Weekly China Trademark News Updates

November 10, 2022

1. RMB 50 million! Largest trademark infringement damages awarded to a foreign company in China

Recently, the Jiangsu High Court ruled in favor of raumplus Besitz-und Entwicklungs GmbH & Co. KG (“raumplus Besitz”), raumplus GmbH (“raumplus”), Delu (Taicang) Furniture Technology Co., Ltd. (“Delu Taicang”) against Delu Furniture (Shanghai) Co., Ltd. (“Delu Shanghai”), Delu Furniture (Nantong) Co., Ltd. (“Delu Nantong”), and Peijun ZHU in the final judgment on trademark infringement and unfair competition disputes. The judgment found that the defendants constituted trademark infringement and unfair competition and ordered to compensate the plaintiffs for economic losses of RMB50 million (USD6.9 million).

raumplus GmbH & Co. KG, the predecessor of raumplus Besitz, is a German company specializing in the field of sliding doors and customized system cabinets who entered the China market in 2009. raumplus, formerly known as raumplus International GmbH, is mainly engaged in decorative elements of residential interior design, especially living room partitions, room partitions, cabinets, sliding doors and other related products. raumplus Besitz owns the “Delu in Chinese” mark, the “raumplus” mark, and the “Delu” mark in class 20 for “furniture” related goods. Plaintiffs claimed that Defendants’ use of the marks “Delu in Chinese” and “raumplus” in the promotional materials constituted trademark infringement. Defendants Delu Shanghai and Delu Nantong used “Delu in Chinese” as their corporate name and “Lei Di Ni in Chinese (LEDINT)” as a high-end customized brand of Delu for publicity. Delu Nantong registered and used “Delu.com” domain name, which constitutes unfair competition.

Cited Marks

The court found that with regard to trademark infringement, the customized furniture produced and sold by Delu Shanghai and Delu Nantong was the same as the furniture and other products approved by the Cited Marks. At the same time, Delu Shanghai and Delu Nantong use the “Delu in Chinese” trademark in furniture invoices, brochures, design drawings, WeChat public accounts, store decoration, store fronts, exhibition halls, bidding documents, etc, and use the “TaumpIus” logo in the furniture invoice and external publicity. These logos are the same as those of raumplus Besitz. Accordingly, the defendants constituted trademark infringement. Regarding unfair competition: (1) Delu Shanghai and Delu Nantong continued to use “Delu in Chinese” as the corporate name after raumplus and Shanghai Lei Di Ni Company, an outsider, ended the joint venture, misleading the public and constituting Unfair competition; (2) Delu Shanghai and Delu Nantong publicized “Lei Di Ni in Chinese (LEDINT) as a high-end customized brand under Delu,” which is an unfair competition act of false publicity; (3) Delu Nanton’s registration and use of the “Delu.com” domain name is an act of unfair competition. The court also found that the acts of the defendants Delu Shanghai and Delu Nantong were malicious infringement and the circumstances were serious, and punitive damages were applicable.

2. Novartis AG successfully invalidated the “Nuo Hua Lv in Chinese” mark using the “Nuo Hua in Chinese” mark that was recognized as a well-known mark by the courts

Recently, the Beijing High Court made a judgement against CNIPA and the third-party Hangzhou Runrong Business Consulting Co., Ltd. (“Runrong”) in favor of  Novartis AG in a trademark invalidation dispute. The court found that Novartis’ “Novartis” mark (Cited Mark) constituted a well-known mark in “pharmaceutical preparation” goods.

Cited Mark

The CNIPA previously found that the evidence submitted by Novartis was not enough to prove that its Cited Mark  had been known to the relevant public before the application date of the Disputed Mark. The registration of the Disputed Mark would not mislead the public and thus damage the interests of Novartis. The Disputed Mark did not violate Article 13(3) of the 2013 China Trademark Law and the Disputed Mark shall be maintained.

The first instance court found that the audit report, market share ranking, distribution agreement and invoice, advertising contract, national library search report and other evidence submitted by Novartis can prove that Novartis is a well-known company in the field of medicine. Its affiliated companies have a high market share of products, a wide range of sales areas, and relatively high sales. Various newspapers and magazines have a lot of reports on Novartis and its products. Therefore, the evidence submitted by Novartis is sufficient to prove that, prior to the application date of the Disputed Mark, the Cited Mark, through extensive and long-term publicity and use by Novartis, has a very high reputation and influence on goods such as “pharmaceutical preparations,” and it is generally familiar and well known to the relevant public, which constitutes a well-known mark on goods such as “pharmaceutical preparations.” The Disputed Mark “Nuo Hua Lv in Chinese” completely includes the Cited Mark, which constituted an imitation. Goods such as “pharmaceutical preparations” approved for use for the Cited Mark are closely related to daily life and a wide range of consumer groups. Although the goods such as “cosmetics, shampoo” and “pharmaceutical preparations” are approved by the Disputed Mark and the Cited Mark belong to different classes in the CNIPA Classifications, their sales channels and consumer groups overlapped, and they have certain relevance. Medicinal cosmetics, medicinal shampoo and other products are also common in the market. Under the circumstance that Novartis’ Cited Mark  is relatively famous, the application for registration of the Disputed Mark will easily misled the relevant public into believing that the Disputed Mark has a considerable degree of connection with Novartis’ well-known trademark, thereby misleading the public, harming the interests of Novartis, and violating the Article 13(3) of the 2013 China Trademark Law. The second instance court upheld that the first instance decision.

3. The Regulations on the Supervision and Administration of Trademark Agency was recently released

The Regulations on the Supervision and Administration of Trademark Agency (“Regulations”) was recently released, which is an effective means to further improve the intellectual property agency management system and improve the level of regulatory standardization. The “Regulations” will come into force on December 1, 2022.

The Regulations focus on the prominent problems of the current trademark agency industry, such as the low entry threshold, too many entities, non-standard operation and management, and uneven service levels. The Regulations aim to improve the overall service quality and development level of the industry at the source, establish and improve the registration system for trademark agencies. Clearing up agencies that do not carry out business for a long time and occupy industry resources by improving the agency registration procedures. Promote the formation of a healthy development pattern for the industry. At the same time, in order to facilitate the registration process of the agency, it is stipulated that the information that can be obtained through the government information sharing platform shall not be required to be repeatedly provided by the trademark agency.

The Regulations further standardize the behavior of trademark agency, stipulate the basic principles of engaging in trademark agency business, the obligations to be performed and the publicity of the basic matters of the agency, require trademark agencies to establish and improve the business management system and file system, strengthen the professional ethics of practitioners and professional discipline education.

The Regulations improve the legal liability of trademark agencies for illegal acts and strengthen legal deterrence. Combined with practice, the China Trademark Law and its implementing regulations listed the illegal acts of trademark agency in detail to enhance the operability. Clarify the illegal circumstances of engaging in trademark agency business through the Internet. At the same time, it stipulates the supervision responsibility of the intellectual property management department and the disciplinary requirements and accountability for those who are engaged in trademark registration and management.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

November 2, 2022

1. The CNIPA intends to add provisions on trademark revocation ex officio

Recently, the CNIPA issued a letter of reply to the Recommendation No. 2505 of the Fifth Session of the Thirteenth National People’s Congress. The letter mentioned that the CNIPA should continue to strengthen the obligation to use trademarks, make up for its shortcomings on the basis of adhering to the existing registration system, and focus on solving the problem of “emphasizing registration and neglecting use.” The first is to improve the concept of trademark use and highlight the basic status of use. Second, on the basis of retaining the original withdrawal system, study the feasibility of introducing the system of trademark use commitment and active submission of usage descriptions during its validity period. Third, it is proposed to add regulations on trademarks revocation ex officio. If the trademark registrant fails to fulfill the promise of use, fails to submit a description of the use situation according to law, or improperly exercises the exclusive right to use the trademark, the registered trademark can be revoked ex officio.

