as "Singapore Workstation of the Chengdu Sub-Center of the Overseas Intellectual Property Dispute Response Guidance Center of China"

On November 7, 2025, a specialized training entitled "Overseas Intellectual Property Protection and Legal Risk Prevention" was successfully held. The training was hosted by the Committee for Political and Legal Affairs of the CPC Chengdu Municipal Committee, the Chengdu Municipal Justice Bureau, and the Chengdu Municipal Administration for Market Regulation, organized by the Chengdu Law Society, the Sichuan Tianfu New Area Administrative Committee, and the Chengdu Intellectual Property Protection Center, and co-organized by the Tianfu New Area Sub-Center of the Chengdu Intellectual Property Protection Center and the Sichuan Branch of  Unitalen Attorneys At Law.Moreover, the  Unitalen Attorneys At Law was presented with signage and accredited as the Singapore Workstation of the Chengdu Sub-Center of the Overseas Intellectual Property Dispute Response Guidance Center of China.

During the specialized training, Attorney Zhang Yazhou, a partner at Unitalen Law Office, delivered a presentation on the theme of "Patent Risk Identification, Response, and Cost Management for Chinese Enterprises Expanding Overseas." His sharing provided enterprises with practical pathways for risk control.

Two Attorneys at Unitalen Shanghai Branch Honored with "2025 IP Service Star" and "2025 IP Service New Talent"

On November 7, 2025, the 2025 "Belt and Road" Forum on Intellectual Property Innovation and Development was grandly held at the Parkview Hotel in Shanghai Pudong New Area. Zhang Zhenjun and Su Rouwen, attorneys at Unitalen  Shanghai Branch, were invited to attend the forum. The award ceremony for the 2025 Intellectual Property Service Stars, presented by IP Shanghai Intellectual Property Observer, was held grandly during the Forum.

Attorney Zhang Zhenjun was awarded the "2025  Intellectual Property Service Star". Attorney Su Rouwen was awarded the "2025  Intellectual Property Service New Talent".

 

UNITALEN Monthly Newsletter ?Copyright 2007
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