Weekly China Trademark News Updates

May 17, 2022

1. The Beijing IP Court reversed the lower court’s decision and supported RMB 5 million in damages for Wilo China

The Beijing Intellectual Property (“IP”) Court recently ruled in favor of Wilo (China) Pump System Co., Ltd. (“Wilo China”) against Wilo Pump Industry (Jiangsu) Co., Ltd. (“Jiangsu Wilo”), Beijing Sunshine Keyuxin Energy Technology Co., Ltd. (“Sunshine Keyu”) in a trademark infringement and unfair competition case. The court supported Wilo China’s RMB5 million (USD740,000) damages claim and reasonable expenses of RMB300,000 (USD44,410).

In January 2000, the German Wilo established Wilo China to operate businesses including production, design, installation and maintenance of water pumps, water pump components and water pump system components. The German Wilo has applied for a number of the “WILO” mark on pump products since 1994, and applied for the “WILO in Chinese” mark in Class 7 for machines, machine casings (machine parts) merchandise in 2005. On April 24, 2017, Wilo China notarized the purchase of three accused infringing pump products (“Disputed Products”) from Sunshine Keyu where the label “Wilo in Chinese Pump Industry” was attached to packaging, machine shells, brochures, certificate, etc. Sunshine Keyu. recognized that it sold the products of Jiangsu Wilo and Wilo China at the same time. Jiangsu Wilo recognized that it manufactured and sold the Disputed Products. In addition, Jiangsu Wilo continued to promote and sell various types of pump products through its official website and e-commerce platforms. Wilo China sued and claimed that Jiangsu Wilo manufactured and sold the Disputed Products, and Sunshine Keyu’s sale of the Disputed Products infringed its license to use the Cited Marks and that Jiangsu Wilo’s use of “Wilo in Chinese” amounted to unfair competition.

Cited Marks

The first instance court held that the defendants did not infringe upon Wilo China’s trademark right and their acts did not amount to unfair competition. Wilo China and the defendants appealed to the Beijing IP Court. The Beijing IP Court found that Jiangsu Wilo’s selling of pump related products through JD.com and other e-commerce platforms and Sunshine Keyu sold the Disputed Products involved in the case. The Beijing IP Court determined that the alleged infringing acts committed by Jiangsu Wilo constituted trademark infringement and unfair competition, and the alleged infringing acts committed by Sunshine Keyu constituted trademark infringement. The Beijing IP Court also conducted an in-depth discussion regarding the defendant’s legal source defense. The court held that Sunshine Keyu’s selling of the Disputed Products did not meet the conditions for exemption from liability by applying the legal source defense, and should bear appropriate compensation liability in accordance with the law.

2. Using “Huawei in Chinese” as a search keyword infringed upon Huawei’s trademark right

The Futian District Court of Shenzhen recently ruled in favor of Huawei Technologies Co., Ltd. (“Huawei”) against Shenzhen Mingyu United Technology Co., Ltd. (“Shenzhen Mingyu”) in a trademark infringement case. The court held that using “Huawei in Chinese” as a search keyword and in product names infringed upon Huawei’s Cited Marks. The court ordered RMB500,000 (USD74,000) in damages.

Cited Marks

In 2014 and 2015, Huawei applied for the registration of the “HUAWEI and Design” mark and the “HUAWEI in Chinese” mark in Class 9 for headphones and other products. Shenzhen Mingyu opened a “SCOLiB Flagship Store” on Tmall.com and sold products such as “original genuine earphones suitable for Huawei earphones.” Meanwhile, “Huawei in Chinese” and its product display pictures are marked with a pattern similar to the “HUAWEI and Design” mark, but its actual brand is SCOLIB.

The court found that the accused infringing product was the same as the approved goods for the Cited Marks. The defendant set “Huawei in Chinese” as a search keyword and used the word “Huawei in Chinese” in the product name constated as identical marks to the Cited Marks. The picture used by the defendant on the displayed was also similar to the Huawei’s “HUAWEI and Design” mark. The defendant set “Huawei in Chinese” as a search keyword, used the words “suitable to Huawei” and “authentic Huawei headset” in the product name, used a logo similar to the “HUAWEI and Design” mark on the display pictures, and used “Huawei in Chinese” obviously showed its bad faith intention to take advantages of the Cited Mark’s popularity, which was likely to cause the relevant public to believe that the defendant’s headphones had a specific connection with Huawei and cause confusion.

