Weekly China Trademark News Updates

August 23, 2022

1. The “Honeysuckle in Chinese” trademark infringement case reversed: the original meaning of a mark in the public domain cannot be exclusively owned by an entity or an individual

On June 24, 2022, the Zhongshan Intermediate Court of Guangdong reversed a first instance judgment and found that the use of the “Honeysuckle in Chinese” logo on the toilet fragrance products produced by the defendant Jiangxi Chuangmei Industrial Co., Ltd. (“Chuangmei”) did not constitute an infringement of the exclusive trademark right of the plaintiff Shanghai Bili Cosmetics Co., Ltd. (“Bili”).

Bili is the owner of the “Honeysuckle in Chinese” trademark with reg. no. 603857. The toilet fragrance produced by Chuangmei was marked with the words “Honeysuckle in Chinese” in a large font horizontally on its label, and the words “Cong Meichen” were marked above the words “Honeysuckle in Chinese” in a smaller font size. Bili sued Chuangmei for trademark infringement and required Chuangmei to immediately stop the production and sale of the infringing goods.

The second instance court found that the “Honeysuckle in Chinese” mark with reg. no. 603857 involved in this case directly represented the main raw materials of the goods and other characteristics, and the trademark owner could not monopolize the original meanings of the trademark signs that belonged to the public domain. When Chuangmei used the word “Honeysuckle Toilet Fragrance in Chinese” on the accused infringing toilet fragrance, it also marked its own registered trademark of “Cong Meichen” above the word “Honeysuckle in Chinese.” “Honeysuckle” usually refers to the name of a plant, which has the effect of clearing away heat and detoxification, toilet fragrance is a generic trade name, and the main ingredient of the alleged infringing toilet fragrance is honeysuckle extract. Under this circumstance, Chuangmei’s use of the words “Honeysuckle toilet fragrance” on the alleged infringing product was not used as a trademark of its own products, and the use was only to illustrate or describe the characteristics of its own products. In the user guide or product description, Chuangmei did not directly use the “Honeysuckle in Chinese” mark with reg. no. 603857, nor did it prominently use the word “Honeysuckle in Chinese.” The existing evidence was not enough to prove that Chuangmei maliciously used the “Honeysuckle in Chinese” trademark owned by Bili. The use of the word “Honeysuckle Toilet Fragrance in Chinese” on the toilet fragrance products produced by it was not a trademark use of other people’s descriptive trademark in order to describe the use of its own products, which was a legitimate use of trademarks. Chuangmei’s actions did not constitute an infringement of the exclusive right of Bili’s registered trademark.

2. Wuhan Yihuiyin Technology Co., Ltd. v. Guangzhou Yinuo Catering Management Co., Ltd., Qiao Wenlong, Yin Liangliang regarding trademark infringements and unfair competition disputes

On May 20, 2022, the Guangzhou Intellectual Property Court rendered a second instance judgment over trademark infringement and unfair competition disputes between Wuhan Yihuiyin Technology Co., Ltd. (Yihuiyin) and Guangzhou Yinuo Catering Management Co., Ltd. (Yinuo), Qiao Wenlong and Yin Liangliang, and ordered the defendants to compensate the plaintiff for economic losses and reasonable expenses totaling RMB 1 million (USD146,000).

The first instance court found that the “Yihetang” and “” logos used by Yinuo in the franchise contracts and authorized franchisees in store decoration and operation were identical to Yihuiyin’s prior trademarks “Yihetang” and “” in terms of goods and services and trademark composition. The use of the accused infringing goods can easily cause confusion and misunderstanding, which constituted trademark infringement. Meanwhile, the evidence submitted by Yihuiyin can prove that the overall design of its milk tea cup decoration, store signboard, store decoration, and clerk clothing constitutes “decoration with certain influence.” The decoration elements of the stores and goods used by the stores operated by the franchisees of Yinuo were basically identical to those of Yihuiyin. Yinuo’s actions caused confusion to the source of services and constitute unfair competition.

The second instance court found that: taking into account that the defendant, Yinuo, had malicious intentions of taking advantage, and aggressively launched business to attracting investment and franchising without a valid trademark registration. Such actions constituted as infringement from the source and the scale of its infringements were large, caused severe damages, the second instance court increased the amount of compensation from the RMB300,000 (USD43,824) to RMB1 million (USD146,000).

