Recently, the Beijing High People’s Court rendered final judgments in two trademark non-use cancellation administrative disputes, overturning both the relevant decisions of the China National Intellectual Property Administration (CNIPA) and the first-instance judgments of the Beijing Intellectual Property Court. The Court held that the disputed trademarks had been genuinely, lawfully, and effectively used during the designated period and ordered CNIPA to reissue its decisions.

For the trademark owner, the judgments preserved two core brand assets built through years of business operations and market development. For trademark practitioners, however, the significance of the cases extends far beyond the survival of two registrations. The cases highlight a recurring challenge in trademark law: how should genuine trademark use be evaluated when the relevant industry is, by law, restricted from engaging in public promotion?

In many respects, the dispute was not fundamentally about trademarks. It was about the nature of the industry itself.

The trademarks at issue had long been used by an investment management institution operating in the private equity sector. Over the years, the brand had continuously appeared in connection with investment projects, fund operations, industry reports, professional rankings, and various business activities. It had established a stable reputation and considerable recognition within the investment community. From a commercial perspective, this was clearly not an idle trademark, nor a brand that existed only on paper.

Yet once the matter entered the trademark cancellation proceedings, a seemingly paradoxical situation emerged.

CNIPA concluded that the evidence submitted was insufficient to prove genuine use of the trademarks during the relevant period. Subsequently, the Beijing Intellectual Property Court upheld that conclusion at first instance. As a result, a brand that had remained active in the market for years and continued to participate in substantial commercial activities was nevertheless deemed unable to establish trademark use under the law.

By the time the cases reached the appellate stage, the trademark owner had already received two unfavorable decisions from both the administrative authority and the court.

Faced with this situation, Michelle XU (Xu Lekai) and her team did not view the dispute merely as a question of whether sufficient evidence had been submitted. Instead, they focused on a more fundamental issue underlying the cases.

After a comprehensive review, the team concluded that the real challenge did not lie in proving that the brand existed or that the client had been actively conducting business. Rather, the difficulty stemmed from a disconnect between traditional approaches to evaluating trademark use and the operational realities of the private equity industry.

Historically, trademark use assessments have largely been developed in the context of consumer goods and conventional commercial services. Product packaging, advertisements, sales platforms, invoices, and transaction records are among the most common forms of evidence relied upon in trademark proceedings.

The private equity industry, however, operates under a fundamentally different framework.

Under applicable laws and regulations, private equity funds are prohibited from publicly soliciting investors and are generally restricted from conducting public advertising or promotional activities. For a private equity fund manager that strictly complies with regulatory requirements, opportunities to display its brand through conventional marketing channels are inherently limited. Unlike consumer brands, a private equity brand does not typically appear on product packaging, commercial advertisements, or e-commerce platforms.

Instead, its reputation and market recognition are reflected through fund establishment and management activities, investment projects, transaction documents, industry reports, professional rankings, and long-term business relationships. The value of the brand is built through years of investment performance, market reputation, and professional recognition rather than through public marketing campaigns.

This reality gave rise to one of the central difficulties in the cases. The brand undoubtedly existed, the business was actively operating, and the industry widely recognized the brand. Yet the forms of evidence generated through such activities differed substantially from the types of evidence traditionally associated with trademark use.

In other words, the more compliant a private equity institution is with industry regulations, the more difficult it may become to produce conventional trademark use evidence.

Helping the Court understand this industry-specific reality became the key to the cases.

Against this backdrop, Michelle XU’s team fundamentally restructured the litigation strategy. Rather than continuing to debate whether individual pieces of evidence could independently establish trademark use, the team sought to present a complete picture of how a private equity brand operates and creates commercial value in practice.

To achieve this objective, the team conducted a comprehensive review and reorganization of years of business records. These materials included industry media coverage, rankings published by professional organizations, long-term operation of brand-related communication platforms, fund management activities, investment projects, commercial cooperation documents, investment agreements, payment records, industry association appointments, professional honors, and evidence demonstrating market recognition and influence.

Evidence that had originally existed in different business contexts and across different periods was reorganized into a coherent narrative reflecting the continuous development and operation of the brand. Rather than examining each document in isolation, the team focused on demonstrating how the evidence collectively reflected the brand’s ongoing participation in commercial activities and its continuing source-identifying function within the marketplace.

At the same time, the team consistently emphasized another important aspect of the cases: the disputed brand was not appearing before administrative authorities and courts for the first time.

In fact, in prior proceedings, both CNIPA and the courts had already recognized, based on substantial evidence, that the brand had been actively engaged in commercial activities and had developed significant market influence. For a brand whose existence and business operations had been repeatedly acknowledged in previous decisions, reaching the opposite conclusion without compelling justification warranted closer scrutiny from both factual and legal perspectives.

Accordingly, throughout both the first-instance and appellate proceedings, Michelle XU’s team consistently integrated prior administrative decisions and effective court judgments into the overall evidentiary framework. On the one hand, the team demonstrated continuous commercial use during the designated period through extensive contemporary evidence. On the other hand, the team relied on prior findings to illustrate the brand’s long-term commercial development, accumulated goodwill, and established source-identifying function.

The team consistently argued that the purpose of the non-use cancellation system is to eliminate dormant trademark registrations, not to invalidate trademarks that continue to exist and function in the marketplace. In the private equity industry, brand recognition is not created through public advertising campaigns; rather, it is built through years of investment activities, business performance, and market reputation. Ignoring industry realities and applying standards developed primarily for consumer goods trademarks would inevitably fail to capture the true nature of brand use in this sector.

Ultimately, the Beijing High People’s Court accepted these arguments.

The Court found that the investment agreements, payment records, media reports, WeChat public account materials, industry honors, and other evidence mutually corroborated one another and collectively demonstrated that the disputed trademarks had continuously participated in commercial activities and fulfilled their source-identifying function during the designated period. The evidence formed a complete and consistent evidentiary chain sufficient to establish genuine, lawful, and effective trademark use. Accordingly, the Court overturned both the first-instance judgments and the relevant CNIPA decisions.

The significance of these cases extends well beyond the preservation of two trademarks.

For many years, trademarks used in financial services, investment management, consulting, and other professional service sectors have faced a common challenge: unlike consumer products, the value of such brands is often embodied not in physical goods but in commercial reputation, professional expertise, and market recognition. Demonstrating that these brands have genuinely entered commercial use and continue to function as indicators of source has therefore remained a recurring issue in trademark practice.

The judgments in these cases reinforce an important principle: the assessment of trademark use should be grounded in real-world commercial practice and should take into account the characteristics and operational realities of the relevant industry. The focus should be on whether the trademark genuinely performs its source-identifying function, rather than on whether it appears in a particular form traditionally associated with trademark use.

For the private equity industry in particular, the cases also convey a clear message: the inability to engage in public promotion does not equate to an absence of trademark use. On the contrary, continued participation in commercial activities, the accumulation of goodwill, and the development of stable market recognition within the constraints of industry regulation may constitute the most authentic expression of trademark value and brand function.

Michelle XU’s team has long focused on intellectual property disputes and brand protection. By approaching legal issues through the lens of clients’ actual business models and by integrating legal analysis with industry knowledge and commercial realities, the team strives to develop persuasive and practical solutions for complex disputes. The successful reversal of these two cases not only preserved important brand assets for the client, but also once again demonstrated the critical role that professional judgment, industry understanding, and strategic advocacy play in sophisticated intellectual property litigation.