Weekly China Trademark News Updates

July 20, 2022

1. The Shanghai High Court: strengthen commercial logos protection and serve to ensure trademark brand development strategy

On July 13, the Shanghai High Court held a press conference to release the “Opinions on Strengthening Intellectual Property Trial Work in the New Era to Provide Strong Judicial Services and Guarantee for the Construction of a Strong Intellectual Property City.“

The Opinions has 23 articles in four sections, of which the second section proposes specific measures to strengthen judicial protection of intellectual property rights and service guarantee for the construction of Shanghai’s “Five Centers” from the perspective of impartial justice. To us, Article 6 in Section 2 is worth particular notice:

6. Strengthen the protection of commercial logos and serve to ensure trademark brand development strategy. Severely crack down on trademark violations of counterfeit face masks, disinfectants and other anti-epidemic materials during the pendemic prevention and control period, increase damages and compensation for civil infringement in accordance with the law, and increase penalties for crimes. Strengthen judicial protection of famous and high-quality brands in accordance with the law, increase infringement costs, and ensure the implementation of trademark and brand development strategies. …Increase the judicial protection of geographical indications, accurately understand the rules for distinguishing the legitimate use of geographical names and geographical indications from infringements, and promote the organic integration of geographical indications with the development of industries with special characteristics, ecological civilization constructions, and rural revitalizations. …Properly handle conflicts between trademark rights and prior rights such as copyrights, enterprise name rights, and influential product (service) names, and resolutely curb bad faith trademark registration and trademark hoarding that are not intended for use in a scientific and reasonable manner, define the boundaries and protection scope of trademark rights.

2. The State Council held a press conference on intellectual property-related work statistics in the first half of 2022

The State Council Information Office held a press conference on July 12 in Beijing on the statistics of intellectual property-related work in the first half of 2022. The data shows that as of the end of June, China had 3.906 million valid invention patents, 40.545 million valid registered trademarks, more than 19,000 market entities approved to use special signs for geographical indications, and a total of 74,000 applications for the registration of integrated circuit layout designs.

Of particular concern is the expansion of the geographical indication industry. As of the end of June 2022, there were more than 19,000 market entities approved to use special signs for geographical indications in China, an increase of more than 6,000 year-on-year. The scope of the pilot reform of special marks for geographical indications has been expanded from 12 provinces to 20 provinces, involving 1,951 products, accounting for 82.9% of the total number of domestic geographical indication protection products.

The number of market entities using special signs for geographical indications has continued to increase, and the application and approval procedures for the use of special signs have been continuously optimized, which have played an important role in driving the development of local industries with special characteristic and promoting rural revitalization.

Recently, the General Affairs Office of the China National Intellectual Property Administration (CNIPA) released the “Notice on Launching the Second Batch of Reform Pilots for the Approval of the Use of Special Signs for Geographical Indications and Continuing to Deepen the First Batch of Reform Pilots,” with a view to further enhancing the facilitation of applications for the use of special signs for geographical indication products, continue to reduce the approval cycle in order to more efficiently meet the needs of geographical indication manufacturers to use the marks, so that the results of the pilot benefit a wider range of market players.

3. Zegna prevail in the second instance court to revoke both the first instance judgment and CNIPA decision

CONSITEX S.A., the owner of trademarks “ZEGNA,” “Ermenegildo Zegna,” and “Zegna” in China, filed an invalidation action against “JOHNZEGN” registered on “school bags, backpacks, pocket wallets, etc.” in Class 18 based on both relative and absolute grounds.

Neither the TRAB nor the Beijing IP Court supported Consitex, so Consitex appealed to the Beijing High Court.

The Beijing High Court has recently rendered the second instance judgment supporting the relative grounds and ruled to invalidate the disputed mark.

Regarding the marks’ similarity, the court found that:

First, the Disputed Mark’s approved goods constituted as identical or similar to the “handbag” approved for use for the Cited Mark 1, the “wallets” approved for use for the Cited Mark 2, and the “folders (leather)” approved for use for the Cited Mark 3 in terms of function and use, target consumers, and sales channels.

Second, the Disputed Mark is a word mark consisted of “JOHNZEGN,” of which “JOHN” is a common English name and “ZEGN” has no fixed meaning. The Cited Marks 1 to 3 were “ZEGNA,” “Ermenegildo Zegna,” and “Zegna” respectively. In comparison of the said marks, it can be seen that the “ZEGN” part of the Disputed Mark and the Cited Mark 1 to 3 differ only in an individual letter in text composition, and it was completely included in the Cited Mark 2. If they were used together on the same or similar goods as mentioned, it would be easy to cause the relevant public to be confused or mistaken regarding the source of the goods.

Third, according to the ascertained facts, before the Disputed Mark’s application date, the trademarks “Ermenegildo Zegna” and “Zegna” under the name of Consitex had obtained certain fame in China for “wallets” and other goods in Class 18. “Zegna” has formed a stable corresponding relationship with its Chinese translation “Jie Ni Ya in Chinese,” and the Disputed Mark’s registrant not only applied for the registration of the Disputed Mark that was similar to the said Cited Marks on identical or similar goods, but also used “Jie Ni in Chinese” in its corporate name without providing a reasonable explanation. Taking the above factors into consideration, it should be determined that the Disputed Mark and the Cited Marks 1 to 3 have constituted similar trademarks used on the same or similar goods. The first instance judgment erred and should be corrected. The relevant lawsuit claims of CONSITEX S.A. were established and this court supported their claims in accordance with the law.

It is noteworthy that, during the second instance court proceeding, the Disputed Mark had been published as being cancelled due to three-year non-use.

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Weekly China Trademark News Updates

July 5, 2022

1. Infringed the “Yibao in Chinese” trademark and unfairly competed with Yibao Company resulted in a damage of RMB 5.13 million

The plaintiff, China Resources C’estbon Beverage (China) Co., Ltd. (“C’estbon”), is one of the earliest domestic companies specializing in the bottled drinking water production, and its main business is the “Yibao in Chinese C’estbon” brand bottled drinking water. The defendant Jieshibao Company (formerly Yibao Cosmetics Company) was established on May 23, 2013, mainly engaged in cosmetics wholesale and retail.

C’estbon found that the defendant used logos such as “Yibao in Chinese,” “C’estbon,” and “C’estbon Yibao in Chinese” for online publicity, in business premises, participate in exhibitions and other commercial activities, and purchased, registered, and used “cestbon” as part of five domain names constituted as trademark infringement and amounted to unfair competition. C’estbon sued the defendant to the Shanghai Intellectual Property Court.