3. CNIPA working group joined platform-based trademark agency to carry out “counseling” supervision

In recent years, while the platform-based trademark agencies have brought technological innovation and facilitated trademark services, there have also been irregular operations. The CNIPA selected some platform-based trademark agencies as samples and provided guidance to effectively regulate agency service behavior.

In the governance of platform-type trademark agencies, the CNIPA has improved the supervision efficiency through all-round “counseling” inspection and supervision. In view of the business model and main risks of platform-based trademark agencies, guide them to establish and improve working mechanisms such as bad faith application screening, bad faith application notification, conflict of interest review, and online application de-duplication verification.

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Weekly China Trademark News Updates

August 17, 2022

1. Tsingtao Beer prevailed against counterfeit beer in an administrative litigation

The Shandong High Court rendered the second instance administrative judgement against the appellant, Pingdu City Yue Yong Yue You Condiments Wholesale (“Yue Yong Yue You”) and in favor of the Qingdao Administration for Market Regulation (“Qingdao AMR”) and the third party in the original trial, Tsingtao Brewery Co., Ltd. (“Tsingtao Brewery”).

On May 18, 2021, the Qingdao AMR conducted a law enforcement inspection on Yue Yong Yue You and found that its operation of “Qingqi brand special beer” constituted unauthorized use of others’ identical or similar logos with packaging and decoration that had certain influences, which amounted to unfair competition and in violation of Article 6 Paragraph 1 of the Anti-Unfair Competition Law that stipulates “business operators shall not carry out the following confusing acts: (1) unauthorized use of others’ identical or similar product names, packaging, decoration, etc. that have certain influences.” An administrative penalty decision was made on August 31, 2021, and Yue Yong Yue You was ordered to correct its illegal acts and imposed a fine of RMB 537,750 (USD79,223).

The first instance court found that the packaging of Qingqi brand special beer used by Yue Yong Yue You was similar to the outer packaging of Tsingtao Beer’s “500ml Classic Canned Tsingtao Beer,” except for the internal patterns, words, and trademarks in the middle of the runway figure, and that the content of the text on the side of the can was slightly different. The overall color matching of the can and the design arrangement of specific details were similar to the design characteristics of Tsingtao Beer products. Combined with the attributes of the product as a fast-moving consumer product, it was easy to cause confusion among the relevant public. Yue Yong Yue You admitted that they sold the infringing products and their acts constituted unfair competition. The Qingdao AMR’s said decision was not incorrect.

The Second Instance Court affirmed the first instance judgment and clarified that the “operator” as the subject of “confusion” stipulated in the Anti-Unfair Competition Law includes both the manufacturers engaged in the manufacture of goods and the sellers or service provider who engaged in the goods business. Meanwhile, it was clarified that when a business operator knows or should know that the products sold are counterfeit products with a unique name, packaging and decoration of a well-known product, the “confusion” acts implemented by such business operator shall be punished according to law.

2. Xiaomi prevailed in a trademark infringement and unfair competition dispute against an individual

On June 23, 2022, the Shanghai Intellectual Property Court rendered a first instance judgement against Zhou Qiujun and Shanghai Xunmeng Information Technology Co., Ltd. (“Xunmeng”) in favor of Xiaomi Technology Co. Ltd. (“Xiaomi Technology”) and Xiaomi Communication Technology Co., Ltd. (“Xiaomi Communication”) in a trademark infringement and unfair competition dispute. Zhou was ordered to compensate the plaintiffs for economic losses and reasonable expenses totaling RMB 500,000 (USD73,661).

After hearing, the court held that the “Xiaomi” mark owned by Xiaomi Technology has continued to be used since its approval for registration. The plaintiff and its affiliates invested a lot of money to promote the Xiaomi brand and won many honors, and the cited trademark can be recognized as a well-known mark because it was known to the relevant public in China as of 2020. When Zhou sold the four alleged infringing products, namely bathroom ceiling heater, heater fan, flat lamp, and cool bar in his store, logos such as “Xiaomi,” “Xiaomi Home Bathroom Ceiling Heater,” “Xiaomi Home Heater Fan,” “Xiaomi Home Flat Lamp,” and “Xiaomi Home Cooling Bar” were prominently used on the product name, product photo, product detail page, product body, outer packaging, and instruction manual. Such use of the “Xiaomi” logo constituted as copying and imitating the plaintiffs’ “Xiaomi” well-known mark on  dissimilar goods, and unfairly misappropriated the “Xiaomi” mark’s market goodwill, misled the relevant public, damaged other’s legitimate interest and constituted trademark infringement.

