In the trademark cancellation case concerning Moda Operandi, the company faced a challenge from a third party in China, Bozhou HanKeSi Department Store, which had maliciously sought to cancel Moda Operandi's core trademark under Class 35. Moda Operandi, a US-based luxury fashion e-commerce platform, navigated through the cancellation proceedings initiated by China’s Trademark Office, followed by review procedures and consequent litigation.

Moda Operandi appointed Tristan Li Yong of Globe-Law Law Firm to represent them in this legal matter. Through the instances of administrative litigation, including the first and second instances, as well as the retrial, all claims made by the opposition were dismissed.

Case challenges

(a) Recognition of “promoting for others”

The court's judgment acknowledged the evidence Moda Operandi presented, confirming its active engagement in the "promoting for others" service category, which is often a contentious issue in trademark protection. Legal practice has shown that it is challenging for companies to produce adequate evidence of trademark use in Class 35 services, such as "promoting for others," to retain their trademark registration.

In response, Li meticulously gathered evidence consisting of website images, Weibo account content, sales statistics, sales lists, and commercial invoices. This comprehensive evidence chain substantiated Moda Operandi's active commercial usage in providing services under Class 35, such as "promoting for others," and effectively communicated the company's business model to the court.

(b) Malicious intent of the opposing party

The opposition's initiation of the cancellation proceedings proved to be a long-lasting, four-year impediment, threatening Moda Operandi's business operations in China. The opposition repeatedly approached Moda Operandi's trademark agent during this period, seeking to exploit the trademark cancellation system to extort payment in exchange for withdrawing the cancellation application. Despite the National Intellectual Property Administration's endorsement of the trademark's registration, the opposition persisted with litigation. Li's presentation of the opponent's malicious intent influenced the judge's decision and contributed to Moda Operandi's successful defence of their vital trademark, ensuring the continuity of their e-commerce services in China.

Legal work

Tristan Li Yong of Globe-Law Lawyers provided the court with a detailed exposition of each piece of evidence submitted by Moda Operandi and demonstrated how the evidence collectively proved the company's trademark utilisation in "promoting for others" services within Class 35. He also clarified the company's business model for the court, illustrating that it epitomises the core of Class 35 services. This distinction was crucial in differentiating the services provided by Moda Operandi from standard retail or wholesale services.

Moreover, Li was instrumental in highlighting the opposition’s malicious intentions behind the cancellation request. Although such intent is not a decisive factor in maintaining a trademark, presenting the opponent's malice could significantly sway the judge's outlook, thus positively affecting the outcome for Moda Operandi.