2. Coexistence agreement can be used as an important basis for determining trademark similarity

The Beijing High Court recently affirmed the lower court decision against Appellant CNIPA and for appellee Bond High Performance 3D Technology B.V. (“Bond”) in an administrative trademark rejection review dispute.

The focus of the dispute in this case is whether the application for the Disputed Mark violates Article 31 of the Chinese Trademark Law. The Beijing High Court held that whether the Disputed Mark and the Cited Mark constitute similar trademarks, and whether the coexistence of the two will cause confusion and misunderstanding to the relevant public, the registrant of the Cited Mark, as a direct interested party, is more concerned than other relevant public. Therefore, when determining whether the coexistence of the Disputed Mark and the Cited Mark on similar goods or services will cause confusion and misunderstanding to the relevant public, the trademark coexistence agreement reached between the Cited Mark’s registrant and the Disputed Mark’s applicant should be considered. On the one hand, in the case of differences between the Disputed Mark and the Cited Mark, the trademark coexistence agreement can be used as a reference factor to eliminate the possibility of confusion. On the other hand, a trademark’s private right should also be considered, that is, a trademark coexistence agreement reflect the transfer and handling of part of the exclusive right owned by the Cited Mark’s registrant. According to the principle of autonomy of will, a trademark registrant should be allowed to freely dispose of its trademark exclusive right.

In this case, the Disputed Mark’s designated goods and the Cited Mark’s approved goods all falls into subclasses 0726 and 0753 part (3), which constitute similar goods in terms of function, production departments, sales channels, and consumers.

The Disputed Mark is a word mark composed of “BOND.” The Cited Mark is a design and work combination mark composed of “BONDTECH” and a design. Although the Disputed Mark “BOND” and the text part “BONDTECH” of the Cited Mark both contain “BOND”, the Cited Mark also contains the text “TECH” and the design part, and there are certain differences between the two in terms of composition elements, text composition, and overall appearance. The trademark coexistence agreement submitted by Bond was issued by the owner of the Cited Mark. If it does not violate laws and administrative regulations, and there is no evidence to show that the coexistence of the Disputed Mark and the Cited Mark could damage the rights and interests of the relevant public, it should be considered as strong evidence to exclude the possibility of confusion. The trademark coexistence agreement determines that the coexistence of the Disputed Mark and the Cited Mark on the same or similar goods is unlikely to cause confusion among the relevant public. Therefore, the Disputed Mark and the Cited Mark do not constitute similar trademarks used on identical or similar goods, and the application for the Disputed Mark does not violate Article 31 of the Chinese Trademark Law. The lower court’s judgment was correct, and the relevant grounds for the appeal submitted by the CNIPA could not be established and should not be supported.

3. The “Oxford University Press in Chinese” mark is not allowed to be registered as a trademark for lack of distinctiveness

The Beijing High Court recently concluded a review of a trademark rejection appeal case to vacate the first instance decision and reject the petition filed by Oxford University Press.

The focus of the dispute in this case was whether the trademark “Oxford University Press” violates Article 11(1)(3) of the Chinese Trademark Law. The first instance judgment found that the Disputed Mark was composed of “Oxford University Press” in Chinese, and that Oxford University Press’s application for registration of the word “Oxford University Press” was in line with commercial practices and customs. The Disputed Mark was distinctive, which can play a role in distinguishing the source of goods and should be registered. Therefore, the first instance judgment revoked the accused decision made by the CNIPA.

The CNIPA refused to accept the first instance judgment and appealed to the Beijing High Court. The Beijing High Court held that the Disputed Mark was consistent with the Chinese enterprise name of Oxford University Press, and was used on the re-examined goods, and the relevant public could easily identify it as a business name, but not as a trademark. The Disputed Mark lacked distinctive features, and its registration violated Article 11(i)(3) of the Chinese Trademark Law. The first instance court erred in applying the law and the CNIPA’s grounds for appeal should be supported.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

October 26, 2022

1. Nestlé’s “Nestle in Chinese” mark prevailed in a second instance trial against the “Magpie Nest in Chinese” mark based on similarity

Disputed Mark	Cited Mark

Wuhan Magpie Nest Network Information Group Co., Ltd. (“Magpie Nest”) submitted a trademark application for “Magpie Nest in Chinese” (“Disputed Mark”) with application no. 27615487 on November 21, 2017. The Disputed Mark was approved on February 7, 2020. Nestlé Products Co., Ltd. (“Nestlé”) filed an invalidation against the Disputed Mark based on its prior mark “Nestlé in Chinese (“Cited Mark”). The CNIPA found that the Disputed Mark and Nestlé’s prior mark constituted similar trademarks according to Article 30 of the Trademark Law for identical or similar services. The CNIPA invalidated the Disputed Mark. Magpie Nest appealed to the Beijing Intellectual Property Court. The court found the Chinese characters in the Disputed Mark and the Cited Mark have identical pronunciations. However, the first two characters of the Disputed Mark is a fixed expression with a fixed meaning, which means lucky birds in China, which allow the Disputed Mark to have a different meaning than the Cited Mark. The relevant public can distinguish the Disputed Mark and the Cited Mark in terms of text composition, recognition, and overall appearances. The coexistence of the Disputed Mark and the Cited Mark on services such as “advertising” in class 35 is unlikely to confuse or misunderstand the public regarding the source of the service. The court ruled that the Disputed Mark and the Cited Mark did not constitute similar marks used on identical or similar services under Article 30 of the 2013 Trademark Law. Even when considering that the popularity of the Cited Mark is extended by its goodwill on coffee products, the relevant public can distinguish the Cited Mark and they would not easily be confused and misunderstood. In sum, the Beijing Intellectual Property Court revoked the invalidation decision made by the CNIPA. Both Nestlé and the CNIPA appealed the first instance court decision to the Beijing High Court.

The Beijing High Court held that both the Disputed Mark and the Cited Mark includes the word “nest in Chinese,” and “magpie in Chinese” and “sparrow in Chinese” have identical pronunciation. The Disputed Mark is similar to the Cited Mark in terms of text composition, pronunciation, meaning, overall appearance, etc. If they are used together for identical or similar services, the relevant public may easily think that the services using the above trademarks are derived from the same entity or that there is a specific connection between the service providers, resulting in confusion and misidentification. Therefore, the Disputed Mark and the Cited Mark constituted similar marks used on identical or similar services on all services approved for use. The Disputed Mark violated Article 30 of the 2019 Trademark Law and should be invalidated.