3. The Shanghai IP Court recognized NOK’s “NOK” mark as a well-known mark

The Shanghai IP Court recently ruled in favor of NOK CORPORATION against Enoukai (Tianjin) Lubricating Oil Co., Ltd. and Shanghai Torch Lubricating Oil Co., Ltd. in a trademark infringement and unfair competition case. The court recognized NOK’s “NOK” mark as a well-known mark on oil seal products and held that the defendants’ use of the “NOK” mark, registration of the “Enoukai in Chinese” corporate name, and registration of “nokrhy.com” constituted as trademark infringement and amounted to unfair competition. The court ordered RMB1 million (USD148,000) in damages and reasonable expenses of RMB200,000 (USD29,606).

Cited Mark

NOK applied for the registration of the “NOK” series of trademarks in China in the 1970s. After long-term use and publicity, the “NOK” trademark enjoyed a high market reputation among the relevant Chinese public. The defendants had continued to produce and sell lubricants, antifreeze and other products bearing the “NOK” trademark since 2017. The defendants also registered and used “Enoukai in Chinese” as its corporate name, and registered and used the domain name “nokrhy.com.”

The court found that NOK’s “NOK” mark was a well-known trademark on oil seal products and determined that the “lubricating oil” product was closely related to the “oil seal” product. The defendants’ use of the registered trademark “NOK” infringed NOK’s “NOK” mark. “NOK” has a corresponding relationship with the Chinese characters “Enoukai in Chinese,” and the “NOK” trademark had a high reputation. The defendants had the intention to take advantages of the reputation of the “NOK” mark. The use of the “Enoukai in Chinese” as corporate name could easily lead to confusion and amounted to unfair competition. The defendant’s registration and use of the domain name “nokrhy.com” also amounted to unfair competition.

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Weekly China Trademark News Updates

May 10, 2022

1. The Hague Agreement and the Marrakesh Treaty entered into force in China on May 5, 2022

The Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (“Marrakesh Treaty”) entered into force in China on May 5, 2022.

Through the Hague System, it is only necessary to package multiple designs of the same classification into one international application and submit, with one application, one language, and one set of fees. Through one acceptance agency, filing in several contracting parties to the Hague Agreement for design registration and protection can be realized. If there is a need for changes, renewals, etc. in the future, only one request is required. There are two ways to file an international design application through the Hague System. The applicant can directly submit the international application to the International Bureau of WIPO. If the contracting office allows, the applicant can also file the international application indirectly through the contracting office. Under the Hague System, an international design registration is valid for an initial period of 5 years and can be renewed twice every 5-year. In each designated contracting state bound by the Hague Agreement, international registrations shall be protected for a period of at least 15 years.

The “Marrakesh Treaty” will greatly enrich the spiritual and cultural life of China’s dyslexic group, improve their educational level, deepen the connection between overseas Chinese dyslexic people and China, and promote the overseas dissemination of China’s excellent works.

2. If a disputed mark was found not filed in bad faith, the applicant could avoid being labeled as a squatter

The Supreme People’s Court recent retried the trademark opposition appeal case between Dongfang Fengxing (Beijing) Media Culture Co., Ltd. (“Dongfang Fengxing”) and Hainan HaiTV Tourism Satellite TV Media Co., Ltd. (“HaiTV”). The Court vacated the second instance decision and affirmed the first instane decision.

The issue presented in this case was: whether Dongfang Fengxing’s application for registration of the “” mark in Class 41 with reg. no. 6925383 (“Disputed Mark”) for “radio and television program production, television entertainment programs, performances” and other services violates the second half of Article 32 of the 2013 Trademark Law where applying for trademark registration “shall not preemptively register trademarks that have been used by others and have certain influence by improper means.”