The court found that C’estbon started using the “Yibao in Chinese” mark on beverage related products in 1988, and the “C’estbon” trademark in 1992, and in 2002, it began using the Cited Marks in this case, the “” mark with the reg. no. 1789131 and the “” mark with reg. no. 1794139. Combined with the facts in the case, the court found it was sufficient to determine that the two Cited Marks were well-known to the relevant public in China and constituted as well-known trademarks. Jieshibao Company prominently used the Cited Marks on its official website, WeChat public account, business premises and other channels and claimed to be “Yibao Group,” “Yibao People,” “Yibao Company” and other acts constituted as trademark infringements. Jieshibao Company’s behavior of registering and using the name “Yibao in Chinese,” purchasing, registering and using the domain name involved in the case had the subjective intention of taking advantage of the goodwill of C’estbon’s Cited Marks, which was objectively sufficient to cause confusion among the relevant public and constitute unfair competition. Since it was difficult to determine the actual loss of C’estbon or the defendant’s profit from infringement, the court determined that the defendant should compensate C’estbon’s economic losses of RMB5 million (USD743,900) and reasonable expenses of RMB137,240 (USD20,382).

The defendant appealed the first instance judgement to the Shanghai High Court but was the appeal was rejected and the first instance court’s judgement was affirmed.

2. Chanel’s “COCO” trademark was infringed by a cosmetic company based in Guangzhou

According to a recent administrative penalty decision (Suiyun City Supervision Punishment [2022﹞00403]) published on the Credit China website, Zhenhuan Cosmetics (Guangzhou) Co., Ltd. (“Zhenhuan”) was fined for RMB6,000 (USD900) by Administration for Market Regulation of Baiyun District of Guangzhou City for infringing the exclusive right of Chanel’s registered “COCO” mark.

On April 7, 2022, enforcement officers of Administration for Market Regulation of Baiyun District of Guangzhou City inspected the business premises of Zhenhuan and found that: 1. The store held a valid business license and is a cosmetics sales company with a business area of ​​about 150 square meters; 2. On-site inspection revealed 18 bottles of “COCO Scent” fragrance anti-dandruff oil control shampoo and 59 bottles of “COCO Scent” fragrance moisturizing body wash were on sale. According to the sales price, the illegal business turnover of the parties involved totaled RMB2,378 (USD353).

CHANEL registered the “COCO” mark in Class 3 with reg. no. 150743.

Administration for Market Regulation of Baiyun District of Guangzhou City found that the said behavior of the parties constituted as trademark infringement according to Article 57(3) of the China Trademark Law, which states that “selling goods which infringe upon the right to exclusively use a registered trademark.” Zhenhuan was punished as follows: 1. Immediately stop the trademark infringement; 2. Confiscate and destroy 18 bottles of the fragrance anti-dandruff oil-control shampoo and 59 bottles of the fragrance moisturizing nourishing body wash that infringed the exclusive right of the “COCO” mark; 3. A fine of RMB6,000 (USD900).

3. The Regulations of Beijing Intellectual Property Rights Protection shall come into force on July 1, 2022

On March 31, 2022, the 38th meeting of the Standing Committee of the 15th Municipal People’s Congress passed the “Regulations of Beijing Intellectual Property Rights Protection,” which has come into force on July 1, 2022.

The Regulations focus on the prominent issues that restricted the high-quality development of intellectual property rights in the capital, and includes provisions on administrative protection, judicial protection, social co-governance, public services, and diverse dispute mediations. The formulation of the Regulations is an important measure for the city to implement the spirit of the important instructions on strengthening the protection of intellectual property rights, strengthen the protection of the entire chain of intellectual property rights, build a demonstration city for a country with strong intellectual property rights, and create an area with the best intellectual property rights. The development pattern and the promotion of high-quality development of the capital provide a strong legal protection guarantee.

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Weekly China Trademark News Updates

July 5, 2022

1. Giorgio Armani was awarded RMB 1 million in damages against trademark infringers

The Guangzhou Baiyun District Court made a first-instance judgment on April 1, 2022 in favor of GIORGIO ARMANI S.P.A. (“Armani”) against the defendants Guangzhou Lideng Watch Co., Ltd. (“Lideng”), Deng Zhiwen, Guangzhou Deng Wenshuai Trading Co., Ltd. (“Deng Wenshuai”) in a trademark infringement dispute, ordering the defendants to immediately stop the infringement, cancel the domain names of www.lidenamani.com and www.lidenamani.cn, and jointly compensate Armani for economic losses and reasonable expenses of RMB 1 million (USD149,000).

The defendants operated an online store to sell the alleged infringing products of belts, which are identical with the approved goods of Armani’s “ARMANI,” “Armani in Chinese” and “ ” trademarks. The said Armani marks enjoyed high fame and influence. The defendants Lideng and Deng Wenshuai claimed that its products were “originate from Italy,” which was likely to cause the relevant public to confuse or mistaken regarding the source of the alleged infringing goods when paying general attention, or believe that there was special connection between the source of the goods and Armani’s goods labeled with its marks. Moreover, the defendants’ marks “LIDENAMANI,” “Lideng Armani in Chinese,” and “” constituted as similar marks to Armani’s marks on identical or similar goods. The defendants’ marks had been declared void. Therefore, the defendants’ use of its marks constituted as trademark infringement.

The defendants Lideng and Deng Wenshuai advertised that the goods for investment promotion were leather products such as belts and leather shoes through their websites under the domain names of “lidenamani.com” and “lidenamani.cn” respectively. The defendants’ promoted products were identical with the approved goods of Armani’s “ARMANI” mark. The defendants, Liden and Deng Wenshuai, and the plaintiff, Armani, all operate businesses in the same industry. The defendants should be familiar with the market influence of the “ARMANI” logo and its commercial value. Therefore, the court found that the defendants Liden and Deng Wenshuai did not use the domain names “lidenamani.com” and “lidenamani.cn” justifiably.

Regarding the determination of the amount of compensation, in view of the fact that the period of sales data obtained by this court was three years, this sales data was lower than the cumulative number of comments on the sales pages, the number of group orders, and the number of transactions displayed on the store, which cannot fully reflect the transaction of the store involved. Armani requested to use the number of comments as sales reference and this court agreed. This court comprehensively considered the popularity of Armani’s registered trademarks involved (with high influence), its trademark numbers (three), the subjective fault of the three defendants (bad faith infringement), the form of infringement (production and sale of the accused infringing products through online platforms, joint Infringement), period (longer time), consequences (the product of the number of reviews of the defendants’ store and the cumulative sales number was RMB5.7 million (USD852,000), and the reasonable expenses paid by Armani to stop the infringement, the three defendants were jointly liable for trademark infringement and should compensate Armani for RMB 1 million (USD149,000) (including reasonable expenses).