Defendant Zhou Qiujun showed in his store video that it was a “Xiaomi | Life Appliances Specialty Store,” which would mislead the relevant public into believing that the products sold by the store were from the plaintiffs or had an association with the plaintiff, which had the intention to take advantage of the plaintiffs’ business reputation and reputation of its goods to enhance competition. Such acts violated the good faith principle and constituted unfair competition.

3. China’s first “100,000 Why” trademark protection case finally prevailed in its final trial

In June 2017, Shanghai Century Publishing Co., Ltd. Children’s Publishing House registered the trademark of “100,000 Why 100,000 WHYS and Design,” and the approved goods were books, printed publications, etc. in class 16. On January 27, 2019, the trademark was assigned to Shanghai Children’s Publishing House Co., Ltd. (“Children’s Publishing Company”).

The Children’s Publishing Company found that the cover of the book “100,000 Whys” in the Jiangqiao Wanda Store of the Xinhua Bookstore of Sichuan Tiandi Publishing House Co., Ltd. marked “100,000 Whys” and “Golden Classic for Chinese Children” in a relatively small font, and there are a total of 15 books (sets) on Jingdong Tiandi Publishing House, Tiandi Publishing House official website, Dangdang Tiandi Publishing House, Tmall Tiandi Publishing House flagship store, etc. marked with the description “100,000 Wy is a classic reading for generations… This book is an upgraded version of 100,000 Whys.” At the beginning of 2020, Children’s Publishing Company initiated the first lawsuit against Tiandi Publishing House and Shanghai Xinhua Media Chain Co., Ltd. Xinhua Bookstore Jiangqiao Wanda Store in Shanghai Putuo District Court. The Shanghai Putuo District Court rendered a first-instance judgment ordering the defendant Tiandi Publishing House and others to immediately stop trademark infringement and unfair competition, and compensate the plaintiff for economic losses and reasonable costs of RMB600,000 (USD88,393). The Shanghai Intellectual Property Court then rejected the appeal and upheld the original judgment.

The Shanghai Intellectual Property Court held that “100,000 Whys” itself has an inherent meaning, but it was not equivalent to the generic name of the relevant goods. Question-and-answer popular science books included the “100,000 Whys” series of books involved in this case, but “100,000 Whys” were not yet the same as question-and-answer books. The prominent use of “100,000 Whys” on the cover of relevant books by Tiandi Publishing House was not a fair use to explain the content of the book, but constituted as trademark use to identify the source of the book, and objectively plays the function and role of identifying the source of the book. It was easy to cause confusion and misunderstanding to book buyers about the source of books or the relationship between Tiandi Publishing House and Children’s Publishing House.

Among the 14 books involved in the case by Tiandi Publishing House, 9 of them were first published in June 2017, before the Children’s Publishing House obtained the trademark registration, but at this time, the Children’s Publishing House’s “100,000 Whys” series has obtained a high reputation and goodwill in the field of children’s popular science books after long-term use and publicity. It was widely known by the public, and has the attributes of identifying the source of a series of books. Therefore, it was not inappropriate for the first instance court to determine that it should be protected as the unique name of a fmous good.

Tiandi Publishing House used the expression “100,000 Whys is a classic reading that has influenced generations… This book is an upgraded version of 100,000 Whys” without justifiable reasons, which would easily lead readers into believing that Tiandi Publishing House’s book was an upgrade of Children’s Publishing House’s “100,000 Why” series of books, which constituted false advertising.

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Weekly China Trademark News Updates

August 9, 2022

1. Dual-track system compensation of RMB 1.86 million against a trademark infringer for infringing the “JUKI” mark

The Shanghai Intellectual Property Court recently made a final judgment on the trademark infringement dispute between Juki Corporation. (“Juki”) and Zhejiang Jukai Sewing Technology Co., Ltd. (“Jukai”), finding that Jukai’s acts constituted trademark infringement and shall compensate Juki for economic losses of RMB 1.86 million (USD275,270).

