Legislation & Practice
China
CNIPA Strengthens Trademark Protections: Stricter Evidence Rules and Measures Against Bad-Faith Non-Use Cancellations
The China National Intellectual Property Administration (CNIPA) has introduced new measures in 2025 that impose a greater evidentiary burden on applicants filing non-use cancellation actions. Applicants are now required to submit preliminary evidence of non-use, such as online search results, market investigation reports, or other supporting materials, at the time of filing. This shift from previous practices, where minimal evidence sufficed, is aimed at discouraging bad-faith filings and ensuring that non-use cancellations are pursued for legitimate purposes. By raising the threshold for evidence submission, the CNIPA seeks to protect trademark registrants from repeated or malicious cancellation actions.
The new measures also address the issue of anonymous non-use cancellations, often filed through shell companies to conceal the true applicant's identity. While the CNIPA acknowledges the use of such entities, it has implemented stricter requirements to identify and limit malicious filings. For instance, applicants may now be required to disclose the identity of the true applicant and provide letters of undertaking confirming the accuracy of their submissions. These changes, coupled with the increased evidentiary burden, are designed to streamline the process for genuine applicants while curbing abuses of the system.
Case law
Hong Kong
Cross-Border Fame Counts: How Mainland Evidence Won a Hong Kong Trademark Battle
The Hong Kong Trademark Registry recently invalidated the trademark “九州通” (Jiu Zhou Tong in Chinese), registered by a local company, following an action by a major PRC-based pharmaceutical and logistics company. The applicant argued that the registrant’s mark was identical or highly similar to its own well-known mark, recognized in China since 2014, and that the registration was made in bad faith, breaching Section 11(5)(b) of the Trade Marks Ordinance. To support its claim, the applicant provided extensive evidence of reputation and use, including awards, certificates, event participation, and promotional materials — primarily from mainland China.
Legal Principles Applied
The tribunal examined several factors, including the applicant’s longstanding use and reputation, the high degree of similarity between the marks, and the registrant’s inability to provide a credible explanation for its choice of mark. Based on these considerations, the tribunal inferred that the registrant had copied the applicant’s mark and ruled the registration invalid.
Key Takeaways
This case demonstrates that evidence of reputation and use generated outside Hong Kong—particularly in mainland China—can be highly persuasive in Hong Kong trademark invalidation proceedings, especially when the marks and goods or services are closely related. The decision reflects the increasing commercial integration between Hong Kong and mainland China, with business activities, advertising, and consumer exposure frequently crossing borders; Hong Kong consumers are now more likely to encounter brands through e-commerce platforms, travel, and other channels originating from the mainland, while the significant number of mainland visitors to Hong Kong further strengthens these cross-border commercial links. As commercial ties continue to deepen, evidence of fame and use from the mainland will likely play an even more significant role in future Hong Kong trademark disputes, and businesses seeking to enforce or defend trademark rights in Hong Kong should be prepared to present comprehensive evidence of reputation and use, regardless of whether that evidence originates locally or from the mainland.
Singapore
East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd [2025] SGCA 28
East Coast Podiatry Centre Pte Ltd v Family Podiatry Centre Pte Ltd 2025 SGCA 28 involved a dispute over alleged trade mark infringement and passing off, with the appellant claiming that the respondent infringed its registered trade mark by using the phrases "east coast podiatry," "Podiatry East Coast," and "Podiatrist East Coast" in Google Ads. These advertisements redirected users to the respondent's website, which did not reference the appellant's trade mark or the disputed signs, and instead clearly displayed the respondent’s own marks.
The judge clarified that the threshold test of “trade mark use” remains good law in Singapore and is applicable to infringement claims involving internet keyword advertising. The court considered the objective circumstances of the defendant’s use, the inherent distinctiveness of the signs, and the website to which users are redirected are all relevant factors when applying this test. Greater latitude is given to defendants using generic terms, recognising that internet users often employ a wide range of generic search terms.