2. Recycled beer bottle infringed the “TSINGTAO BEER in Chinese” mark owned by Tsingtao Beer

In March 2020, Tsingtao Brewery (Rongcheng) Co., Ltd. (“Tsingtao Brewery”) filed a complaint to the Weihai Market Supervision and Administration Bureau, reflecting that a company in Weihai (hereinafter referred to as the respondent) infringed the exclusive rights to the registered trademarks of “Tsingtao Beer in Chinese” and “TSINGTAO.” Tsingtao Brewery has registered the “Tsingtao Beer in Chinese” mark and the “TSINGTAO” mark in Class 32 for “beer” and other goods. Tsingtao Brewery’s bottles all embossed with “Tsingtao Beer in Chinese” and “TSINGTAO” on the neck of bottles. The respondent used the recycled bottles as its beer containers for beer that he produced for a long period of time. Among the respondent’s beers, the respondent sold the 600ml beer bottles with its own packaging and trademarks without covering the “Tsingtao Beer in Chinese” and “TSINGTAO” marks on the neck of the bottles.

In the process of beer production and sales, the respondent used recycled beer bottles with embossed texts of “Tsingtao Beer in Chinese” and “TSINGTAO” as its own beer containers but fails to effectively block the embossed words “Tsingtao Beer in Chinese” and “TSINGTAO” on the bottle neck. Despite that it had placed its own trademark and packaging, such acts were likely to cause the relevant public to misunderstand the source of the goods, or mistakenly believe that the respondent was related to Tsingtao Brewery. The respondent’s acts infringed upon Tsingtao Brewery’s trademark rights to its “TSINGTAO” trademark. The respondent was ordered to immediately stop the infringement and was imposed an administrative penalty of RMB30,000 (USD44,814).

3. The Shanghai High Court, the Shanghai People’s Procuratorate, and the Shanghai Public Security Bureau co-signed the “Regulations on Adjusting the Jurisdiction of Intellectual Property Criminal Cases in Shanghai,” the Shanghai High Court issued the “Regulations on Adjusting the Jurisdiction of Shanghai Courts in Intellectual Property Civil and Administrative Cases,” both of which will come into force on July 1, 2022

The partial provisions are summarized as follows.

The Shanghai Intellectual Property Court has jurisdiction over first-instance civil and administrative cases involving patents, new plant varieties, layout designs of integrated circuits, trade secrets, computer software ownership, infringement disputes, disputes over the recognition of well-known trademarks, and monopoly disputes. Act as the appeals court for administrative actions of the local people’s government’s decision involving copyrights, trademark rights, unfair competition, etc., and for administrative actions of the Customs involving trademark rights, copyrights, and patent rights.

The Shanghai High Court has jurisdiction over first-instance intellectual property civil cases and major and complex first-instance intellectual property administrative cases that have significant influence within its jurisdiction. First-instance for cases involving more than RMB200 million (USD29.8 million) in claims, or invention patents, utility model patents, new plant varieties, integrated circuit layout designs, trade secrets, computer software ownership, infringement disputes and monopoly disputes involving foreign affairs, Hong Kong, Macao, and Taiwan, and where one of the parties is domiciled outside the jurisdiction with more than RMB100 million (USD 14.9 million). Other first-instance intellectual property civil cases with more than RMB 5 billion (USD747 million) in claims.

First-instance civil and administrative intellectual property cases heard by the district people’s courts should be appealed to the Shanghai Intellectual Property Court. Cases heard by the Shanghai Intellectual Property Court should be appealed to the Shanghai High Court, except for cases that are appealed to the Intellectual Property Tribunal of the Supreme People’s Court according to the law.

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Weekly China Trademark News Updates

June 28, 2022

1. SEIKO won a RMB 10 million trademark infringement and unfair competition lawsuit against three infringers

The Guangzhou Intellectual Property (“IP”) Court rendered a favorable decision for SEIKO HOLDINGS CORPORATION (“Seiko”) against Guangxi Tianrui Precision Electronics Co., Ltd. (“Guangxi Tianrui”), Hunan Tianrui Precision Technology Co., Ltd. (“Hunan Tianrui”), and Guangzhou Qianding Import and Export Trading Co., Ltd. (“Guangzhou Qianding”) on trademark infringement and unfair competition disputes. The court held that the defendants infringed Seiko’s trademark and their acts amounted to unfair competition, and the defendants were ordered for RMB10 million (USD1.49 million) in damages.

Seiko’s Trademarks

Seiko owns the “SEIKO” and “SEIKO in Chinese” trademarks in Class 14 for clocks and watches. Guangzhou Qianding marked “JAPAN TIMERTSE-SEIKO,” “Made by Japan Tianrui Seiko Co., Ltd.” and other logos on the watch movements and product packaging boxes of the accused infringing products sold by “Qianding International Movement Sales Department.” The defendants jointly operated www.timerisseiko.com website and used the “TRSEIKO” logo on the relevant pages. Guangxi Tianrui use the “TRSEIKO” logo in a show in Shenzhen. Guangxi Tianrui and Hunan Tianrui both prominently used “TRSEKO” on its background walls. Both trade names of Guangxi Tianrui and Hunan Tianrui consisted of “SEIKO in Chinese.”

The first instance court held that the defendants were liable for trademark infringement and unfair competition. The defendants appealed to the Guangzhou IP Court. The Guangzhou IP Court affirmed the lower court’s decision that the defendants infringed Seiko’s trademarks and unfairly competed with Seiko. Regarding trademark infringement, the Guangzhou IP Court found that the defendants’ prominent use of “JAPAN TIMERTSE-SEIKO” and “TRSEIKO” was trademark use. The “JAPAN TIMERTSE-SEIKO” mark and the “TRSEIKO” mark constituted as similar marks with the “SEIKO” trademark. The alleged infringing products of the defendants were watch movements, which were of the same kind of goods as those approved for Seiko’s prior registered trademarks. Regarding unfair competition, the court reasoned that “SEIKO in Chinese” had certain reputation as a corporate name. Additionally, “SEIKO” also had certain reputation. Guangxi Tianrui and Hunan Tianrui were both competitors and should’ve known about Seiko’s “SEIKO in Chinese” mark, Seiko’s trade name, and its reputation and influence in the industry. However, the defendants insisted on registering and using Chinese and English corporate names consisting of “SEIKO” and “SEIKO in Chinese,” which was likely to cause others to believe that the alleged infringing products sold by the defendants came from Seiko, or that there were certain association between the defendants and Seiko. The defendants’ acts constituted as unfair competition and the defendants shall be jointly liable for their infringements.

2. The Supreme Procuratorate overruled the “M & MONALISA & Design” trademark that was previously invalidated

The decade-long controversy surrounding the “M & MONALISA & Design” mark (“Disputed Mark”) has recently been concluded. The Beijing High Court, acting as a retrial court, revoked the first and second instance decisions and affirmed the CNIPA’s decision that the goods of cooking utensils, pressure cookers (electric Pressure cookers), toilets (flush toilets), and toilets for the Disputed Mark owned by Mona Lisa Group Co., Ltd. (“Mona Lisa Group”) should be cancelled while the rest of the goods maintained.