2. Bad faith complaints constitute unfair competition

Harbin Shangsheng Economic and Trade Co., Ltd. (“Shangsheng”) is the registrant and applicant of the mark “TELARGRA” with reg. nos. 31213861, 40286994 and 40301830. Yao Ming is the sole shareholder and legal representative of Shangsheng. Shangsheng filed 10 complaints against the “Telake Flagship Store” opened by Telake Foods Co., Ltd. (“Telake”) on the JD.com complaint platform based on its trademark registrations and copyrighted works. Xiao Niu John Foods Co., Ltd. (“Xiao Niu John “) and Telake appealed to the court on the grounds that Yao Ming and Shangsheng’s actions constituted unfair competition. The Beijing High Court found that based on the facts that have been identified in this case, the prior effective administrative judgment made by this court has determined that the “TELARGRA” marks was an unregistered mark owned by Xiao Niu John and Telake on raw beef related goods. Yao Ming, the legal representative of Shangsheng, once worked at Xiao Niu John, who knew the prior used “TELARGRA” mark by Xiao Niu John and Telake. Shangsheng’s registration of the “TELARGRA” mark on tripe products violated Article 15, paragraph 2 of the 2014 Trademark Law. At the same time, the evidence in the case can confirm that Shangsheng knew that Xiao Niu John and Telake had prior rights to the logos such as “TELARGRA” and used them on raw beef goods. However, Shangsheng still took advantage of the lack of trademark knowledge of Xiao Niu John and Telake and applied for the registration of the TELARGRA mark and registered TELARGRA as a copyrighted work. Shangsheng then used this as the basis of rights to file a complaint against the raw beef products sold by Telake on JD.com, which showed that its subjective bad faith was obvious. Objectively speaking, the alleged complaint of Shangsheng resulted in the removal of Telake’s product, which not only directly affected the operating income of Telake, but also interfered with the prior rights of “TELARGRA” and other logos. Such acts also damaged the normal business activities and legitimate rights of Xiao Niu John and Telake, which was obviously inappropriate. Therefore, the above-mentioned acts of Shangsheng violated the basic principles of good faith and business ethics, disrupted the normal market competition order, and damaged the legitimate rights and interests of other business operators, which constituted an act of unfair competition regulated by Article 2 of the Anti-Unfair Competition Law.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

October 18, 2022

1. The CNIPA held a symposium on trademark business work

Recently, the Trademark Office of the CNIPA held a symposium on trademark business work to listen to opinions and suggestions of representatives of companies, agencies, and industry associations on trademark business work.

Delegates at the symposium recognized the reform efforts and achievements made by the Trademark Office to improve the quality and efficiency of trademark examination in recent years, and provided suggestions and advice with respect to strengthening the management of “examiner and agency collusion” and information leakage, regulating trademark applications with serious unhealthy effects, cracking down on bad faith trademark squatting and hoarding, further promoting the quality and efficiency of trademark examination and review, and building a first-class trademark examination and review agency.

It is particularly noteworthy that the symposium decided that the CNIPA will immediately set up a special platform on the China Trademark Website to accept complaints and leads, open on-site consultation windows in the trademark registration hall, promptly introduce a special system to deal with bad faith three-year non-use cancellations, and propose to incorporate cracking down on bad faith same-day applications into the next regulation creation project.

We have noticed that when visiting the China Trademark Website now, there is a floating window on the homepage showing “Entrance to Report Leads of Trademark Information Leakage Issues.”

2. Adidas nearly lost the Adidas trademarks. The relevant agency was assessed with administrative penalties.

On the first day after the National Day holiday, the Beijing Xicheng Supervision Bureau issued administrative penalties for illegal agency of two trademark assignments, which involved several main trademarks of Adidas of Germany.

In November 2020, an agency company successively filed for address change, trademark assignment, license recordal, and reissuing registration certificate for multiple trademarks in the name of Adidas AG, including No. 169865 “,” No. 3336263 “,” No. 3921767 “,” and No. 13770600 “.”

In December 2020, the CNIPA received a statement from Adidas, saying that the assignee, a Hong Kong company in the aforementioned assignment applications, had not obtained its authorization, and it had never authorized the agency company to handle trademark matters in its name. Accordingly, all said operations of this agency were not approved by the CNIPA.

The Beijing Municipal Intellectual Property Office reported the violations of this trademark agency to the Beijing Municipal Supervision Bureau. The Municipal Supervision Bureau held that: the agency did not obtain the authorization of the trademark holder and did not fulfill its responsibilities of reviewing in handling the assignments and other related trademark matters. It violated Article 19, Paragraph 3 of the Chinese Trademark Law “If a trademark agency knows or should know that the trademark applied for by the client falls under the circumstances specified in Articles 4, 15 and 32 of this Law, it shall not accept the entrustment.”  According to Article 68(1)(3) of the Chinese Trademark Law, the trademark agency is ordered to correct the above-mentioned illegal acts, and has been given a warning and a fine.

3. Tommy Hilfger continues its wins over Tommycrown

A Chinese company registered the mark “” in class 25 in relation to clothing, sport shoes, gloves, etc. in May 2015, and applied to assign the mark to Tommy Crown (U.K.) International Fashion Co., Ltd in June 2018.

Before the approval of the assignment in November 2018, Tommy Hilfiger Licensing B.V., the owner of registered marks “,” “,” “,” “,” “,” “ ,” filed an invalidation against this mark in September 2018.

The CNIPA made the decision in April 2019, ruling to invalidate the Disputed Mark as it has constituted a similar mark used on the same or similar goods with Tommy Hilfiger’s Cited Marks.

Tommy Crown filed a court appeal before Beijing IP Court, which affirmed mark similarity and the fame of Tommy Hilfiger’s Cited Marks, thereby rejecting the claims of Tommy Crown.

Tommy Crown appealed against the first-instance verdict. The Beijing High Court recently rendered the second-instance judgment finding that:

The Disputed Mark consists of the letters “Tommycrown.” Both the Disputed Mark and the Cited Mark 1 to 10, which contain the letters “TOMMY,” are similar in letter composition and pronunciation. At the same time, the evidence in the case can prove that Tommy Hilfiger’s trademark “TOMMY HILFGER” had a certain reputation in clothing products before the application for registration of the Disputed Mark. Under such circumstance, Tommy Crown still filed for the Disputed Mark with a relatively high degree of similarity and failed to avoid a trademark of others that has achieved a certain reputation. It is difficult to call it goodwill. In view of this, if the Disputed Mark coexists with the Cited Marks, the relevant public, when paying general attention, is likely to believe that the goods using the Disputed Mark originate from the same entity or that there are specific associations between the goods providers, which would cause confusion and misidentification. Therefore, the original judgment and the CNIPA decision are correct to determine that the Disputed Mark and the Cited Marks constituted similar marks used on identical or similar goods, and this court affirms.

Tommy Crown claimed that the CNIPA decision did not comment on its request for suspension of review, and there were major procedural errors. In this regard, this court believes that the current laws and regulations do not require mandatorily that if the Cited Mark is pending before the people’s courts or administrative departments, the CNIPA shall wait for the judgment/decision before rendering a decision. The CNIPA has the discretion to decide whether to suspend according to each case’s circumstances. In this case, although the CNIPA did not comment on the request for suspension by Tommy Crown, it did not violate any legal regulations or rules. Therefore, this court does not support Tommy Crown’s claim.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

October 11, 2022

1. Infringers may be held not liable for compensation if the trademark has not been actually used for three consecutive years

On September 15, 2022, the Beijing High Court rendered a trademark infringement decision in favor of Yanjing Zhihui (Beijing) International Travel Service Co., Ltd. (Yanjing Zhihui) against Beijing Yanjing International Travel Service Co., Ltd. (Beijing Yanjing). The court found that, although Beijing Yanjing conducted infringement, it shall not be held liable for compensation according to the provisions of Article 64 of the Chinese Trademark Law,.