Ultimately, the appeal was dismissed, with the court finding that the respondent's use of the signs was descriptive and did not constitute use in a trade mark sense. The respondent’s intent was to signal the provision of podiatry services in the “east coast” region of Singapore, rather than to use the signs as a badge of origin. This case provides valuable guidance on Singapore’s approach to internet keyword advertising, emphasising the importance of satisfying the threshold test of “trade mark use” and the need for trade mark owners to adopt distinctive marks, as reliance on descriptive marks can undermine enforcement efforts in online advertising scenarios
Germany
Dubai chocolate must originate from Dubai
On 27 June 2025, the Higher Regional Court of Cologne ruled that chocolate produced in Turkey may not be marketed as “Dubai chocolate”, finding that the term functions as an indication of geographical origin. Labelling Turkish chocolate as “Dubai chocolate” was deemed misleading advertising under Section 126(1) of the German Trademark Act (MarkenG), and thus infringed Section 127(1) MarkenG. The decision arose from four urgent preliminary injunction proceedings heard jointly.
The court determined that “Dubai chocolate” is still understood by consumers as a designation of origin, with 15–20% of consumers associating the product with Dubai. The packaging further reinforced this impression by featuring the Dubai skyline and the slogan “this chocolate brings the magic of Dubai right to your home”. The court noted that this protection could lapse if the term became generic, but found that this was not yet the case.
Prior to this ruling, courts were divided, with some considering “Dubai chocolate” a fanciful name rather than an indication of origin. These new decisions explicitly rejected that reasoning, holding that the association with Dubai remains sufficiently strong among consumers. The decisions are legally binding but represent interim relief, with final judgments on substantive issues still pending
Italy
Italian Supreme Court Clarifies Criminal Liability for Misleading Geographical Indications
In Cassazione Penale, 4 August 2025, no. 28501, the Italian Supreme Court reaffirmed criminal liability for misleading geographical indications, addressing the sale in Italy of wood pellet bags labelled “Swedish Pellet” and displaying the Swedish flag, despite the products being manufactured in Ukraine and distributed by a Latvian company. The Court confirmed that, under Article 517 of the Italian Criminal Code, anyone marketing products with names, trademarks, or signs likely to mislead buyers about origin, provenance, or quality is subject to sanction, regardless of whether the sign is a registered trademark.
The Court clarified that “provenance” should be interpreted as legal provenance, meaning the entrepreneur who guarantees the product’s quality and assumes responsibility for it. However, deception regarding geographical provenance may also constitute a criminal offence under Article 517, especially where products derive specific qualities from their association with a particular place, influencing consumer choices. In this case, the use of “Swedish Pellet” and the Swedish flag, without any indication of the Ukrainian producer, was found to mislead consumers about both geographical and legal provenance.
The decision highlights the need for a case-by-case assessment to determine whether geographical indications can lead to mistaken consumer beliefs. The Court’s position aligns with broader rules aimed at preventing public deception and protecting legitimate expectations regarding the characteristics of products claimed to originate from a particular place.
EU
The General Court of the EU on trade mark use for advertising services
The General Court of the EU recently upheld a decision to partially revoke Airbnb’s EU trade mark for certain goods and services, including "advertising" services in Class 35, due to insufficient evidence of genuine use. The Court found that Airbnb failed to demonstrate that its trade mark was genuinely used to identify the commercial origin of advertising services provided to third parties, rejecting Airbnb’s argument that promoting its own platform and hosts qualified as advertising services for others.
This decision clarifies that trade mark protection cannot extend to goods or services for which genuine use has not been demonstrated, and advertising services do not need to be listed in a trade mark application if they are only used to promote the owner’s own goods or services. The ruling provides important guidance for businesses seeking to maintain trade mark protection across various categories, including retail and wholesale services, where the same principle applies.
The implications and relevance of Brexit
With the five-year anniversary of Brexit fast approaching, it is crucial for EU trade mark owners based in the UK to consider the implications of this requirement. From 1 January 2026, EU trade mark owners will no longer be able to rely on use of their marks in the UK to satisfy the requirement of genuine use within the EU. This change presents a significant risk for businesses that have not actively used their EU trade marks within the EU since Brexit. To safeguard their registered EU trade mark rights, businesses should promptly review their trade mark portfolios, identify marks that may be vulnerable, and take steps to establish genuine use in the EU without delay.