Disputed Mark	Cited Mark

In November 2004, the Mona Lisa Group filed an application for the “M & MONALISA & Design” in Class 11 for lights; fans (air conditioning); faucets; lavatories (flush toilets); toilets; water purification equipment and machines; heaters and was approved in September 2008. In March 2012, Guangzhou Mona Lisa Building Materials Co., Ltd. (“Building Materials Co.”) and Guangzhou Mona Lisa Sanitary Ware Co., Ltd. (“Sanitary Ware Co.”) filed an opposition against the Disputed Mark. The TRAB held that the Disputed Mark constituted as a similar mark with the “Mona Lisa in Chinese MonaLisa” mark and that the Disputed Mark’s designated goods for cooking utensils, pressure cookers (electric pressure cookers), toilets (flush toilets), and toilets shall be cancelled, and the rest of the goods maintained. The Mona Lisa Group appealed and the Beijing First Intermediate Court overruled the TRAB’s decision. The TRAB, Building Materials Co., and Sanitary Ware Co. appealed. In June 2016, the Beijing High Court rendered a second instance decision that rejected the appeal and affirmed the first instance court ruling. Subsequently, the the Building Materials Co. and the Sanitary Ware Co. petitioned to the Supreme Procuratorate for review. The Supreme Procuratorate reviewed the case and filed a protest to the Supreme Court in accordance with the law. Accordingly, the Supreme Court ordered the Beijing High Court to retry the case. In June 2022, the Beijing High Court revoked the first and second instance decisions and held that there were errors in the determination of the facts and the application of the law and shall be revoked.

The question presented in the retrial was the issue of similar products. Whether “bathroom (flush toilet), toilet” goods approved and used by the Disputed Mark and the “steam bath equipment, sauna equipment, portable Turkish bath, bathroom fixtures” have functions and uses of bathroom equipment. The court reasoned that the said items existed in the bathroom decoration market and were generally placed in the same or adjacent sales area. In terms of consumers, their consumer groups were consumers who have the need to buy bathroom equipment. Therefore, the items shared identical functions, uses, sales channels, and consumers, and shall constitute as similar goods. Regarding the issue of similarity, the Disputed Mark was composed of the letters “M”, “MONALISA” and a design, and the cited mark was composed of the Chinese characters of “Mona Lisa in Chinese” and the letters “Mona Lisa.” Although the letter M in the Disputed Mark occupied a more prominent area of ​​the mark, both the Disputed Mark and the cited mark contained the letter “MONALISA,” which were identical in letter composition. The Chinese translation of “MONALISA” in the Disputed Mark was “Mona Lisa in Chinese.” From the pronunciation point of view, the Disputed Mark would be pronounced as “Mona Lisa in Chinese” by the relevant public, which was identical with the cited mark’s “Mona Lisa in Chinese” Therefore, the Disputed Mark and the cited mark constituted as similar marks in terms of composition, pronunciation and other elements that formed the marks.

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Weekly China Trademark News Updates

June 22, 2022

1. “Da Yue Cheng” won RMB 1.24 million in a trademark infringement retrial case against “Jianfa Da Yue Cheng”

The Beijing High Court recently handed down a trademark infringement retrial decision for China National Cereals, Oils and Foodstuffs Corporation (“COFCO”) and Joy City Commercial Management (Beijing) Co., Ltd. (“Joy City”) against the respondent Yinchuan Jianfa Group Co., Ltd. (“Jianfa”), Ningxia Yuecai Commercial Group Co., Ltd. (“Yuecai”) and Beijing Soufun Technology Development Co., Ltd. (“Soufang”).

Disputed Mark	Cited Mark
Reg. No. 18047215 Class 35 Reg. No. 30652633 Class 36	Reg. No. 7209417 Class 35 Reg. No. 6345086 Class 36

The first question in dispute was whether Jianfa and Yuecai should stop using the “Jianfa Da Yue Cheng” and “Da Yue Cheng” logos for “commercial house sales, real estate management, real estate leasing, and selling services for others. The court found that that COFCO and Joy City’s trademark rights were valid and had the necessary rights to sue the respondents. Yuecai’s trademarks “Jianfa Da Yue Cheng” in with reg. nos. 18047215 and 30652633 were invalidated and deemed as never existed on the trademark registry, which rendered the question of trademark right dispute moot. COFCO and Joy City’s evidence can prove that the Jianfa and Yuecai’s use of “Da Yue Cheng” and “Jianfa Da Yue Cheng” on its WeChat public account, shopping mall posters and other publicity materials constituted as an infringement of the trademark “Da Yue Cheng” with reg. no. 7209417 owned by COFCO and Joy City. COFCO and Joy City’s evidence can also prove that Jianfa and Yuecai used the logos of “Da Yue Cheng” and “Jianfa Da Yue Cheng” in the commercial activities such as the sales, operation and publicity of the real estate project involved, which constituted as an infringement against COFCO and Joy City’s trademark “Da Yue Cheng” with reg. no. 6345086. Jianfa and Yuecai shall bear the legal responsibility for stopping infringement, compensating for losses and eliminating the impact. The claims of Jianfa and Yuecai that the trademarks “Da Yue Cheng”, “Jianfa Da Yue Cheng” and “Da Yue Cheng” were obviously different and did not constitute similar trademarks, and the fact that the registered trademark of Yuecai was declared invalid was not tried in the second-instance litigation, so this court does not have the right to review such claims. Moreover, the claim that the order to stop using the logos of “Da Yue Cheng” and “Jianfa Da Yue Cheng” will cause harm to social and public interests lack factual and legal basis and cannot be supported. COFCO and Joy City requested for an order to stop only the commercial activities carried out by Jianfa and Yuecai for the purpose of obtaining profits. The claim that the use of “Da Yue Cheng” and “Jianfa Da Yue Cheng” by Jianfa and Yuecai for the purpose of the public and resident were not within the scope of this case.

The second question in dispute was whether Jianfa and Yuecai should compensate COFCO and Joy City for economic losses of RMB1.46 million (USD218,141). The court found that although the retrial determined that the use of the “Jianfa Da Yue Cheng” logo by Jianfa and Yuecai constituted infringement, COFCO and Joy City did not provide evidence to prove their actual losses from the infringement, and no evidence was provided to prove that the benefits obtained by Jianfa and Yuecai, and the use of the “Jianfa Da Yue Cheng” logo in the “selling for others” service caused more damages to COFCO and Joy City than the amount of compensation determined in the first-instance judgment. Considering the popularity of the “Da Yue Cheng” trademark, the location, scale and price of the real estate, the nature of infringement, circumstances, and subjective faults of Jianfa and Yuecai, as well as the use of “Jianfa Da Yue Cheng” and “Da Yue Cheng” had basically the same infringing activities, the court affirmed the compensation amount of RMB1.2 million (USD179,294) determined in the first-instance judgment, and the execution of the payment had been completed. The claims of COFCO and Joy City for compensation of RMB1.46 million (USD218,141) lacked factual and legal basis, and were not supported. At the same time, the claims of Jianfa and Yuecai that the amount of compensation determined in the first-instance judgment was too high also lacked basis and were not supported.