The Court found that one of the core factors of the second half of Article 32 of the Trademark Law was that the trademark applicant has subjective bad faith, that is, preemptively registered the trademark by improper means. The first instance court had found that the “Beautiful Pretty Woman” program was prepared and produced by the Beijing Dongfang Huanteng Culture and Art Development Co., Ltd. (“Dongfang Huanteng”) in the second half of 2005. In 2006 and 2007, Dongfang Huanteng and HaiTV signed an agreement that the “Beautiful Pretty Woman” program will be jointly invested by both parties and produced by Dongfang Huanteng, and the program’s copyright would be jointly owned by both parties. In January 2008, Dongfang Fengxing and HaiTV signed an agreement that the “Beautiful Pretty Woman” program will be jointly invested by both parties and produced by Dongfang Fengxing, and the copyright of the program will be jointly owned by both parties. In January 2006, the “Beautiful Pretty Woman” program was first broadcast on HaiTV, and it continued to be broadcasted until December 31, 2012. In January 2008, Dongfeng Huanteng signed a contract with Dongfang Fengxing that Dongfeng Huanteng would transfer the “Beautiful Pretty Woman” program copyright it shared from 2006 to 2007 to Dongfang Fengxing. After the cancellation of Dongfang Huanteng, its shareholders issued a statement stating that from January 15, 2008, all rights and interests, including the copyright of the “Beautiful Pretty Woman” artwork, would be transferred to Dongfang Fengxing. Based on the above facts, it can be analyzed as follows: First, although the agreements signed successively between HaiTV and Dongfang Huanteng or Dongfang Fengxing stipulated that the two parties jointly enjoy the “Beautiful Pretty Woman” program copyright, they did not stipulate the ownership of the trademark. Second, the Disputed Mark was a graphic trademark, and the logo was identical with the artwork of “Beautiful Pretty Woman.” The artwork was created by Xu Linjiang in 2005 on the commission of Dongfang Huanteng, who owned the copyright. After the cancellation of Dongfang Huanteng, the copyright of the artwork was transferred to Dongfang Fengxing. Third, the the “Beautiful Pretty Woman” program was originally planned and produced by Dongfang Huanteng. Before the filing date of the Disputed Mark, Dongfang Fengxing had actually launched the program production service of the “Beautiful Pretty Woman” program. Taking into account the above factors, Dongfang Fengxing filed the Disputed Mark’s application on August 29, 2008, in Class 41 for “radio and TV program production, TV entertainment programs” and other service was legitimate without subjective malice. Therefore, Disputed Mark’s registration did not violate the 2013 Trademark Law. The second instance court did not fully consider the application requirements of the second half of Article 32 of the 2013 Trademark Law, and erred in applying the law.

Regarding the question in the Disputed Mark opposition appeal concerning that the Disputed Mark’s goodwill shared by both HaiTV and Dongfang Fengxing should not be exclusively enjoyed by Dongfang Fengxing, first, China’s trademark law implements registration system, however, in order to balance the interests of all parties and taken into account the principle of fairness, China’s trademark law also provides a certain degree of protection to unregistered trademarks. Second, in terms of the attribution of rights, China’s trademark law is different from the copyright law and patent law in that trademark registration adopts the principle of first-to-file. According to the provisions of Article 31 of the 2013 Trademark Law, a trademark with the prior application shall be preliminarily approved and published. The trademark law neither stipulates that only prior use of the mark can be applied for registration, nor does it provide for joint trademark owners to joint use of the mark or joint contribution to the goodwill of a trademark. Third, when the administrative department determines whether the trademark applied for registration violates the provisions of the second half of Article 32 of the 2013 Trademark Law, it must have a certain impact on whether the goodwill of the prior used mark has reached a certain level of influence, and whether the trademark applicant has used the prior mark through comprehensive analysis of a series of elements, such as malicious use of a mark’s goodwill. As mentioned above, Dongfang Fengxing, the applicant of the Disputed Mark, did not use the goodwill of other’s prior used trademark in bad faith. Therefore, in the absence of clear legal provisions and contract basis, the Trademark Review and Adjudication Board analyzed and judged the contribution of goodwill, adopted the idea of ​​​​co-ownership, and concluded that HaiTV and Dongfang Fengxing shared the goodwill of the Disputed Mark and excluded Dongfang Fengxing’s application of the prior mark was wrong.