Yanjing Zhihui has legally obtained the exclusive right to use the registered trademark of “Yanjing Tourism” for use in Class 39 for travel companionship and other services.

Beijing Yanjing operates the WeChat public account “Yanjing International Travel,” where the introduction of the official account is “wholesale service providers for outbound travel, customized travel”; and has opened a self-operated store on Fliggy’s website, the store name is “Beijing Yanjing International Travel.” Yanjing Zhihui claimed that the use of “Yanjing International Travel” by Beijing Yanjing constituted infringement.

The first instance court found that the “Yanjing International Travel” used by Beijing Yanjing and the “Yanjing Tourism” mark involved in this case constituted similar logos, and the alleged infringement and the approved use scope of the mark involved in this case constituted similar services. The behavior of Beijing Yanjing constituted infringement, and the compensation amount was determined as RMB 50,000 (USD6,965). The second instance court upheld the first instance judgment.

The retrial court found that: with regard to the evidence such as screenshots of the WeChat public account submitted by Yanjing Zhihui, it was either not within the specified period, or it was self-made evidence, or it did not submit performance evidence to support it, which could not prove the existence of use in the sense of Trademark Law. At the same time, Yanjing Zhihui did not submit evidence to prove that it suffered other losses due to the alleged infringement. Accordingly, although Beijing Yanjing has committed the alleged infringement, according to Article 64 of the Trademark Law, “the owner of the exclusive right to a registered trademark cannot prove that he has actually used the registered trademark within the previous three years, nor can he prove that he has suffered damage due to the infringement. For other losses, the accused infringer shall not be liable for compensation,” thus it shall not be liable for compensation.

2. Repeated trademark infringement by using counterfeit registered trademarks is ruled as punitive damages

The Guangzhou Intellectual Property Court recently made a second instance judgment over a trademark infringement dispute between Ulthera, Inc and Guangzhou Kopai Industrial Co., Ltd. (Kopai), and ordered Kopai to compensate Ulthera for economic loss of RMB 1 million (USD140,000).

Ulthera applied for the registration of the trademark “ULTHERA” involved in the case. Kopai is a company engaged in the production and sales of medical beauty equipment. In October 2016, it was administratively punished by the Administration of Industry and Commerce for selling an ultrasonic therapeutic device that violated the exclusive right to the above-mentioned registered trademark. On August 8, 2017, Ulthera and Kopai reached a settlement for trademark infringement, but Kopai continued to produce and sell products counterfeiting the “ULTHERA” registered trademark after that and was sentenced to constitute the crime of counterfeiting registered trademarks on September 10, 2019. Ulthera believed that Kopai had infringed on its exclusive right to use its registered trademark, so it requested to order Kopai to stop the infringement and compensate it for economic losses and reasonable expenses of RMB 1 million (USD140,000).

The court held that the accused infringing logo was similar to the registered trademark involved, and the accused infringing goods and the goods approved for use by the registered trademark involved also overlapped in consumers and service objects and constituted similar goods. The behavior of Kopai infringed the exclusive right of Ulthera’s registered trademark. On the issue of the amount of compensation, the court held that Kopai’s failure to perform the settlement agreement and ignoring the intellectual property rights of others constituted extremely serious infringement. At the same time, Kopai has repeatedly committed infringing acts and the infringing products involved were ultrasonic therapeutic apparatuses, which may endanger human health and the degree of infringement was serious. Considering the obvious subjective maliciousness and serious infringement of Kopai, the punishment should be increased. Therefore, in this case, double punitive damages shall be applied and Ulthera’s claim for damages of RMB 1 million (USD140,000) was fully supported.

3. The CNIPA held a special press conference on “The Decade of Intellectual Property”

On October 9, 2022, the CNIPA held a special press conference on “The Decade of Intellectual Property Rights” together with a regular press conference in October to announce the historic achievements and historic changes in the development of intellectual property.

From 2012 to 2021, the CNIPA has allowed a total of 35.563 million trademarks, with an average annual growth of 25.5%. As of September 2022, there were 41.523 million valid trademark registrations in China, and the average review period for trademark registration was stable at 4 months.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

September 27, 2022

1. Using “HUAWEI” as a search keyword for products is considered as trademark infringement

Recently, the Shenzhen Futian District Court rendered a first-instance judgment on a trademark infringement dispute between Huawei Technologies Co., Ltd. (“Huawei”) and Shenzhen Mingyu United Technology Co., Ltd. (Mingyu United), and ordered Mingyu United to compensate Huawei for economic losses of RMB500,000 (USD69,000) and reasonable expenses of RMB1,069.8 (USD140).

Huawei obtained the exclusive right to use the registered trademarks “Huawei in Chinese” and “,” and was approved to use them on Class 9 for headphones and other goods. The said trademarks are still valid.

In this case, the accused infringing product is the same kind of product as those under Huawei’s registered trademark. The defendant set “Huawei in Chinese” as a search keyword and used the word “Huawei in Chinese” in its product name. “Huawei in Chinese” constitutes the same trademark as the Huawei’s registered trademark. Mingyu United used a graphic logo as the displayed picture. The graphic logo and Huawei’s registered trademark are both composed of the upper part of petals design and the lower part of English letters. The design parts on both marks are all in the shape of petals, and the overall visual effect is the same; the English letters “IEWAUH” are the same as Huawei’s. The English letters of the registered trademark “HUAWEI” have the same letter composition in reverse order. From an overall point of view, Mingyu United’s graphic logo is similar to Huawei’s registered trademark.

The search keyword “Huawei in Chinese” set by Mingyu United, the word “Huawei in Chinese” and the design logo used on the sales page of the accused infringing product have the function of identifying the source of the product and are trademark uses. Although Mingyu United indicated that the brand was SCOLIB in product details, and that the accused infringing product did not have the word “Huawei in Chinese” or a design logo, it set “Huawei in Chinese” as a search keyword and used “applicable to Huawei” and “original and genuine Huawei headphones,” in the product details, used design logos on the displayed photos, and labeled “Huawei in CHinese” in the product name and model details. These acts obviously showed the bad faith intention of takingadvantage of Huawei’s reputation, and it is very likely for the relevant public to believe that Mingyu United’s headphone is related to Huawei’s or that they have specific connections, which would cause confusion to the relevant public.

In summary, Mingyu United’s behavior of setting “Huawei” as a search keyword, using the word “Huawei in Chiness” in the product name, and using the design logo on the displayed photo infringed Huawei’s exclusive right to use its registered trademark, and should immediately stop the infringement and compensate for losses according to civil liabilities.

2. A company infringed Universal’s trademark by using the “Universal Studios in Chinese” mark without authorization

Universal City Studios LLC (also known as Universal Pictures Co., Ltd.) submitted a request to stop trademark infringement to the Beijing Tongzhou District Market Supervision Bureau (Tongzhou Supervision Bureau), requesting that the party’s use of the words “Universal Studios in Chinese” in the name of the hotel without the authorization of Universal constitutes trademark infringement.