In addition, there is no clear evidence to prove that SouFun had a cooperative relationship with Jianfa and Yuecai, and directly engaged in and participated in the joint sale of the real estate projects involved, and COFCO and Joy City did not take down the relevant alleged infringement information notice on the website of SouFun prior to the first-instance, thus, COFCO and Joy City claimed that SouFun assisted Jianfa and Yuecai to carry out the infringement, which constituted the claim of assistance in infringement, lacked factual and legal basis and could not be supported according to the law. However, as of the first-instance trial date, SouFun had not performed its reasonable duty of care when it was known that the relevant information was suspected of infringement to promptly delete or temporarily remove the information that may put COFCO and Joy City in further risk. Soufun was at fault for this and should bear the legal responsibility to delete the relevant infringing information and eliminate the impact.

The first-instance judgment stated that SouFun should immediately delete the information about the real estate involved with the above-mentioned logos on the SouFun website it operated, and that JianFa, Yuecai, and SouFun should jointly perform a written statement in a prominent position on the homepage of SouFun.com and Sina Leju.com in order to eliminate the adverse impact on COFCO and Joy City, as well as the judgment that Jianfa and Yuecai should compensate COFCO and Joy City for a reasonable expenditure of RMB40,000 (USD6000) and the above judgment was not inappropriate. The said first-instance court orders have been executed and this court affirmed.

2. Penfold successfully invalidated a squatted mark

The Beijing High Court recently dismissed a trademark invalidation case involving the appellant Jinan Chuangqun Trading Co., Ltd. (“Chuangqu”), the appellee the CNIPA, and the third party in the original trial, Southcorp Brands Pty Limited. The appeal was dismissed, and the original judgment was affirmed.

Disputed Mark	Cited Marks
	CM 1  CM 6  CM 7  CM 8  CM 9  CM 10  CM 11

The dispute in this case was whether the Disputed Mark and the Cited Marks 1, 6 to 11 constitute similar trademarks used on the same or similar goods under Articles 30 and 31 of the 2013 Trademark Law. Since Chuangqun stated in the original trial that it had no objection that the Disputed Mark and the approved goods of the Cited Marks 1, 6 to 11 constituted as identical or similar goods, the key question of this case was whether the Disputed Mark constituted as a similar mark to the Cited Marks 1, 6 to 11. Here, the Disputed Mark is a word mark consisting of “Ben Fu Bin Zhi in Chinese”. The Cited Mark 1 composes of “Ben Fu in Chinese”; the Cited Mark 6 composes of “Ben Fu Ge Lan Qi in Chinese”; the Cited Mark 7 composes of “Ben Fu Kolan Shan in Chinese”; the Cited Mark 8 composes of “Penfolds Luo Shen Shan Zhuang in Chinese”; the Cited Mark 9 composes of “PENFOLDS”; Cited Mark 10 and 11 compose of artistically processed “penfolds.” The Disputed Mark “Ben Fu Bin Zhi in Chinese” completely included the Cited Mark 1 “Ben Fu in Chinese” The Cited Marks 6 to 8 all contains “Ben Fu in Chinese” The Disputed Mark sounded similar to “PENFOLDS” in the Cited Marks 9 to 11. The Disputed Mar was similar to the Cited Marks 1, 6 to 11 in terms of text composition, pronunciation, meaning, etc. If they were used together on the same or similar goods, the relevant public will easily believe that the source of goods came from one entity or that the two entities were associated when paying general attention. The evidence submitted by Chuangqun was also insufficient to prove that before the filing date of each Cited Mark, the Disputed Mark had been used to a certain degree and was sufficiently well-known to be distinguishable from the Cited Mark. Therefore, the Disputed Mark and the Cited Marks 1, 6 to 11 constituted as similar marks used on identical or similar goods. The registration of the Disputed Mark violated Articles 30 and 31 of the 2013 Trademark Law and shall be declared invalid. The original judgment was correct, and Chuangqun’s relevant grounds for appeal could not be established and should not be supported

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Weekly China Trademark News Updates

June 14, 2022

1. Haier was awarded RMB 3 million: the applicable limitations of trademark rights exhaustion system

Haier Group is a well-known Chinese home appliance corporation. Since 1984, its “Haier in Chinese” and “Haier” brands have gained a high reputation worldwide. Qingdao Haishang Intellectual Property Management Consulting Co., Ltd. (“Haier Group”), as the intellectual property management company of “Haier in Chinese” and “Haier” brands, sued Wuxi Smile IOT Technology Co. Ltd. (“Smile”) on the grounds of trademark infringement and unfair competition. Haier Group claimed that Smile refitted “Haier” products without authorization, and affixed its “Si Mai Er in Chinese,” “smile and design” logos for sales. At the same time, Smile used large and bold fonts in prominent positions to promote its products as a “Smile-Haier cooperative product” on its official website, Taobao, and other sales channels claiming to have reached a strategic cooperation with Haier Group and other false statements. In addition, Smile also defamed the functionality of Haier’s Beaver App for its commercial washing machines.

The court found that 1) regarding whether there is a competitive relationship between the two parties: the legislative purpose of the Anti-Unfair Competition Law is to encourage and protect fair competition, maintain market competition order, and protect the legitimate rights and interests of operators and consumers. Competitive relationships were not only limited to substitute relationship between identical or similar goods and services, but also existed as a relationship between damaging and being damaged to the interests of market competition. In this case, although Haier Group was not a manufacturer of shared washing machines and other products, as a trademark owner, it had the right to authorize others to mark its trademarks on products and enjoy legal rights and interests in the products marked with its trademarks. Smile was a retailer and service provider of shared washing machine. Although the business activities of the two parties are neither identical nor similar and there was no substitute relationship, Smile’s modification, sale, and publicity of the shared washing machines and other products marked with Haier Group’s trademark without authorization would impact Haier Group’s trading opportunities, competitive advantages, and other market competition interests, so there was a competitive relationship between the two parties.