In addition, there was a question about whether HaiTV was a qualified entity to file trademark opposition and appeal. Article 6 of the Interpretation of the Supreme People’s Court on the Jurisdiction of Trademark Cases and the Application of Law after the Implementation of the Trademark Law Amendment Decision stipulates that for trademark appeals accepted before the implementation of the amended Trademark Law, where the Trademark Review and Adjudication Board made a decision not to approve the application, on appeal, the appeals court shall apply the unamended Trademark Law when examining the relevant rights of action and entity qualification issues. Accordingly, the 2001 Trademark Law shall be applied in this case. HaiTV filed the trademark opposition and appealed the unfavorable trademark opposition decision according to the 2001 Trademark Law. Article 30 of the 2001 Trademark Law stipulates: “Anyone may raise an objection within three months from the preliminary trademark publication date. At the same time, the facts that have been ascertained show that HaiTV was one of the broadcasting platforms and copyright owners of the “Beautiful Pretty Woman” program, and it had an interest in the registration of the Disputed Mark. The HaiTV claimed that Dongfang Fengxing was not an interested party and had no right to raise the request for retrial of the trademark opposition and the appeal lacked factual and legal basis and cannot be supported.

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Weekly China Trademark News Updates

April 27, 2022

1. The Beijing High Court released typical cases of intellectual property punitive damages

On April 25, 2022, the Beijing High Court held a press conference to release the Guidelines for the Application of Punitive Damages in Civil Cases of Intellectual Property Infringement to further standardize the applicable standards of punitive damages in civil cases of intellectual property infringement, and to increase knowledge in accordance with the law. There are 51 articles in the guidelines, which specifically stipulate the substantive and procedural issues involved in the application of punitive damages, the calculation method, etc.

Click here for more information (Chinese/English)

2. Baidu’s “Xiaodu” voice command was protected by the courts under the Anti-Unfair Competition Law

Baidu Online Network Technology (Beijing) Co., Ltd. (“Baidu”) sued Beijing Zile Technology Co., Ltd. (“Zile”) to the court on the grounds of unfair competition.

The court found that “Xiao du,” as the product name of the smart speaker launched by Baidu, had gained a high reputation and great influence in the market after extensive use and promotion, and it belongs to the name of a commodity that had a certain influence specified in Article 6 of the Anti-Unfair Competition Law.

Although voice command is not expressly listed in Article 6, from the perspective of the text, its purpose is to prevent confusing behavior and avoid misunderstanding by the relevant public. Therefore, although voice command comes after than commodity name, business name, network domain name, website name, etc., and is of a different type, however, as long as it can establish a specific connection with the good or service and its provider, and has a certain influence, it falls under Article 6.

The court reasoned that Baidu’s voice command “xiao du xiao du” became an indispensable and frequent specific voice command for users when using Xiaodu smart speakers and had established an inseparable relationship with the product’s human-computer interaction and other functions and services. Many media reports showed that Baidu had started to use “xiao du xiao du” voice commands for its smart speaker products since 2017 to wake up and operate the device. Through a large number of extensive and various forms of publicity and promotion, the relevant public recognized that “xiao du xiao du” refers to the corresponding services provided by Xiaodu smart speakers, that is, the voice command had established a clear and stable association with Baidu and its products, and already has a high reputation and great influence. To sum up, the court found that Baidu has legitimate rights and interests in the voice command of “xiao du xiao du,” which should be protected by Article 6.