On April 14, 2021, the Tongzhou Supervision Bureau came to a hotel franchise store based on clues provided by the trademark owner. After investigation, the party involved use the words “a hotel in Beijing Tongzhou Universal Studios” on electronic display screens, business cards, check-in receipts, temperature-measuring robots, health treasure QR code cards, hotel operation systems, and WeChat public account mini-programs in the hotel lobby without the authorization of the “Universal Studios in Chinese” trademark owner. The same words were also used on online platforms such as Ctrip, Dianping, Fliggy, Qunar, and eLong. As of the on-site inspection on April 14, 2021, the total operating revenue is RMB5.15 million (USD719,600).

The Tongzhou Supervision Bureau found that the above-mentioned behavior constituted trademark infringement, and ordered the party to stop the infringement immediately. In view of the party’s active cooperation and truthful account of the illegal facts and the initiative to provide evidence materials, immediate rectification was made at the scene, and at the same time considering that Universal Studios has not yet opened, the party’s infringement has limited impact on Universal Studios, the party was given a lighter punishment and imposed of an administrative penalty of RMB100,000 (USD13,900).

3. The CNIPA issued the “Notice on Comprehensively Implementing Online Applications for Rejection Appeal Cases” and “Interim Work Measures to Further Increase Trademark Opposition, Review, and Three-Year Non-use Cancellation Online Applications Filings”

Starting from November 1, 2022, trademark agencies should, in principle, submit electronic applications through the online trademark service system, and no longer submit paper materials.

In order to quickly and significantly increase online trademark opposition, review, three-year non-use cancellation filings. The CNIPA formulated and published Q&As guidelines for opposition, invalidation review, and three-year non-use cancellation, which aims to effectively guide applicants and trademark agencies to better use the online application system, deepen understandings, and improve efficiency.

In the next step, the CNIPA will further speed up the process of fully move trademark applications and responses electronically.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

September 20, 2022

1. Unauthorized use of the exact same design as a Royal Oak watch constitutes trademark infringement and unfair competition, and RMB 1 million in damages

Recently, the Shenzhen Intermediate Court has rendered a judgment for Audemars Piguet Holding S.A. (“Audemars Piguet”) against Hengbo Zhang in a trademark infringement and unfair competition dispute. The court found that the defendants’ acts constituted trademark infringement and unfair competition, and ordered the defendants to compensate the plaintiff for economic losses and reasonable expenses of RMB 1 million (USD142,720).

Cited Marks

Audemars Piguet manufactures, promotes, and sells self-branded watches. It launched the “Royal Oak” watch model in 1972. Audemars Piguet registered the “Royal Oak” trademarks (“Cited Marks”) on February 17, 1992 and September 12, 2016, respectively. The said trademarks were approved for use on goods in Class 14 for watches and jewelry. Audemars Piguet claimed that the defendant used a stylized “Royal One” logo (“Disputed Mark”) on a watch. When comparing the two, it can be clearly noticed that the similarity of the designs between the two. At the same time, the defendant’s watch copied the unique design features of the plaintiff’s “Royal Oak” and “Royal Oak Offshore” series of watches, including but not limited to the watches sold by the defendant under the name of “DIDUN DESIGN” that highly replicated the “Royal Oak” “Royal Oak Off Shore” series watch owned by Audemars Piguet.

The court found that the accused infringing goods were watches which were identical to the approved goods under the plaintiff’s Cited Marks. Compared with the Cited Marks, the logo “Royal One” on the accused infringing goods has a similar overall visual effect. In addition, compared with the plaintiff’s “Royal Oak” trademark, the artistic expression, visual effect and conceptual design of the “Royal One” logo on the alleged infringing goods were identical. In summary, the alleged infringing logo was similar to the Cited Marks, which may easily lead consumers into mistakenly believing that the goods sold under the infringer’s trademark originated from the plaintiff or that there was some connection between them, which constituted trademark infringement. Regarding unfair competition, Royal Oak and Royal Oak Offshore watches are well-known in the watch industry. The dial design of Royal Oak watches is very unique, which is different from ordinary watches. The shape has the function of distinguishing the source of the goods. The defendant used the exact same design as the Royal Oak watch without authorization, with the purpose of taking advantage of the goodwill of the Royal Oak watch, causing confusion or misleading of the relevant public. The defendant violated the principle of good faith and constituted an act of unfair competition as stipulated in Article 6(1) of the Anti-Unfair Competition Law.

2. A new round of amendments to the Trademark Law and its implementing regulations intend to clarify the civil liability for damages caused by bad faith squatting

A new round of preparations for the revision of the Trademark Law and its implementing regulations will pay more attention to the protection of rights and public interests, social effects, and balance of rights first, clarify the boundaries of the exercise of rights, solve the problem of insufficient maintenance of public interests, and promote a reasonable balance of rights and obligations. First, by strengthening the construction of integrity in the trademark fields, emphasizing that no deception or other improper means should be used to apply for or obtain trademark registration; study and clarify the liability for providing false materials; strengthen credit supervision and credit punishment. Second, to further regulate bad faith  trademark registrations, and to study effective regulations by increasing the amount of fines, clarifying the civil compensation liability for losses caused to others by bad faith squatting, establishing a system for assigning bad faith squatted trademarks, improving prohibition rules for trademarks containing geographical names, and other measures to curb bad faith trademark registrations. Third, to regulate the exercise of rights, prevent abuse of rights, and clarify the boundaries of the exercise of the exclusive right to use a trademark. It is proposed to stipulate that registered trademarks may be revoked for the improper exercise of the exclusive right to use a trademark. The introduction of a bad faith litigation counter-compensation system is under research. Fourth, to strengthen the social nature of trademark examination and trial work, and plan to set up a discretionary procedure for revocation of preliminary publication. Fifth, to strengthen the supervision and management of the trademark agency industry, clarify the access requirements for the trademark agency industry, and standardize the trademark agency behavior.

Continue to strengthen the obligation to use trademarks, make up for its shortcomings on the basis of adhering to the existing registration system, and focus on solving the problem of “emphasizing registration and neglecting use.” First, improving the concept of trademark use and highlight the basic status of use. Second, on the basis of retaining the non-use cancellation system, study the feasibility of introducing a trademark use commitment and active submission of use during its registration. Third, adding regulations on revocation of trademarks ex officio. If the trademark registrant fails to fulfill the promise of use, fails to submit a description of the use according to law, or improperly exercises the exclusive right to use the trademark, the registered trademark can be revoked ex officio.

3. Alibaba Technology (Beijing) Co., Ltd. was fined for representing Eileen Gu’s trademark

On September 6, 2022, the Beijing Market Supervision Bureau issued an administrative penalty decision of Jingshi Jian Punishment [2022] No. 181 against Alibaba Technology (Beijing) Co., Ltd. to represent the trademarks “Gu Ailing in Chinese” and “EILEEN GU.” The penalty decision held that Alibaba represented the two applicants for a total of 4 trademarks in the “Gu Ailing in Chinese” and “EILEEN GU” trademarks in June 2019 and February 2020, which violated the provisions of Paragraph 3 Article 19, and Article 32 of the Trademark Law. A warning and a fine of RMB 80,000 (USD11,400) was issued.