2) Regarding trademark infringement and unfair competition: First, Smile modified the washing machines, dryers, and shoe washing machines marked with the trademark of Haier Group, and posted “Si Mai Er in Chinese,” “smile and design” logos and QR codes, and subsequently put these modified products for retail or for operation purposes, which had affected Haier Group’s trademark recognition function, quality assurance, and reputation-bearing functions, resulting in damages to the Haier Group’s trademark rights. Regarding the exhaustion of rights claimed by Smile, the court found that the premise of the application of the principle of exhaustion of trademark rights was that the re-sale or use is a marketing behavior that conforms to market laws and consensus and will not damage the legitimate trademark rights of the trademark owner. Smile’s behavior of selling and operating modified products had damaged the relationship between trademark owners, its goods, and trademarks, damaged the source identification and quality assurance functions of Haier Group’s trademarks, which may damage the reputation of the Haier Group’s trademarks. Thus, principle of exhaustion of trademark rights should not be applied.

Second, Smile promoted that it had “reached a strategic cooperation with Haier” and had “joint cooperation with Haier” on its website, Taobao, TikTok , and WeChat public accounts, and published the Haier Group’s trademark products on its website marked “Simile-Haier cooperation products.” Although Smile rebutted by showing it was the Haier Group’s retailer, it did not prove its modifications were approved by the Haier Group. Thus, Smile’s promotions were not true and would likely to cause confusion to the relevant public to believe that the two parties had special connections. Smile’s acts constituted as false advertisements. Meanwhile, Smile has repeatedly emphasized “Haier washing machine” in its publicity, which would easily make the relevant public into believing that its modifications were approved by the Haier Group or has a specific connection with the Haier Group, causing confusion and misunderstanding to the relevant public. Smile’s acts constituted as confusion actions as stipulated in Article 6(4) of the Anti-Unfair Competition Law. Finally, Smile’s description of the “Mr. Beaver APP” was false and inconsistent with the facts, and had the subjective intention of slandering and derogating the Haier Group’s business reputation and product reputation, which was enough to cause relevant consumers to have a wrong understanding of the “Mr. Beaver APP,” and damaged the business reputation and goods reputation of the Haier Group, which constituted as commercial slander.

​​Accordingly, the court ordered Smile to immediately stop its trademark infringement and unfair competition and compensate Haier Group for a total of RMB3 million (USD445,000).

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Weekly China Trademark News Updates

June 8, 2022

1. The CNIPA released the “Notification on Public Solicitation of Comments on the Measures for the Administration and Protection of Collective and Certification Marks (Draft for Comment)”

In order to regulate the registration and use of collective marks and certification marks, maintain fair competition in the market order, guide the registrants of collective marks and certification marks to register ethically, exercise their rights appropriately, and protect their rights effectively, clarify the boundaries of rights while taking into account the legal use of trademarks and the legitimate use of others, promote the combination of management and promotion by administrative organs, comprehensively implement policies, and help local industry development, the CNIPA revised the “Measures for the Administration and Protection of Collective and Certification Marks” (“Measures”) and released the draft for comments of the Measures on June 7.

The current Measures came into force on June 1, 2003, with a total of 23 provisions. The revised Measures has a total of 35 articles, of which 13 are amended and merged of the earlier provisions, and 21 are newly added. The main modifications are as follows:

• Amend the name of the regulations and improve the legislative purpose: revise the name of the Measures to the Measures for the Administration and Protection of Collective and Certification Marks, so as to highlight the important role played by collective trademarks and certification marks in promoting the development of local special industries and strengthening protection.
• Further standardize the behaviors of application for registration: emphasize that groups and associations established for public welfare or other non-profit purposes can be applicants for collective or certification marks.
• Strengthen the management requirements for registrants and users: registrants should implement daily management in accordance with the use management rules; and users should ensure that the products bearing the collective marks and certification marks meet the quality requirements of the use management rules.
• Add regulations on the registration and fair use of trademarks containing geographical names: clarify that signs should have distinctive features for easy identification; at the same time, considering that geographical names are public resources, it is stipulated that collective marks and certification marks containing geographical names shall not infringe public interests.
• Promote the use of trademarks and improve the level of public services.
• Improve administrative protection and strengthen punishment measures.

2. A mark composed of English letter and numbers is invalidated for lack of distinctiveness

The Beijing High Court recently made a second-instance judgment on the administrative dispute over the invalidation of the “B-6000” trademark with reg. no. 13902341 by dismissing the petition to appeal and upheld the invalidation of the Disputed Mark on goods other than “stationery.”

 Disputed Mark

The Disputed Mark was filed by Antonio (HK) Co., Limited (“Antonio Company”) on January 13, 2014, and was approved for registration on April 21, 2015 for use on “stationery; stationery or household glue; stationery or household tapes; office or household starch pastes (adhesives),” and other goods in Class 16. On December 2, 2019, the CNIPA found that the registration of the Disputed Mark on part of the designated constituted the circumstance referred to in Article 11(i)(1) of the 2013 Trademark Law. The CNIPA therefore maintained “stationery” and invalidated other goods. Antonio Company appealed to the Beijing Intellectual Property (“IP”) Court.

The Beijing IP Court found that the distinctive part the Disputed Mark “B-6000” was similar to standard marking of a product model, and deviated from conventional trademark presentations. From the perspective of the relevant public’s habit of recognizing product models, the Disputed Mark would easily be identified as a product model and not as a trademark. The CNIPA’s decision was affirmed. Unsatisfied, Antonio Company further appealed to the Beijing High Court.

The Beijing High Court found in the final binding judgment that the Disputed Mark consisted of capital English letter, symbol and numbers “B-6000” covered in black solid squares, when used on “sealing compounds for stationery; gluten for stationery or household; adhesive (glue) for stationery or household; office or household starch paste (adhesive); stationery or household self-adhesive tape; stationery or household glue; stationery or household glue; stationery tape.,” the Disputed Mark was likely to mislead relevant consumer to believe that it represented a model of the approved goods, and could not be used to distinguish the source of goods, namely, thus lacking of distinctiveness. The existing evidence provided by Antonio Company was not enough to prove that the Disputed Mark has acquired secondary meaning. The CNIPA decision and first instance judgment have not erred in finding the disputed trademark constituting the circumstance referred to in Article 11(i)(1) of the 2013 Trademark Law, and the appeal should be dismissed.

3. Claire’s successfully invalidated a squatted mark

Disputed Mark

The “GUERISSON 9·complex and Design” mark with reg. no. 14805451 in Class 3 was filed for registration on June 6, 2014 and approved on August 21, 2017 after opposition for use on “polishes; bath cosmetics; skin lightening creams; beauty masks; cosmetics sets; cosmetics; skin cosmetics; sunscreens.” The Disputed Mark’s original registrant TAK KICHUL assigned the Disputed Mark to KIM JAECHUL in November 2017, who further assigned to Beauty China Inc Limited (“Beauty China”) in December 2018.

CLAIRE’S KOREA CO., LTD. (“Claire’s”) filed an invalidation in early 2018 and the CNIPA invalidated the Disputed Mark in accordance with the second paragraph of Article 15 of the 2013 Trademark Law. Beauty China appealed to the Beijing IP Court. The Beijing IP Court affirmed the CNIPA’s decision. Beauty China appealed to the Beijing High Court.