Zile is the producer and seller of the Du Yaya learning machine. According to its promotions, “Xiao Du” was used as a product name, and “xiao du xiao du” was used for voice commands for wake up and operation of its product, both of which were provided by the company. Baidu’s “Xiaodu” and “xiao du xiao du” had been widely used and publicized as product names and voice commands and had a certain popularity and influence. At the same time, Xiaodu smart speakers and Du Yaya learning machines were similar products in terms of functions, audiences, sales channels, etc. Zile still uses “Xiaodu,” which shared the same pronunciation with Baidu’s “Xiaodu” only differs in Chinese characters to its products. It also used the exact same voice commands “xiao du xiao du” as Baidu to awake and operate its products, which was subjectively malicious, and objectively likely to cause confusion among the relevant public. That is, the public is likely to misunderstand that Du Yaya learning machines and Baidu’s Xiaodu smart speakers were related in terms of product development, technical support, licensing cooperation, etc. Although the Chinese character between the two “Du” was difference, but user feedbacks proved that there were certain levels of confusion and mistaken. Therefore, the court found that Zile’s use of “Xiaodu” and “xiao du xiao du” violated Article 6 of the Anti-Unfair Competition Law and constituted unfair competition to Baidu.

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Weekly China Trademark News Updates

April 20, 2022

1. CNIPA continues its “zero tolerance” attitude towards cracking down on bad faith trademark registrations

The CNIPA recently issued a notice on Continued Crackdown on Bad Faith Trademark Registrations.

The notice states that the special campaign against bad faith squatting and hoarding of trademarks has achieved remarkable results. In order to further implement relevant deployments, the CNIPA shall strengthen the focus of rectification and crack down on typical behaviors; strengthen monitoring and early warning to achieve accurate identification; strengthen systematic governance and implement severe punishments; strengthen supervision on agencies and maintain industry order; strengthen credit supervision and implement joint punishment; strengthen coordination and cooperation to form a joint governance force; strengthen institutional guarantees and improve policy supply; strengthen positive guidance and create a good atmosphere.

The notice specifically mentions that it is necessary to improve the key monitoring list of squatters through the entire trademark registration process. If market entities in the key monitoring list engage in trademark matters, the CNIPA will strictly review such entities and strongly require its burden of proof for actual use of trademarks. It is also possible to, ex officio or based on application, strengthen the examination on the consistency between the industry in which the applicant’s business is resided and the goods and services designated for use by the trademark.

In addition, it is necessary to continue to restrict the assignments of hoarded trademarks, strengthen the pre-examination of the use of the trademarks to be assigned, and make bad faith trademark registration unprofitable.

The notice also mentions that it is necessary to guide social forces to widely participate in the management of trademark registration orders and promote the deployment of “public welfare non-use cancellation” in order to release idle trademark resources.

2. Several courts have released typical cases of judicial protection of intellectual property rights

With the World Intellectual Property Day around the corner, specialized intellectual property courts, tribunals and multiple local courts have released their own white papers and typical cases on judicial protection of intellectual property.

On April 18, the Suzhou Intellectual Property Tribunal held an online press conference and released the top 10 highlights of the court’s fifth anniversary and top 10 typical cases of judicial protection of intellectual property rights in 2017-2021, including New Balance v. Shenzhen Xin Ping Heng Sports Goods Co., Ltd., Zheng, etc. for trademark infringement and unfair competition disputes.

New Balance China was authorized the non-exclusive right to use the “NEW BALANCE” trademarks in China and used the decoration design of the English letter “N” on both sides of its footwear products. Zheng established an overseas company and authorized Shenzhen Xin Ping Heng to mass-produce sports shoes with the “” logo decorated with “N” letters on both sides of its shoes and promote sales online and offline. The official website of Shenzhen Xin Ping Heng falsely published a large number of articles that used the honor of New Balance sneakers. New Balance China filed a lawsuit. During the lawsuit, the court made an injunction, but several defendants refused to carry out the effective injunction ruling. What’s more, when the court served the effective ruling, they threw away the legal documents in public. The court then decided to impose fines against the defendants between RMB100,000 (USD15,585) to RMB1 million (USD155,859). After trial, the court held that Shenzhen Xin Ping Heng and other defendants were liable for trademark and unfair competition, and fully supported New Balance China’s compensation claim of RMB10 million (USD1.56 million).