Cited Marks

Juki registered the “JUKI” marks (“Cited Marks”) on May 30, 1981, September 12, 2003, and December 29, 2005, respectively. The Cited Marks were approved in Class 7 for “machines for sewing, pedal drives for sewing machines, sewing machines” and other goods. Jukai marked the “JUKAI” logo on the allegedly infringing sewing machines and product packaging for sell in the “Huiyou Sewing Equipment Store” in Wuhu City, Anhui Province. Jukai highlighted the use of “JUKAI” and “JUKAI and Shield Logo” on sewing machines, brochures and business cards in an exhibition in Shanghai. Jukai prominently marks the “Jukai in Chinese and JUKAI” logo on the industrial sewing machines and cargo packing boxes declared by at the Beilun Customs for export to Morocco and at the Ningbo Customs for export to India.” Jukai also extensively used the “JUKAI” logo on www.cn-jukai.com and its webpages. Jukai prominently positions “JUKAI” in the company introduction and promotional videos on its WeChat official account and uses “JUKAI” as its avatar.

The first instance court held that Jukai infringed Juki’s trademark. Jukai was unsatisfied with the judgement and appealed to the Shanghai IP Court. The Shanghai IP Court affirmed that Jukai infringed Juki’s trademark. The Shanghai IP Court found that the “JUKAI” logo was similar to Juki’s three registered trademarks. Juki’s Cited Marks enjoy high reputation, and Jukai, as a competitor in the same industry, should’ve knew about it, but it still used the “JUKAI” and “Jukai in Chinese and JUKAI” logos. Jukai also uses the same model number, product layouts, logo location, and labeling method that were highly similar to Juki’s products, which showed its subjective intention of infringement. Regarding the “dual-track system of compensation,” first, taking into account the subjective intention of Jukai, the scale and circumstances of infringement, and the specific sales situation that can be identified, punitive damages shall be applied to the part of export orders for which the specific sales situation can be identified. Second, consider Jukai’s domestic manufacturing and sales, combined with factors such as intentional infringement and seriousness of its infringement, statutory compensation shall be applied for sales activities that cannot be identified.

2. Dorco Co., Ltd. obtained RMB 8 million in compensation as stipulated in its agreement with the defendants

The Zhejiang High Court recently rendered a trademark infringement judgement and ordered RMB 8 million (USD 1.18 million) in economic losses and reasonable expenses for Dorco Co., Ltd. (“Dorco”) and against Jiangxi Xirui Blade Manufacturing Co., Ltd. (“Jiangxi Xirui”), Shanghai Xirui Blade Co., Ltd. (“Shanghai Xirui”), Zhangjiagang City Jinfeng Town Hexing Sandeli Hardware Tools Factory (“Hexing Sandeli”), Shaoxing Beisujie Commodity Co., Ltd. (“Beisujie”) and Shaoxing Jijie E-Commerce Co., Ltd. (“Jijie”).

Cited Marks

Dorco registered the “DORCO” marks (“Cited Marks”) on September 20, 1991 and May 14, 2010, respectively. The Cited Marks were approved in Class 8 for “razors, razor blades, and knives with handles” and have obtained a certain reputation in the domestic market. Shanghai Xirui registered the “DOREO” mark on March 21, 2015. The “DOREO” mark was approved in Class 8 for “planing blades, sharp tools (hand tools)” and other goods. On October 15, 2019, Dorco signed a settlement agreement on Jiangxi Xirui’s mass production of counterfeit goods that infringed Dorco’s registered trademarks. The agreement stipulated that if Jiangxi Xirui and its related parties would repetitively infringe Derco’s trademark right, the compensation shall be ten times the value of the genuine goods unconditionally. After investigation by Dorco, Dorco found that Jiangxi Xirui disregarded the said stipulations in the settlement agreement and continued to carry out its infringing acts intermittently. Moreover, the said counterfeit goods were sold by Hexing Sandeli, Beisujie, and Jijie through Alibaba or AliExpress. Jiangxi Xirui did not object to its act of manufacturing and selling the accused infringing goods, and admitted that the accused infringing products sold by Hexing Sandeli and Beisujie were purchased from them. During the period from August 3, 2020 to April 12, 2021, under the supervision of a notary public, Dorco inspected and sealed the packages of the allegedly infringing products for 15 shops of Hexing Sandeli Factory and Beisujie on the Alibaba, Aliexpres, Taobao, and Pinduoduo.