The Beijing High Court found that the evidence in the case can prove that before the application date of the Disputed Mark, Claire’s had applied for the registration of the “GUERISSON 9 complex” logo in Korea and used it on cosmetic products, and cosmetics such as creams marked with the logo had been sold into China through overseas purchasing and other forms of purchase, so the relevant public was aware of Claire’s logo used on cosmetic products. Evidence such as the sales agency contracts signed between Claire’s and certain commercial company and tax bills showed that before the application date of the Disputed Mark, Claire’s had made active and substantive preparations for the launch of its cosmetic products marked with its said logo into the Chinese market.

Second, before the application date of the Disputed Mark, Claire’s signed exclusive sales agreements with a commercial company, stipulating that the latter would sell Claire’s “GUERISSON” brand face cream and other products as an agent in mainland China. In the agreements, “GUERISSON” facial cream products were labeled with the “GUERISSON 9 COMPLEX and Design” mark. The original registrant of the Disputed Mark, TAK KICHUL, engaged in the cosmetics industry and worked for that commercial company, so he should have known about the mark use by Claire’s. The “GUERISSON 9.complex” mark was not an inherent word and has no fixed meaning and has firstly been used by Claire’s on cosmetics and other goods. TAK KICHUL did not provide a reasonable explanation for applying for the registration of the Disputed Mark. Comprehensively considering the specific circumstances of this case, it can be determined that TAK KICHUL should constitute a specific related person who has a contractual, business, or other relationship with Claire’s.

The Disputed Mark “GUERISSON 9·complex and Design” completely includes the “GUERISSON 9 complex” logo previously used by Claire’s, which constituted as a similar trademark. The Disputed Mark’s approved use for bath cosmetics, skin lightening creams, beauty masks, cosmetic sets, cosmetics, skin cosmetic agents, sunscreen agents, cosmetic vanishing creams, cosmetic oils and other goods falls into the same class of goods as Claire’s prior used cosmetic products. The leather protectant (polishing agent) goods approved and used by the Disputed Mark and the cosmetic product prior used by Claire’s have a high degree of overlap in consumer groups and sales targets and should also be identified as similar goods. Without the authorization of Claire’s, TAK KICHUL applied for the registration of the Disputed Mark that was similar to the “GUERISSON 9 complex” logo prior used by Claire’s on identical or similar goods, which has constituted as the circumstances referred to the second paragraph of Article 15 of the 2013 Trademark Law. Hence, the Disputed Mark should be invalidated on all of the designated goods.

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Weekly China Trademark News Updates

June 1, 2022

1. Manufacturers or sellers who use decorative patterns on products should reasonably avoid other’s trademarks

On May 9, 2022, the Supreme People’s Court made a final judgment in a trademark infringement case for Fila Sports Co., Ltd. (“Fila”) against Pengcheng Leather Shoe Store (“Pengcheng Leather”). The Court vacated the first and second instance judgments and ordered the defendant to immediately stop trademark infringement.

The Court found that the accused infringing product in this case was a black sneaker with a “” pattern (“Disputed Mark”) on the heel. First, compare the Disputed Mark with the  mark (“Cited Mark”) with reg. no. 163333, both are English logos containing four letters, of which the two middle letters are exactly the same, and the first and the fourth letter only has a small horizontal difference. There were only minor differences in text composition, fonts, design style, and overall appearance. Second, although Pengcheng Leather marked the logos of “Ri Tai Leather Shoes” and “Ritai” on the shoe boxes, shoe covers, and store recruits, such use did not affect the nature of its use of the Disputed Mark. For the alleged infringing product, the Disputed Mark is not a descriptive feature with special meaning, and the relevant public takes general attention would have difficulty to associate it with its product features or the fact that it’s owned by Pengcheng Leather. The Disputed Mark conveys to the relevant public as an identification function of the product and sources, but not a simple decorative pattern. Decorative patterns should reasonably avoid others’ trademarks. Considering the use of the alleged infringing act, the difference between the Disputed Mark used in the product and the Cited Mark, as well as the distinctiveness and popularity of the Cited Mark, and taking the general attention of the relevant public as the standard, it is easy for the relevant public to misidentify or misunderstand that the source of the alleged infringing goods either came from Fila or had a specific connection with Fila, which may easily cause confusion. The alleged infringement constituted as an infringement of Fila’s trademark right.

2. Unauthorized use of the “Mercedes-Benz in Chinese” mark on auto parts constitutes infringement

The Shanghai Intellectual Property Court recently decided a case involving the appellant Shanghai Tonghe Auto Parts Co., Ltd. (“Tonghe”), the appellee Daimler AG (“Daimler”), and the original defendant Shanghai Tongzhi Auto Parts Co., Ltd. (“Tongzhi”) over a trademark infringement dispute. The court affirmed the first instance court’s judgment.

The first instance court held that Tonghe sold brake pads, filters, pulleys and other auto parts in its stores using the three-pointed star logo, “Mercedes-Benz,” “MERCEDES-BENZ,” and other logos. These said logos and marks were nearly visually identical with Daimler’s, which constituted as identical marks. Compare the “Mercedes-Benz” mark used by Tonghe with Daimler’s “MERCEDES-BENZ” trademark, the only difference was letter case. There was no visual difference between the two marks. Additionally, Tonghe purchased the “three-pointed star” mark from a third-party and affixed them to the outer packaging of the auto parts it sold, which played the role of identifying the source of the goods and constituted as trademark infringement. The labels of Tonghe’s products were marked with the word “Mercedes-Benz in Chinese” and Tonghe’s logo and QR code. Such use on the same goods as Daimler’s could easily cause confusion and mistaken regarding the source of goods, which also can be considered as using an identical mark with Daimler’s registered trademark and constituted as trademark infringement. Finally, the existing evidence was not enough to prove that Tongzhi and Tonghe constituted joint infringement. Accordingly, the first instance court held that Tonghe should immediately stop trademark infringement, publish a statement to eliminate negative impact, and compensate Daimler for a total of RMB800,000 (USD119,500) in economic losses and reasonable expenses. The Shanghai Intellectual Property Court affirmed.

3. The Hangzhou Internet Court publicly hears a case involving “users publishing infringing NFT works”

A few days ago, the Hangzhou Internet Court held a public hearing regarding the dispute between the plaintiff Qi Ce and the defendant a technology company infringing the right to disseminate the work information network. The decision was made in the court ordering the defendant to immediately delete the “Fat Tiger Vaccine” NFT work published on the platform involved, and to compensate Qi Ce for economic losses and reasonable expenses of RMB4,000 (USD600).