This case was selected as one of the top 10 intellectual property cases in Chinese courts in 2018. It is the first case in Jiangsu Province involving the issuance of an injunction on the unique decoration of a well-known goods. It was also the first injunction during a litigation that covered the entire chain from the prohibition of production and sales to false publicity. Later, judicial fines were imposed on the defendants for refusing to perform the injunction. This case also analyzed the right holder’s losses in detail and applied punitive damage by supporting New Balance China’s compensation claim of RMB10 million (USD1.56 million).

On April 19, the Shanghai Intellectual Property Court and the Shanghai Third Intermediate Court released the highlights of strengthening judicial protection of intellectual property rights (2019-2021), especially introducing the refined calculation method of infringement damages and clarifying the calculation of damages. The factors to be considered include: sales volume of infringing products, profit margin, scale of infringement, degree of fault, decline in the market share of the right holder, loss of value and other factors in order to effectively deter and curb intellectual property infringements.

 In addition, the Inner Mongolia Autonomous Region, the Sichuan High Court, and the Chongqing High Court also held press conferences and released their top 10 typical cases of intellectual property protection in 2021.

3. The invalidation against TWG’s trademark was affirmed

The Beijing High Court recently made a second-instance judgment on the invalidation case of Reg. No. 9011685 “MELANGES EXQUIS MILLESIMESD’EXCEPTION TWG TEA GRANDS CRUS PRESTICE 1837 and Design” (“Disputed Mark”) owned by

TWG TEA COMPANY PTE LTD (“TWG Tea Company”), finding that the registration of the Disputed Mark violated Article 10(i)(7) of the 2001 Trademark Law and shall be declared invalid.

Disputed Mark

TWG Tea Company applied the Disputed Mark on December 31, 2010, and obtained registration on August 21, 2013 for use on cups, cans, drinking utensils, tea sets and other goods in Class 21.

Jierong International Co., Ltd. filed an invalidation against the Disputed Mark in October 2017, and the former Trademark Review and Adjudication Board (“TRAB”) invalidated the Disputed Mark in September 2018, finding that: the overall use of the Disputed Mark on the approved goods was deceptive and easy to cause adverse social influence. It violated Article 10(i)(7) and 10(i)(8) of the 2001 Trademark Law.

TWG Tea Company appealed to the Beijing Intellectual Property Court. The Beijing Intellectual Property Court affirmed that the Disputed Mark violated Article 10(i)(7) of the 2001 Trademark Law, that is, exaggerated publicity and deceptive signs should not be used as a trademark. The Disputed Mark, however, did not have negative connotations, and was not related to political, religion, nationality, morality and other meanings, which could not be seen as to have “other adverse effects.” It did not violate Article 10(i)(8) of the 2001 Trademark Law. The TRAB’s decision erred in this regard but the overall conclusion was correct.

TWG Tea Company further appealed to the Beijing High Court. The Beijing High Court, in its final decision, found that the Disputed Mark consists of the number “1837”, the letters “TWG”, English word “TEA”, French words “MELANGESEXQUIS”, “MILLESIMESD’EXCEPTION”, “GRANDSCRUSPRESTIGE” and designs. Among them, the Chinese translations corresponding to the French words were all words with clear meaning, and conveyed the message of good quality, long history, and good reputation. At the same time, “1837” was easy to be understood as a year, and it was easy to make the public think of the history of the supplier of the goods, the year of manufacture of the goods and other information. Plus the use of  “MILLESIMES D” and “EXCEPTION” made it easier for the public to recognize that the product provider or brand originated in 1837, so as to have a good association with the quality, history, and reputation of the provided products, thereby affecting the public’s consumption choices and judgment. TWG Tea Company’s publicity was also difficult to eliminate the public’s misunderstanding that “1837” refers to the commodity provider or brand history. Therefore, the court affirmed that the registration of the Disputed Mark violated Article 10(i)(7) of the 2001 Trademark Law.

