In May 2024, Jincheng Tongda & Neal ("JT&N") represented Cantol S.A.C. ("Cantol"), a Peruvian company, in securing the registration of two trademarks with the China Trademark Office ("CTO"), marking a hard-earned victory in a protracted eight-year trademark dispute. Led by senior partners - Linyan Ma and Guohua (Annie) Wu, this victory exemplifies JT&N's deep expertise in complex IP disputes and underscores the firm's commitment to protecting the interests of multinational companies in cross-border IP matters.
The dispute originated in 2007 when a Chinese company ("JH Company") engaged in trademark squatting by registering Cantol's "CANTOL" trademarks, severely hampering Cantol's business operations in China. JT&N was engaged by Cantol in 2016 to retrieve its trademarks. To this end, JT&N's adopted a multi-pronged strategy, including trademark invalidation, opposition, opposition review, trademark application, etc. The strategy proved effective.
In 2018, JT&N filed applications to cancel the two trademarks registered by JH Company on the grounds that they had been "registered by improper means". In 2021, the team finally obtained an invalidation ruling against JH Company's trademark registration, which paved the way for the rejection of JH Company's subsequent registrations and the successful registration of Cantol's "CANTOL" trademarks.
Following the successful invalidation of these two trademarks, JT&N initiated invalidation proceedings against four similar trademarks registered by JH Company, all of which resulted in favorable rulings. At the same time, the team filed oppositions against six of JH Company's trademarks that had been granted preliminary approval. As a result of JT&N's efforts, the CTO ultimately refused to register these trademarks.
In addition to cancellation and opposition proceedings, JT&N employed a strategy of "successive trademark filings". This strategy allowed Cantol to claim priority over similar trademark applications filed by third parties. In May 2024, the CTO finally approved Cantol's trademark registrations.
JT&N's expertise in assisting companies to establish effective IP protection mechanisms and in patent, trademark, software and trade secret litigation is widely recognized in the industry. JT&N has also worked closely with renowned trademark and patent agencies to assist domestic and foreign companies with trademark registration, patent application, software registration, and domain name registration in China. JT&N's trademark practice is recognized by international legal ranking institutions, including Chambers and Partners, The Legal 500, Asian Legal Business (ALB), Managing Intellectual Property (MIP) and so forth.