The court found that the existing evidence provided by Dorco was not enough to prove that the products it manufactured and sold had a certain influence, so the defendant’s acts did not amount to unfair competition. The accused infringing razor blade was the same product as the razor blade goods approved for use by Dorco’s said Cited Marks. Moreover, the conspicuous positions on the inner and outer packaging of the accused infringing goods bear the “DORCO” logo and words. The court comprehensively determined that Jiangxi Xirui and Shanghai Xirui used the accused infringing logo and sold the accused infringing goods, which constituted trademark infringement. In addition, both Hexing Sandeli and Beisujie recognized that they had sold the alleged infringing goods, and their infringements also constituted trademark infringements.

3. The Beijing High Court: Massive squatting of well-known trademarks constitutes other illegal means of registration

The Beijing High Court recently made a judgment that rejected the appeal petition filed by Dongfang Mingri (Jinjiang) Import and Export Co., Ltd. (“Dongfang Mingri”) and upheld the first-instance judgment. The Disputed Mark “Bin Li Kai Le Zhuang Yuan in Chinese” was declared as invalid according to Paragraph 1 Article 44 of the Trademark Law.

Disputed Mark

The first-instance judgment of the Beijing Intellectual Property Court found that: Dongfang Mingri and its affiliated companies have registered more than 200 trademarks in various classes, including “B and Design, “BENTLEY,” “Bentley in Chinese,” and “Penfolds in Chinese” and other trademarks that were identical or similar to other name brands. They have also registered trademarks of famous wine brands or sports celebrities in many classes. Said filings have obvious subjective intentions of copying and plagiarizing others’ well-known trademarks, improperly occupying public resources, violating the principles of public order and good customs, and detrimental to the market environment of fair competition. After the second-instance trial, the second instance court further found that based on the first-instance judgment, Dongfang Mingri did not provide a reasonable explanation for the design sources of the more than 200 trademarks it applied for registration under its name. Although it submitted agency contracts and sales invoices, the number of these contracts and invoices were limited, and were not only for the Disputed Mark. It was difficult to determine that Dongfang Mingri has actual intention to use the Disputed Mark and continued to use it. The application of Dongfang Mingri has obviously exceeded the normal production and operation needs, disrupted the order of trademark registration management, improperly occupied public resources, and harmed public interests.

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Weekly China Trademark News Updates

August 3, 2022

1. Vans is awarded for RMB 2.71 million based on bad faith infringements and treble damages

The Wenzhou Intermediate Court of Zhejiang recently made a second instance trademark infringement judgment between appellant Ruian Guangzu Shoe Factory (“Guangzu”), Zou Zhengbin, appellee Vans Inc., and defendants Ningbo Lehao Electronic Commerce Co., Ltd., Suzhou Baiyiju Apparel Co., Ltd. and Yongxiu County Chuangxing Beauty Co., Ltd. The court rejected the petition to appeal and affirmed the lower court’s judgment.

Disputed Mark	Cited Mark
	Reg. No. 8606383

First, regarding whether the accused infringing goods infringed the exclusive rights of Vans’ registered trademark with reg. no. 8606383, the accused infringing goods were the same as the footwear goods approved for use by the Cited Mark. The logo used was similar to the overall structure and line shape of the Cited Mark, with only slight differences at the end of the line on the right side, which was likely to cause confusion among the relevant public and constitute trademark infringement. Although Guangzu and Zou Zhengbin claimed that the alleged infringing logo would not cause confusion among the relevant public regarding the source of the goods, the court did not support such claim because they did not provide sufficient evidence.