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Weekly China Trademark News Updates

April 12, 2022

1. P&G’s “Safeguard in Chinese” mark was recognized as a well-known mark

On September 20, 2010, Shijiazhuang Longtai Knitting Products Co., Ltd. (“Longtai”) filed the “Shu Fu Jia in Chinese” trademark (“Disputed Mark”) application that was later allowed for registration in Class 24 for textile towels and bath towels. In 2018, P&G filed an invalidation against the Disputed Mark. After review, the CNIPA found that the Disputed Mark constituted as a copy and imitation of P&G’s “Safeguard in Chinese” trademark and invalidated the Disputed Mark.

Longtai appealed to the Beijing IP Court. The court, in its reasoning, recognized P&G’s “Safeguard in Chinese” trademark as a well-known mark on “soap” goods and affirmed that the Disputed Mark constituted as a copy and imitation of P&G’s “Safeguard in Chinese” trademark. Longtai’s appealed to the Beijing High Court was rejected.

2. China’s famous wine company Changyu successfully fend off an infringer

Yantai Changyu Grape Wine Co., Ltd. (“Changyu”) sued Shandong Aodu Furniture Co., Ltd. (“Aodu”) and Shanghai Xunmeng Information Technology Co., Ltd. (“Xunmeng”) over trademark infringement dispute and unfair competition dispute case for unauthorized trademark use as trade name and on red wine gift packaging.

Cited Marks

Disputed Logos

Changyu Group was founded in 1892 and Changyu is a listed company controlled by Changyu Group. Changyu Group registered the Cited Marks in Class 33 for wine and other goods and authorized Changyu to use them. Aodu used the Disputed Logos in its production and sales of red wine gift packaging without authorization. Changyu sued Aodu and the owner of the third-party platform where Aodu sold its gift packaging.

The court held that the Disputed Logos that was printed on the red wine packaging box, which could play a role in identifying the source of goods in commercial activities. The Disputed Logos were identical or similar to Changyu’s Cited Marks and infringed upon Changyu’s Cited Marks. Changyu has obtained relatively high fame in domestic wine industry and received the China Time-Honored Brand through its long term operations. Aodu’s unauthorized use of Changyu’s Cited Marks and trade name amounted to unfair competition.

Changyu did not notify Xunmeng after discovering that Aodu sold alleged infringing goods on the third-party platform. After Changyu sued, Xunmeng took the initiative to review the store involved and removed the accused infringing goods from the shelves. Therefore, Xunmeng did not constitute an accomplice.

3. CNIPA aims to improve its trademark examination department

The 2022 Key Working Points of the Trademark Office was released, which clearly aims to build a first-class trademark examination agency, focus on strengthening the governance of bad faith trademark registration behavior, continuously improve the quality and efficiency of examination, and improve the trademark examination management system and mechanism. Comprehensively deepen the trademark reform and solidly promote the high-quality development of trademark work.

Maintain a high-pressure of cracking down on bad faith trademark squatting and excel in handling bad faith squatting trademarks involving national interests and public interests in a timely manner. Strengthen the management of trademark hoarding, strengthen the registration management of trademark assignment and trademark license recordals, and cut off the profit-making channels of trademark assignment from trademark hoarding. Continue to stabilize the trademark registration process at 7 months in general, and the average trademark examination at 4 months.

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Weekly China Trademark News Updates

April 08, 2022

1. The Supreme People’s Court issued the Decision on Amending the Interpretation of the Supreme People’s Court on the Application of the Civil Procedure Law of China

On March 22, 2022, the Judicial Committee of the Supreme People’s Court deliberated and approved the Decision on Amending the Interpretation of the Supreme People’s Court on the Application of the Civil Procedure Law of China (the “Decision”), which will take effect from April 10, 2022. The Decision revised the judicial confirmation procedure, simplified procedure and petite claims procedure, sole-judge procedure, online litigation and service rules, etc. and added 7 articles, and the overall order of the articles was revised.

2. Tencent QQ’s red envelope “manual grab” function was infringed by an “automatic grab” software and was awarded judicial protection in the first and second instance

Tencent’s QQ instant messaging software started to provide users with a red envelope service in early 2015, including the function that users can click to receive electronic red envelopes sent by other users through one-to-one chat or group chat.