The provisions of Paragraph 3, Article 19 and Article 32 of the Trademark Law stipulates that it is illegal when agency knowingly or should have known that its client filed trademarks that infringes others’ prior rights, but still accepts the entrustment. The Beijing Market Supervision Bureau believes that as a public figure and Olympic champion, Eileen Gu’s name itself has a certain influence and attraction and has an “endorsement” effect. If her name is registered as a trademark without authorization, this will not only infringe Eileen Gu’s name right, but will also infringe on the prior rights and interests of others, and easily affect their good public image. Therefore, anyone’s registration of “Gu Ailing in Chinese” and “EILEENGU” should abide by relevant laws and regulations. As a trademark registration agency, the party concerned knew or should have known about the content, but still accepted to act as the applicants’ entrusted agency to register and apply for the “Gu Ailing in Chinese” and “EILEEN GU” trademarks, which damaged Eileen Gu’s prior rights and caused adverse social impact.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

September 14, 2022

1. The “Compliance Evaluation Guidelines for Digital Collections” – Digital collections can only be circulated for the purpose of use

On September 4th, at the 2022 World Frontier Technology Conference – Metaverse in the Digital Economy Forum of the Service Trade Fair, the ” Compliance Evaluation Guidelines for Digital Collections ” (Group Standards) (“Guidelines”) were officially released. The “Guidelines” regulates the definition, compliant issuance, and circulation of digital collections for the first time, and clearly states that digital collections are limited to the purpose of use, and cannot be listed or privately illegally traded for speculation, money laundering, tokenization, financialization, securitization, or other circulations.

The “Guidelines” pointed out that digital collections issued in China generally refer to a limited-release virtual cultural goods, including digital pictures, music, videos, 3D models, etc., which are recorded through blockchain technology of their distribution, purchase, and use histories. Such record on blockchain make it unique, non-copyable, tamperproof, and permanent proof. These goods are also known as “digital artworks” and “virtual digital goods.” As digital publications, digital collections can be distributed and circulated compliantly according to two product types: digital copyright and digital publication.

The relevant provisions stipulate that China implements a licensing system for publishing activities of electronic publications; without permission, no entity or individual may engage in publishing activities of electronic publications. This also means that no entity or individual may publish digital collections without permission.

2. 5 million RMB in damages! The Beijing IP Court found that the “red-soled shoes” constituted a goods name, packaging, and decoration with certain influence

Recently, the Beijing Intellectual Property Court rendered a decision for the plaintiff Christian Louboutin Co., Ltd. (“Louboutin”), Lanbuting Shanghai Trading Co., Ltd. (“Lanbuting”) and against the defendant Guangdong Wanlima Industrial Co., Ltd. (“Wanlima”) in a first-instance judgment of an unfair competition dispute involving “red-soled shoes.” Wanlima was ordered to stop infringement, compensate economic losses of RMB 5 million (USD718,000) and reasonable expenses of RMB 445,000 (USD63,900), and ruled that the retailer would not be liable for indemnify the damages but is responsible for RMB 5,000 (USD718) in reasonable expenses.

The Beijing IP Court found that: First, the name of the goods that the plaintiffs Louboutin and Lanbuting requested for protection in accordance with Article 6(1) of the Anti-Unfair Competition Law was the name “red-soled shoes.” A decoration that has a certain influence is the red decoration used on the outer sole of women’s high-heeled shoes. The key to judging whether the parties have a direct interest in this case is to determine whether the interests contained in the trade name of the “red-soled shoes” involved in the case and the decoration of the red soles have the basis for substantive law protection for the parties. The evidence submitted by the two plaintiffs in this case can prove that the decoration and product name involved have established a stable correspondence with Louboutin among consumers, and it can be determined that the rights and interests of the decoration and product name involved belong to Louboutin. However, the evidence in the case can only prove that Lanbuting is an authorized agent of Louboutin, and cannot prove that the decoration and product names involved have established a stable corresponding relationship with Louboutin, and thus it cannot be proved that Lanbuting has a direct interest in this case.

Second, Louboutin submitted relevant evidence to show that it has actually sold footwear products in mainland China since 2011, with sales more than RMB900 million (USD129 million). Louboutin has been promoting “red-soled shoes” products since 2003 in mainland China. Many well-known media have reported Louboutin’s products nation-wide. Based on the above evidence, it was sufficient to prove that its “red-soled shoes” product and red sole decoration have a high market reputation and have established stable relationship with the relevant public and have the distinctive feature of distinguishing the source of the goods. Therefore, Louboutin’s “red-soled shoes” product name and the red sole decoration are product name and decoration with “certain influence” as referred to in Article 6(1) of the Anti-Unfair Competition Law. Wanlima used the same or similar logos with the brand name and red sole decoration of the “red-sole shoes,” which had certain influence with Louboutin, without authorization. Such use was enough to cause misunderstanding that Wanlima had some specific connection with Louboutin, and its behavior violated the provisions of Article 6(1) of the Anti-Unfair Competition Law and constituted unfair competition.

Since the determination of whether Lanbuting has an interest in this case is inseparable from the determination of the rights and interests of the “red-soled shoes” trade name and red sole decoration involved, and considering the principles of litigation economy and efficiency, the Beijing IP Court dismissed Lanbuting’s lawsuit, ordered Wanlima to stop the infringement, and compensated Louboutin for economic losses of RMB 5 million (USD718,000)  and reasonable expenses of RMB 445,000 (USD63,900), and held that the retailer to be responsible for reasonable expenses of RMB 5,000 (USD718).

3. Cisco successfully invalidated the “CSCO” mark

The appellant Beijing Heathco Clinical Oncology Research Foundation (“Heathco Foundation”) and the appellee, the CNIPA, and the third party in the original trial, Cisco Technology Corporation (“Cisco”) were involved in an administrative dispute over a trademark invalidation request. The Beijing High Court recently rejected the appeal and affirmed the first instance decision.

Disputed Mark	Cited Mark 1	Cited Mark 2	Cited Mark 3	Cited Mark 4	Cited Mark 5

Regarding the first issue in this case, whether the CNIPA deprived the co-owners of the Disputed Mark the opportunity to make a statement and reply during the administrative review of the invalidation, which damaged the procedural rights and interests of the co-owners of the Disputed Mark and constituted a procedural violation. The Beijing High Court found that the Heathco Foundation did not raise any objection to the procedure made by the accused ruling in the original litigation, so this court tried it on the basis of the principle of comprehensive review. The Disputed Mark was jointly owned by the Heathco Foundation, the China Society of Clinical Oncology Co., Ltd., and the Clinical Oncology Collaborative Professional Committee of the China Anti-Cancer Association. According to the “Reply to the Invalidation of the “CSCO and Design” mark with reg. no. No. 12359367 submitted by the Heathco Foundation to the CNIPA at the administrative stage, it can be seen that the co-owners of the Disputed Mark designated the Heathco Foundation as the representative, so it was legal for the CNIPA to deliver the relevant documents regarding the notification of invalidation of the Disputed Mark to the Heathco Foundation, which did not deprive the co-owners of the Disputed Mark the opportunity to make a statement and reply, and was not a procedural violation.