Second, regarding the liability of Guangzu, Vans conducted notarized purchases of the alleged infringing goods on Tmall store and all were marked with the accused infringing logo on the side of the shoes, and all labled that the manufacturer was Guangzu. The shoes and shoe uppers displayed in the 29 product links in 14 Tmall stores all attached the same accused infringing logo as those products purchased during the notarized purchase. The product’s features from the 14 Tmall stores and those from the notarized purchase were highly similar, the legal representative of the business entity was also the same. The first instance did not err in calculating the sales volume of the Tmall product links as the sales volume of Guangzu. The product display pictures and product details in the above links were all shoes with the alleged infringing logo. Guangzu and Zou Zhengbin claimed that some shoes were sold without the accused infringing logo and should be deducted from the sales amount, but such claim was not supported because they did not provide sufficient evidence to support their claim. Manufacturers and retailers should bear corresponding responsibilities for their respective infringements. Guangzu and Zou Zhengbin’s claim that there was repeated compensation in the first instance lacked supporting evidence and the court did not support their claim. As for the determination of the sales price of Guangzu’s alleged infringing products, the sales price in the administrative penalty was only the selling price of the batch of goods seized by the administrative department, and cannot be used to determine the price of the alleged infringing goods sold on the accused Tmall store. The accused Tmall store was the main body of online sales. The first instance determined its sales price based on the average selling price of the accused infringing goods found on Guangzu’s 1688 e-commerce platform store was not improper and this court upheld such finding. Guangzu was the manufacturer and seller of the alleged infringing goods, and had received two administrative penalties for infringing the Cited Mark. After the second administrative penalty, it continued to infringe using other entities under its control with obvious subjective bad faith. The first instance had factual and legal basis for using the sales amount deducting the base price as the calculation method of its profit and awarded treble punitive damages. This court upheld the first instance decision.

Third, regarding reasonable expenses, Vans paid notarization fees for the rights protection in this case, and hired attorneys. It was not inappropriate to determine the reasonable rights protection fee of RMB20,000 (USD3,000) in the first instance. Vans sued Guangzu and investor Zou Zhengbin to bear joint compensation liability. The first instance judgment that Zou Zhengbin should bear supplementary compensation liability for the debts was to reduce Zou Zhengbin’s responsibility and did not overstep the scope of Vans’ claims.

2. Obtaining trademarks without good faith and initiates infringement lawsuits constitute abuse of rights

The Beijing Intellectual Property Court recently rejected a second instance appeal petition for a trademark infringement case between appellant Ma and appellee Shenzhen Chow Tai Fook Online Media Co., Ltd. (“Shenzhen Chow Tai Fook”), and the first instance defendant Beijing Jingdong SanbailuShidu Electronic Commerce Co., Ltd. The Beijing IP Court affirmed the lower court decision.

The court found that:

1. Shenzhen Chow Tai Fook’s use of “Jiao Ren in Chinese” on the disputed products was justified

 First, as far as the entity relationship is concerned, Shenzhen Chow Tai Fook is one of the subsidiaries of Chow Tai Fook Jewelry Group. The alleged infringing goods sold by Shenzhen Chow Tai Fook were the “Chow Tai Fook” brand “Jiao Ren in Chinese” series of diamond jewelry, which originates Chow Tai Fook Jewelry Group. Shenzhen Chow Tai Fook, as an affiliated entity, had the basis as an affiliated entity in the promotion and use of the “Jiao Ren in Chinese” series of diamond jewelry.

Secondly, in terms of the popularity of the cited mark, Shenzhen Chow Tai Fook provided evidence that the “Chow Tai Fook Jiao Ren Series” was used before the application date of Ma’s mark “” with reg. no. no. 6703145 and had obtained certain popularity.

Third, as far as the scope of use is concerned, “within the original scope of use” stipulated in Article 59, paragraph 3 of the Trademark Law should not be strictly applied to only the original scale of business and the original scope of goods circulation, but should be comprehensively determined by the popularity, usage, and nature of goods or services a prior user using the corresponding logo. According to the facts affirmed in this case, Ma named Chow Tai Fook Gold (Shenzhen) Company as a defendant in 2018 by claiming that Chow Tai Fook Gold (Shenzhen) Company launched the “Jiao Ren in Chinese” series diamond ring and pendant on its website on June 12, 2018. The People’s Court of Yantian District, Shenzhen, Guangdong Province issued a civil judgment affirming Chow Tai Fook Gold (Shenzhen) Company had actually used “Jiao Ren in Chinese” as the name of the series of products before Ma applied for the disputed trademark, and had prior rights, so Ma’s claim was rejected. After investigation, the judgment has come into force. Given that the disputed goods in this case sold by Shenzhen Chow Tai Fook were diamond jewelry, and the evidence in the case was sufficient to prove that the “Chow Tai Fook Jiao Ren Series” diamond jewelry has been used before the application date of Ma’s trademark with reg. no. 6703145, and it had obtained a certain reputation. In combination of the above facts, this court found that the promotion and use of the “Jiao Ren” series of diamond jewelry by Shenzhen Chow Tai Fook had the basis as a related entity, and its goods circulation came from prior users, so it can be determined that the goods sold by Shenzhen Chow Tai Fook still belong to Chow Tai Fook, and falls within the original scope of use of the “Jiao Ren in Chinese” series of diamond jewelry.

