Case Notes: A Landmark Victory in Prior Use Trademark Defense
In the summer of 2024, an urgent matter interrupted my routine work. Zhejiang MEEC Company, a reputable enterprise with nearly 20 years in the electroplating industry, faced a significant trademark infringement lawsuit. A Beijing-based company, holding the registered MEEC trademark, claimed damages of US$10Million, threatening the longstanding reputation that Zhejiang MEEC had built over two decades. Reviewing the case files took me back to 1997, when our client first began using the MEEC name on their electroplating products. The plaintiff acquired the MEEC word and graphic trademarks by assignment in 2013 and promptly initiated litigation. This was a clear example of trademark squatting and opportunistic litigation, which often prevailed under the judicial environment at that time.
The courtroom proceedings resembled a silent battle. Our initial evidence included product containers from 1999, preserved over the years. Judicial appraisal confirmed these items bore marks of continuous use spanning more than twenty years, telling a compelling story of longstanding brand presence. In contrast, the plaintiff failed to provide evidence of actual use. When retired employees testified with emotion, the judge discerning attention was evident. The turning point came with our presentation of a continuous, two-decade-long usage history: from faded handwritten sales receipts dated 2001 to recent product brochures from 2023; from local industry awards to cooperation agreements with national research institutions. These pieces formed a comprehensive narrative of a homegrown brand growth.
During the trial, the plaintiff counsel emphasized the absolute rights granted by trademark registration. We responded by citing the revised Article 59 of the Trademark Law, underscoring that trademark protection primarily serves to identify goods or services rather than merely recognizing registration status. A pivotal moment was the presentation of an audio recording revealing that the plaintiff legal representative had personally inspected our client factory, serving as key evidence of bad-faith registration.
The final judgment embraced our core argument: our client prior use of the MEEC mark had established stable market recognition and deserved protection within a defined scope. This victory preserved the company twenty years of brand equity and set a precedent as the first successful prior use defense in trademark cases in the district region in Zhejiang province.
Case Overview
Parties Involved
- Plaintiff: Beijing MEEC Company, holder of the MEEC trademark registered under Class 1 for products including electroplating agents and softeners. The trademark rights were acquired by assignment in 2013.
- Defendant: Zhejiang MEEC Company, established in 1997, engaged in metal surface treatment technology development; manufacturing of galvanizing brighteners; and retail and wholesale of hardware, chemicals, machinery, non-ferrous metals, and lubricants. The company has used the MEEC mark on electroplating products since its inception.
Infringement Allegations and Litigation Process
In June 2024, the plaintiff purchased electroplating agents from the client and notarized the transaction. In July 2024, as the registered trademark owner, the plaintiff filed suit alleging unauthorized use of the MEEC trademark by the client, demanding cessation of infringement and compensation of US$10Million.
Defense Strategy and Legal Approach
Defense Based on Prior Use Rights
As legal representatives, after thorough case analysis, we identified that the client focus on operations had led to neglect of trademark protection, risking intellectual property loss and economic damages. To protect legitimate rights and uphold fairness, we centered our defense on the client prior use rights to the MEEC mark.
Legal Basis for Prior Use Rights
Prior use rights allow a party who used a trademark before another registration to continue using it within the original scope. This provision balances trademark registrants and prior users interests, addressing limitations of the registration system. Article 59 of China Trademark Law states that if a party used an identical or similar trademark with certain influence before the registration application date, the registrant cannot prohibit continued use within the original scope, though distinguishing marks may be required.
Multi-Faceted Defense
- Prior Acquisition of Trade Name: The client MEEC trade name was established well before the plaintiff registration in 2013, constituting legitimate prior rights.
- Prior Use of Trademark: The client consistently used the MEEC trademark on electroplating products long before the plaintiff application.
- Recognition and Reputation: The client MEEC trademark has significant industry recognition, supported by awards and consumer influence, surpassing the plaintiff presence.
- Plaintiff Bad Faith Registration: The plaintiff knowingly registered the trademark despite the client prior rights, violating good faith principles and constituting unfair competition.
Evidence Collection and Presentation
We gathered extensive evidence, including sales contracts and invoices spanning over a decade, advertising contracts, and certificates of awards. This demonstrated the client longstanding use and recognition of the MEEC trademark. The court accepted our position, recognizing the client exclusive rights and dismissing the plaintiff infringement claims and compensation demands.
Conclusion
While the case has concluded successfully, it offers important lessons for enterprises. Many traditional companies focus heavily on production but overlook brand protection, equating brand building solely with advertising and neglecting rights confirmation. Although our client retained trademark use rights, the litigation costs and time far exceeded what proactive trademark planning would have required. In today strengthened intellectual property environment, companies should establish dynamic trademark management systems. This includes not only securing registrations but also diligently accumulating and preserving evidence of use. For marks in use but not yet registered, regular legal risk assessments are essential. Market competition is unforgiving to delayed action; legal protection favors those who respect and skillfully apply the rules.