Regarding the second issue in this case, whether the Disputed Mark and the Cited Marks constitute similar trademarks of identical or similar services. The court found that “education” and other services approved and used by the Disputed Mark and the “educational information” and other services approved and used by the Cited Marks 1 to 5 fall into the same class according to the “Classification of Similar Goods and Services issued by the CNIPA.” There were many overlaps in terms of content, methods, and target consumers. The Disputed Mark consisted of the letters “CSCO” and a design, and its distinctive identification part was the letters “CSCO.” The Cited Mark 1 to 3 consist of the letters “CISCO.” The Cited Mark 4 consists of the letters “CISCO” and a design, and its distinctive identification part is the letters “CISCO.” The Cited Mark 5 consists of the letters “CISCOSYSTEMS” and a design, and its distinctive identification part is the letters “CISCOSYSTEMS.” There was only one word difference between the distinctive parts of the Disputed Mark and the Cited Marks 1 to 3 and the Cited Marks 4 and 5. The Disputed Mark and the Cited Marks 1 to 5 were similar in terms of text composition, pronunciation, and overall visual effect. When the Disputed Mark and the Cited Marks 1 to 5 were used in the same service in “education” or other similar services, it would be easy for the relevant public to believe that the service originates from the same subject or that there is a specific connection between the origin entities, which would result in confusion and misidentification. Although the Heathco Foundation has submitted some evidence of its use of the Disputed Mark, it was not enough to prove that the Disputed Mark can be distinguished from the Cited Marks 1 to 5 through use. Therefore, the Disputed Mark and the Cited Marks 1 to 5 constituted similar trademarks used on identical or similar services under Article 30 of the 2013 Trademark Law. The original judgment was correct and affirmed.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

September 7, 2022

1. Trademark rejection appeal cases will move fully online

On September 5, 2022, the CNIPA issued a notice that in order to further improve the digitization and greenify of trademark reviews, the CNIPA will fully move all rejection appeal cases online. Starting from November 1, 2022, trademark agencies should, in principle, submit electronic applications through the online trademark service system for rejection appeal and should not submit anything in paper.

2. MISS TOUR WORLD vs. MISS WORLD

Miss World LTD (“Miss World”) manages the international competition of Miss World Tourism based on its trademarks such as “Miss World in Chinese” (Reg. Nos. 3796247, 12346489), “MISS WORLD” (IRN. 816100, Reg. No. 12346493)” and filed an invalidation against the “Miss World Travel in Chinese and Figure” mark (“Disputed Mark”).

Disputed Mark	Cited Marks

The Beijing Intellectual Property Court and the Beijing Higher People’s Court found that the services other than animal taming approved for the Disputed Mark were the same as the approved services of Cited Marks 1 to 4 in organizing education or entertainment competitions, book publishing, and providing models for artists, or other similar services. The evidence provided by Miss World for the “Miss World in Chinese” and “MISS WORLD” marks proved that it has organized and held the first Miss World beauty contest since 1951 and has been held in many countries prior to the Disputed Mark’s application date. A total of 64 events have been held, and many events have been held in China, and some Chinese attendees have won the championship. Since 2001, a number of Chinese media have promoted and reported on the Miss World contest and used the “Miss World in Chinese” and “MISS WORLD” marks, which has resulted in a corresponding relationship between “Miss World in Chinese” and “MISS WORLD.” “Miss World in Chinese” and “MISS WORLD” were also known to the relevant public in China. The Disputed Mark consists of “Miss Tour World in Chinese and MISS TOUR WORLD” and design, of which the text “Miss Tour World in Chinese and MISS TOUR WORLD” was its main identification part. The Cited Marks “Miss World in Chinese” and “MISS WORLD” were completely included in the Disputed Mark and they were also similar in pronunciation, words composition and other aspects, which constituted similar marks. If the Disputed Mark coexists with the Cited Marks on the approved services other than the “animal taming” service, it would be easy for the relevant public to confuse and misidentify the source of the service. Most of the evidence submitted by Miss Tour World Company were formed from 2009 and later, which was not sufficient to prove that the Disputed Mark has enjoyed certain fame before the date of application of the Cited Marks, so that it can be distinguished from Cited Marks. At the same time, the evidence submitted by Miss World can prove that before the Disputed Mark’s application date, the trade names “MISS WORLD” and “Miss World in Chinese” used on the “Organizing Beauty Pageant” service have already enjoyed certain fame, and the main identification part of the Disputed Mark completely includes Miss World’s prior used trade name. The services approved and used by the Disputed Mark were closely related to the “organizing beauty pageant” service provided by Miss World in terms of service content and objects, and should be identified as the same or similar services. Therefore, the registration of the Disputed Mark constituted the situation under Article 32 of the 2013 Trademark Law where “a trademark application shall not damage the existing prior rights of others.”

3. A “Playlist in Chinese” trademark was ruled as a deceitful trademark

The “Playlist in Chinese” mark with reg. no. 11934833 (“Disputed Mark”) owned by Hangzhou NetEase Cloud Music Technology Co., Ltd. (“NetEase”) was approved for registration on August 14, 2015, and was approved for use in “electronic publications (downloadable); computer programs (downloadable software); computer software (already downloaded)” recording); computer game software; mobile phones; network communication equipment; cartoons; recorded computer programs (programs); cameras (photography)” and other goods. Huijia Asia Co., Ltd. (“Huijia”) filed an invalidation against the Disputed Mark. The Beijing High Court found that the Disputed Mark can be understood as a collection of songs summarizing the names of song works, performers and other information according to different needs and preferences. Data processing activities such as information data collection, selection, sorting, etc., whose application involve entertainment, education, and other activities. Using such a mark on the said data processing activities or entertainment, education-related products would be easy to confuse relevant consumers that such a mark was describing the said data processing activities, which made it difficult to identify such a mark to distinguish the source of the goods. The courts held that the Disputed Mark lacked the distinctive characteristics that a trademark should have, which constitutes the situation in the second item of Article 11, Paragraph 1 of the 2013 Trademark Law. When the above-mentioned products were not related to music or song-related information data processing activities, music or song-related entertainment and educational activities, the “Playlist in Chinese” mark was likely to cause the relevant public to misunderstand the characteristics of the said goods and constituted the circumstances in the provisions of Article 10, Paragraph 1, Item 7 of the 2013 Trademark Law. The understanding of the meaning of a symbol should be based on the general cognitive habits and abilities of the relevant public. NetEase’s claim that the “Playlist in Chinese” mark had a special meaning is unfounded, and the evidence provided by NetEase was insufficient to prove that the Disputed Mark has been used to obtain recognition as a trademark. The distinctive features of the Disputed Mark were not enough to prove that it has established a unique correspondence with it, and the court did not support the relevant claims of NetEase. Accordingly, the Beijing High Court reversed the first-instance judgment made by the Beijing Intellectual Property Court and held that the trademark should be invalidated.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Weekly China Trademark News Updates

September 2, 2022

1. China’s trademark filings show negative growth for the first time in 15 years

From January to June 2022, the CNIPA received a total of 3.9 million trademark applications, a year-on-year decrease of 18.75%. Among them, there were 2.6 million on goods, a year-on-year decrease of 18.95%, and 1.3 million on services, a year-on-year decrease of 18.36%.