Finally, in terms of use, whether the affiliated company of Shenzhen Chow Tai Fook used Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry first, or Shenzhen Chow Tai Fook used Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry in sales, both uses were a combination of “Jiao Ren in Chinese” and “Chow Tai Fook.” According to the evidence provided by Ma for his use of the trademark no. 6703145, it was not enough to determine that the combined use of the trademarks “Jiao Ren in Chinese” and “Chow Tai Fook” would cause the relevant public to mistakenly believe that the goods involved originated from Ma. Therefore, it was not necessary to add distinguishable features on the disputed mark.

2. Ma’s application for registration of the disputed mark violated the principle of good faith

First, in terms of trademark distinctiveness, Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry pictures used the “Jiao Ren in Chinese” logo composed of letters and Chinese characters in many promotions in magazines in 2006, which had a high degree of distinctiveness. When comparing Ma’s trademark with reg. no. 6703145 with the trademark used in Chow Tai Fook’s “Jiao Ren in Chinese” series, both marks used similar combinations of letters and Chinese characters and adopted the same letter arrangement, which could not be seen as incidental.

Second, from the perspective of subjective intentions, the evidence in the case can prove that Chow Tai Fook’s “Jiao Ren in Chinese” series diamond jewelry products were launched in 2006 and were used for a long-term and continuous use with publicity. On May 6, 2008, Ma applied for the disputed mark when Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry products and their logos were already well-known, and Ma should have known, but applied for registration of a trademark similar to the logo used by Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry products, which was subjectively difficult to be seen as to have goodwill.

Third, from the perspective of use after registration, the evidence submitted by Ma can only prove that he has licensed the trademark and cannot prove that he has used or has the intention to use the disputed trademark in the approved classes according to the Trademark Law, which does not conform with the principle of applying for registration of a trademark based on actual needs in the Trademark Law. Ma cannot prove that he registered the disputed mark for the purpose of actual use.

Finally, Ma also applied for and registered other name brands as trademarks. Although Ma denied it, it has been verified that the registrants of these trademarks were Ma, the registrant’s address was the same as Ma’s address recorded for the disputed mark. Therefore, the first instance court did not accept Ma’s rebuttal, and it should be considered that these trademarks were all applied for or registered by Ma. These trademarks span a wide range of classes and belong to different industries. They also included trademarks that were similar in appearance, of the same class or similar to other well-known trademarks, which could not prove that Ma had the intention to use or had the need to apply for these trademarks. As an individual, Ma’s obviously purpose is to hoard these trademarks. Accordingly, the court held that Ma’s application for registration of the disputed mark violated the principle of good faith, and the right basis of which Ma claimed his rights in this case was not legitimate and should not be supported in accordance with the law.

3. Ma’s behavior constitutes abuse of rights

The Civil Judgment (2018) Yue 0308 Min Chu No. 588 found that: Chow Tai Fook Gold (Shenzhen) Company had actually used “Jiao Ren in Chinese” as the name of a series of products before Ma applied for the disputed mark, so Chow Tai Fook Gold (Shenzhen) Company had prior right and Ma’s claim is rejected. Ma again filed a lawsuit against Shenzhen Chow Tai Fook Company for selling Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry on JD.com for the same reason, and asked the other party to compensate for the losses. As the owner of the registered trademark no. 6703145, Ma’s application for registration of the disputed mark violated the principle of good faith. Under the circumstance that the existing evidence was insufficient to prove that he has the real intention to use and the fact of using the disputed mark, he still filed lawsuits against trademark holder who has the legitimate right to use its marks for compensation. Ma’s actions obviously constituted abuse of rights, and should be stopped and given a negative evaluation in accordance with the law.

Accordingly, Shenzhen Chow Tai Fook’s behavior did not infringe Ma’s trademark right in the case. The first instance court’s decision was affirmed.