The court found that the “Metaverse” platform operated by the defendant as an NFT digital work transaction service platform failed to fulfill its duty of care for reviewing the products sold on its platform, which was objectively at fault. The NFT involved in the case has a Weibo watermark, and the original author of the work involved was indicated in the author column, which indicated obviously infringement. Under the premise that the user constituted infringement, the platform involved failed to fulfill its obligation of review. The defendant knew and should have known that the network user infringed the information network dissemination right but failed to take necessary measures to effectively stop the infringement in a timely manner. There was subjective fault on the defendant and should bear the corresponding as an accomplice.

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Weekly China Trademark News Updates

May 25, 2022

1. John Deere successfully fends off trademark infringers and won RMB3 million in damages

The Shandong High Court recently rendered a trademark infringement judgment for Deere & Company (“Deere”) against Rongcheng Haishan Machinery Manufacturing Co., Ltd. (“Haisha”), Songyuan Aorui Haishan Machinery Co., Ltd. (“Aurui”), Jilin Mushen Machinery Co., Ltd. (“Mushen”), and Shandong Weitai Heavy Industry Technology Co., Ltd. (“Weitai”). The court revoked the first instance judgment and ordered the defendants to immediately stop infringement acts and compensate Deere for economic losses and reasonable expenses of RMB300 million (USD451,000).

First, the defendants argue that the use of the color combination on the disputed goods were decorative use and not trademark use. The court, however, found that the defendants’ use constituted as trademark use. The court reasoned that considering the color combination mark in this case and the specific use, namely, the disputed goods use the same color combination on the car body in the same way, and the bright yellow-green color combination covering the disputed goods as a whole could had shown a profound overall visual effect to the general public. Such use could establish a stable connection between the disputed mark and the disputed goods, and played a role in identifying the source of the goods, which was a trademark use.

Second, the court found that the components, combination, and usage of the “green body, yellow wheels” on the harvest cart had no difference with the color combination trademark with reg. nos. 4496717 and 13517702. Therefore, the defendants used the same mark as the cited color combination trademark.

Third, the defendants’ use was likely to cause confusion and misunderstanding by the relevant public. Considering the particularity of the use of the color combination trademark involved in the case by covering the car body, when the relevant public paid general attention, they will first notice the color and combination method covering the entire body of the disputed goods, and then pay attention to the logo and other marks on the body. Under such circumstance, Deere’s cited color combination trademarks had a high reputation and distinctiveness after publicity and use and can establish a stable relationship with Deere. The defendants’ use would cause the relevant public to mistake the source of the disputed goods. Even if the relevant public knew that the disputed goods were produced and sold by the defendants based on the information marked on the goods, the defendants’ use was likely to cause the relevant public to mistakenly believe that there was a specific connection between the disputed goods and Deere’s goods, which damaged the cited marks’ function to distinguish the source of the goods, and infringed Deere’s trademark rights.

Finally, the protection scope of trademark rights is not limited to the trademark publication. A color combination trademark is a type of trademark that is contrasted with a graphic trademark. The constituent elements of a color combination trademark are only the combination of colors. The constituent elements and specific ways of applying a color combination trademark shall be selected by the trademark applicant and reviewed by the Trademark Office. However, the color combination trademark is subject to the specific expression of the trademark device in the “Trademark Registration Application,” and is objectively presented in a certain graphic way. But the composition of a color combination trademark cannot be limited accordingly. A color trademark composed of one component is identified as a graphic trademark composed of two components, color combination and graphic. Under normal circumstances, one of the prerequisites for a mark to be protected as a trademark is to obtain an approved registration rather than an application or publication. Trademark publication only acted for publicity purposes, that is, the trademark has been applied for registration or the trademark has been approved for registration, but the scope of protection should generally still be determined through the trademark registration certificate. A color combination trademark is a special trademark, its attributes and use methods can be determined according to the trademark application or the actual use method of the trademark owner. The trademark cannot be recognized only as a graphic trademark with the color combination shown on the trademark registration certificate or trademark publication, or that the trademark owner can only use its trademark in the form marked on the trademark registration certificate.

2. The Beijing Intellectual Property Court announced temporarily adjusting case filing, litigation services, and receptions to online

In order to better prevent and control the Omicron variant from spreading, reducing people flow and gathering, and effectively protect people’s life and health, on May 20, 2022, the Beijing Intellectual Property (“IP”) Court announced the relevant measures as follows:

1) From now on, the Beijing IP Court will suspend on-site reception for matters such as case filing, litigation services, and receptions.  Related matters will be temporarily adjusted to online.

2) During this period when all matters adjusted to online, if people need to file a case, appeal a letter or visit, or apply for other litigation services, they can use the Beijing Court Electronic Litigation Platform, the People’s Court Online Service Beijing Platform, the People’s Court Lawyer Service Platform, and the Supreme People’s Court Online Appeals And Petition Platform, the Beijing Court Trial Information Network, “Beijing Court Litigation Service” WeChat public account, Jingzhi Online, and other online channels can be used for processing.

3. According to the latest jurisdictional interpretation of the Supreme People’s Court, the Beijing Intellectual Property Court issued the first ruling based on inadmissibility

Recently, in accordance with the “Several Provisions of the Supreme People’s Court on Jurisdiction of Civil and Administrative Cases of Intellectual Property Rights of First Instance” (“Provisions”), the Beijing IP Court issued its first ruling based on inadmissibility against a trademark infringement dispute that did not involve the well-known mark recognition.

On May 5, a company engaged in paper products technology development, manufacture and processing of paper and hygiene products, etc. filed a trademark infringement case before the Beijing IP Court, claiming that a bank in Beijing and its sub-branch and other affiliated companies illegally sold counterfeit paper products produced by the company infringed its trademark right and caused losses, and requested the court to order the four defendants to compensate for RMB62.16 million (USD9.2 million) and reasonable expense of RMB500,000 (USD75,000).

According to the above-mentioned “Provisions,” except for the first-instance civil cases involving well-known mark recognition, first-instance civil cases concerning trademark infringement disputes shall be under the jurisdiction of the local people’s courts as affirmed by the Supreme People’s Court. In addition, according to the “Notice of the Supreme People’s Court on Printing and Distributing the Standards for Basic-level People’s Court Jurisdiction over First Instance Intellectual Property Civil and Administrative Cases,” starting from May 1, 2022, six basic-level courts in this city will have jurisdiction over first-instance intellectual property civil cases not subject to litigation damages limit.

Since this case did not involve well-known mark recognition, the Beijing IP Court had explained the latest regulations on jurisdiction adjustment to the plaintiff at the filing window and instructed the plaintiff to file with a competent local court. The plaintiff, however, insisted on filing before the Beijing IP Court.

On May 11, the Beijing IP Court issued a ruling of inadmissibility against the plaintiff’s cause of action in accordance with the above-mentioned latest jurisdictional regulations.

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