The data shows that the most popular classes are Class 35 for advertising sales, Class 30 for food, Class 9 for electronic equipment,a Class 29 for meat, Class 43 for catering, Class 25 for clothing, shoes, and hats, and Class 33 for wine, Class 5 for pharmaceuticals, Class 41 for education and entertainment and Class 42 for technology services., a year-on-year decrease of 9.88% to 33.45%.

2. The Beijing IP Court issued a report on “Transitional Guiding Period” for Online Case Filing

With the normalization of epidemic prevention and control, in order to fully implement key tasks such as optimizing business environment, help the right owners to enforce their rights, and build a more complete litigation and trial platform, the Beijing Intellectual Property Court issued, on July 25, 2022, the “Announcement on Comprehensive Implementation of Online Filing of Administrative Cases for Patent and Trademark Right Granting and Verification.” From September 1, 2022, online filing will be fully implemented in administrative cases of patent and trademark right granting and verification in which an agent is entrusted to participate in the litigation. In the nearly one month since the release of the Announcement, there were 4,974 first-instance cases directly filed online to the Beijing IP Court, accounted for 66% of the total first-instance cases.

3. The Beijing High Court reversed the CNIPA’s ruling and the first-instance judgment, finding that the coexistence of “Zimeitang” and “Shiseido in Chinese” will not cause confusion and misidentification

Shiseido Co., Ltd. (“Shiseido”) cited the “Shiseido in Chinese” trademarks on October 14, 2019 to invalidate the “ZIMEITANG in Chinese ” mark with reg. no. 28197986 registered and used by Beijing Zimeitang Co., Ltd. (“Zimeitang”) on cosmetic goods in Class 3. The CNIPA found that the two parties’ marks were similar and in favor of Shiseido.

Disputed Mark	Cited Mark 1	Cited Mark 2

Zimeitang appealed the unfavorable decision with the Beijing IP Court. Both parties submitted a large amount of evidence to prove the fame and use of their respective trademarks during the CNIPA review and the court trial proceedings. The Beijing IP Court found that the evidence provided by Shiseido proved that the Cited Marks had a high reputation among Chinese consumers in cosmetics and other goods before the Disputed Mark’s application date, especially that the Cited Marks were recognized as famous marks on “cosmetic” goods to the public by the original Trademark Office in as early as April 2009. The Disputed Mark was similar to the Cited Marks in terms of font, pronunciation, etc. Although Zimeitang has provided a large amount of use evidence to prove that the Disputed Mark has been used for many years and has formed a corresponding relationship with it, given that the Cited Marks were registered earlier and has a high reputation, it would be difficult for the relevant public to distinguish the two when paying general attention, so the CNIPA decision should be affirmed.

Zimeitang appealed the first-instance judgment to the Beijing High Court. In the second-instance procedure, it further submitted evidence to prove the use and popularity of its trademark.

The Beijing High Court found that the Disputed Mark was composed of the Chinese characters “ZI MEI TANG,” while the Cited Mark 1 and 2 are composed of the Chinese characters “Shiseido in traditional Chinese” and ” Shiseido in simplified Chinese” respectively. Although all trademarks contain the character “Tang in Chinese,” based on common market habits, the character “Tang”, which could mean hall,  is often used as a suffix for trademarks or trade names. It does not play a role in distinguishing and identifying, so it does not constitute a distinctive identification part of the above-mentioned trademarks. The distinctive characters “Zimei in Chinese” of the Disputed Mark were completely different from the characters “Zisheng in traditional Chinese and “Zisheng in simplified Chinese” in the Cited Marks 1 and 2, and their meanings were also significantly different. The difference was obvious in the overall comparison, and the relevant consumers can distinguish them. Although Shiseido’s Cited Marks have a high reputation, the evidence provided by Zimeitang can also prove that the Disputed Mark has been used on a certain scale and has obtained a certain popularity and influence. The coexistence of the Disputed Mark and the Cited Marks on the approved goods would not cause confusion and misunderstanding, so the registration of the Disputed Mark did not violate Article 30 of the Trademark Law2013. The CNIPA decision and original judgment were incorrect and the Beijing High Court shall correct them. Since the new evidence provided by Zimeitang in the lawsuit was not the basis for the ruling of CNIPA decision, the CNIPA was not at fault and Zimeitang was still responsible for the court fees.

4. Frescobaldi finally removed a similar mark after the court determined that tea drinks, sweets (candy), etc. were similar to wine

Marchesi Frescobaldi Societa Agricola S.R.L. (“Frescobaldi”) filed successively an opposition, an invalidation, first instance and second instance administrative lawsuits to remove the “Frescobaldi” trademark in Class 30 for “tea-based beverages; confectionery [candy]; chocolate; pastries; bread; biscuits; rice-based snack food” from the registry.

Disputed Mark	Cited Marks 1 and 2	Cited Marks 3 – 6
Class 30:  Tea-based beverages; Confectionery [candy]; Chocolate; Pastries; Bread; Biscuits; Rice-based snack food	Class 29: Oil, extra virgin olive oil. Class 33: Wines, sparkling wines, liqueurs	Class 29: Edible fats; Fruit, preserved; Vegetables, preserved, etc. Class 33: Wine; Alcoholic beverages, except beer; etc. Class 43: Bar and restaurant services

Both CNIPA’s invalidation decision and the Beijing IP Court’s first instance decision found that the Disputed Mark did not violate Article 30 or Article 44(1) of the Chinese Trademark Law. Frescobaldi appealed to the Beijing High Court.

The Beijing High Court found that according to the facts proved by the evidence on record, Frescobaldi’s FRESCOBALDI winery has a long history, and the “FRESCOBALDI” wine produced by it has been sold and promoted in mainland China through Chinese distributors since 2006. In terms of wine products, for the relevant Chinese public, “Hua Si Die in Chinese” and “FRESCOBALDI” have formed a commercial correspondence through long-term use. The registrant of the Disputed Mark, as a relevant public in China, deliberately applied for the registration of the “Frescobaldi” trademark, which was identical to the Cited Marks 1 and 2 and has a corresponding relationship with the Cited Marks 3 to 6. Although the Disputed Mark was used sparingly, it was not enough to eliminate the subjective bad faith of its application for registration.

In this case, Frescobaldi did not submit evidence of the use of the Cited Marks for goods in Class 29. Considered that tea drinks, sweets (candy) and other goods approved and used by the Disputed Mark were significantly different from goods in Class 29, so these marks’ coexistence in the market was not enough to create a likelihood of confusion. However, the evidence in the case can prove that Frescobaldi’s “FRESCOBALDI” wine has gained a certain reputation in the Chinese market after being promoted and used. Tea beverages, sweets (candy) and other goods designated by the Disputed Mark and the Cited Marks’ approved goods for wine and other goods in Class 33 were commonly used in foods in daily life, and the two were similar in function, use, sales channels, consumer groups, etc. According to the circumstances of this case, these goods could be categorized as similar goods. The Cited Marks “Hua Si Die in Chinese” and “FRESCOBALDI” were highly distinctive, and the Disputed Mark was identical or corresponded with Cited Marks and should be judged as similar marks. If the Disputed Mark and the Cited Marks were used on the above-mentioned goods, it would be easy for the relevant public to confuse and misunderstand the source of the goods. Therefore, the Disputed Mark constituted as a similar mark used on identical or similar goods, and the CNIPA decision and the first instance court judgment were incorrect and this court has corrected them.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China