3. Michelin in Chinese was recognized as well-known and successfully invalidated “Mei Qi Lin in Chinese”

The Beijing High Court recently rendered a decision to reject the petition to appeal for a trademark invalidation case between the appellant CNIPA and the appellee Michelin Group Corporation (“Michelin”), and the third party in the original trial, Kunming Huaxing Seed Industry Co., Ltd. (“Huaxing Seed Industry”). The court affirmed the lower court’s decision.

Disputed Mark	Cited Mark
Reg. No. 31295320	Reg. No. 6167650

The issue of this case was whether the registration of the disputed mark constituted the situation referred to in Article 13, Paragraph 3 of the 2013 Trademark Law. The Beijing High Court reasoned that the sales audit data, market share and ranking, media publicity reports, advertising expenses, inquiries records of the National Library of China, administrative and judicial protection records and other evidence submitted by Michelin can prove that prior to the disputed mark’s application date, Michelin’s cited mark has been widely known to the relevant public in China on the product of “pneumatic tires for vehicles” through long-term and extensive publicity and use, and constituted a well-known trademark.

The Disputed Mark was a word mark consisted of the Chinese character “Mei Qi Lin in Chinese,” which was similar to the Cited Mark “Mi Qi Lin in Chinese” in terms of text, pronunciation, appearance, etc., and constituted a copy or imitation of the Cited Mark. The Disputed Mark’s approved goods for “plant seeds, fresh vegetables, plants, and fresh fruits” were different than the Cited Mark’s approved goods for “pneumatic tires for vehicles” of which the Cited mark was known for. But both were closely related to daily consumption and there were certain degrees of overlap in its respective consuming public. Under the circumstance that the Disputed Mark constituted as a copy and imitation of the Cited Mark, when the relevant public buys the above-mentioned goods, it is easy to think that the Disputed Mark has a considerable degree of connection with the Cited mark and Michelin, thereby diminish the Cited Mark’s distinctiveness or unfairly use the Cited Mark’s market reputation, which was detrimental to Michelin’s well-known Cited Mark’s interests. Therefore, the registration of the Disputed Mark constituted the circumstance specified in Article 13(3) of the Trademark Law of 2013, and should be declared invalid.

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Weekly China Trademark News Updates

July 27, 2022

1. The CNIPA issued the “Guidelines for Intellectual Property Rights Protection at Exhibitions”

The CNIPA issued the “Guidelines for Intellectual Property Rights Protection in Exhibitions” (the “Guidelines”) on July 20, 2022. The Guidelines consist of four chapters and twenty-two articles, which are applicable to intellectual property rights protection in various online and offline economic and technological exhibitions, trade fairs, expositions, and other activities held within the territory of China. The Guidelines also focus on intellectual property protection prior to, during, and after an exhibition.

2. The Beijing Trademark Association issued the “Research Report on the Protection of Service Trademarks in the Goods Retail Industry”

The Beijing Trademark Association issued the “Research Report on the Protection of Service Trademarks in the Goods Retail Industry” (the “Report”) on July 20, 2022. In order to solve the difficulties encountered during the protection of service marks in the goods retail industry for enterprises in China, the Report focuses on analysis and research of the practice of judicial protection and other aspects, put forward suggestions and opinions on the protection of retail services in China.

3. Traditional Chinese characters with simple designs do not constitute works of art that can be protected under the Chinese Copyright Law

BAU-FOR-MAT KUCHEN GMBH & CO. KG owns the “” mark (“Disputed Mark”) with reg. no. 12077117. Top Daily Chemicals (China) Co., Ltd. (“Top Company”) claims that the Disputed Mark infringes its prior copyright and filed a trademark invalidation against the Disputed Mark. The Beijing High Court found that the “work” involved in the prior copyright claimed by Top Company was a pattern of “Miao Jie in Chinese,” but the font of its “Miao Jie in Chinese” characters was not obviously different than the existing Chinese fonts, which was not enough to reflect a personalized expression. It is not inappropriate for the first-instance judgement to find that it lacked originality and did not constitute a work protected by the Chinese Copyright Law. Top Company’s claimed work only consisted of the two Chinese characters “Miao” and “Jie,” which was too simple to reflect the originality of the work through the meaning of the Chinese characters and did not constitute a written work. Therefore, the Beijing High Court found that Top Company’s invalidation claims could not be supported and affirmed the first instance judgement.

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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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