In the same year, Baihao Company was established and provides technology development and technical services such as “Duo Duo Grab Red Envelope” and “Red Envelope Hunter” software. Guxin Company, founded in 2014, is also the developer and main operator of the “Duo Duo Grab Red Envelope” software. Both software can be displayed on the front end or in the background of QQ when QQ message notification is turned on, to achieve the effect of automatically grabbing red envelopes. At the same time, the software also provides a “red envelope grabbing tutorial.”

The first instance court held that the acts of Baihao and Guxin hindered the normal operation of QQ products, made profits by providing services that harmed the interests of Tencent, its consumers, and the public, which disrupted the market competition order and amounted to unfair competition. Therefore, Baihao and Guxin were ordered to stop their infringement and publish apologizes on the newspaper to eliminate negative impact. Baihao should compensate Tencent for economic losses (including reasonable expenses) of RMB700,000 (USD110,000), of which Guxin was liable for RMB110,000 (USD15,700). The Hangzhou Intermediate People’s Court, the second instance court, comprehensively considered the nature of the infringement and the subjective intention of Baihao’s infringement, the market value of QQ, the damage to the market competition order, the cumulative download volume, and operation duration of the infringing software, and the automatic grabbing of QQ red envelope by users using the infringing software, and the reasonable expenses for rights protection. The second instance court rejected the appeal and upheld the original judgment.

3. The “Baisuishan” trademark infringement and unfair competition case

The Jiangsu Higher People’s Court issued a decision for a lawsuit between Jingtian (Shenzhen) Food & Beverage Group Co., Ltd. (“Jingtian”) against Jiangsu Baisuishan Water Purification Equipment Co., Ltd. (“Baisuishan”) and Jiangsu Kangwei Nano Technology Co., Ltd. (“Kangwei Nano”) in a trademark infringement and unfair competition case, and upheld the first-instance judgment.

Jingtian was the assignee of the “Baisuishan” mark. The alleged infringing products in this case were water purifiers, nanofiltration membrane direct drinking machines, three-in-one water purifiers, and negative ion nano air purifiers. Baisuishan and Kangwei Nano were affiliated companies, and Kangwei Nano obtained the trademark logo involved in the case through assignment or registration and used it on the alleged infringing goods it produced. Baisuishan provided packaging and promotion of products and sold the accused infringing goods mainly through online platforms, promotional materials, and other methods.

The court held that the evidence was sufficient to prove that Jingtian’s registered trademark “Baisuishan” constituted as a well-known mark used in mineral water, water (beverage) and other goods. The use of the “Baisuishan” logo on negative ion nano-air purifier products and advertising, etc., dissented the inherent association between the “Baisuishan” mark and Jingtian’s mineral water and water (drinks) goods, thereby weakening the well-known mark’s distinctiveness, and unfairly used the market reputation of the “Baisuishan” mark. Therefore, the alleged infringements violated the trademark right of “Baisuishan.”

Baisuishan used Jingtian’s well-known mark as its enterprise name and used it in its business activities, which would objectively cause confusion among the relevant public, and mistakenly believe that the two companies had specific connections such as licensed use and affiliated companies, which amounted to unfair competition.

Kangwei Nano should know that there were legal obstacles to its use of the “Baisuishan” mark, which had been opposed, but it did not reasonably avoid such use and even allow a third party to continue such use. Kangwei Nano even allowed such use to continue even after the assigned mark was invalidated. Baisuishan knew that the “Baishuishan” mark was a restricted enterprise name, which might cause name disputes, but deliberately used “Baishuishan” as the main identification element in its enterprise name. In its course of business, Baisushan used the logo to promote and sell products, and intentionally mislead the public. Baisuishan and Kangwei Nano cooperated, divide labor and used various means to infringe in a rather large scale of operation. The court ordered a RMB3 million (USD471, 500) compensation after fully considered all punitive factors.

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Weekly China Trademark News Updates

March 30, 2022

1. RMB 10 million in damages demanded against “The Sound” TV Show

“The Sound” is an original singing competition show launched by China’s Hunan Satellite TV. Beijing Immersive Culture Co., Ltd. (“Immersive Culture”) believes that the mark “The Sound in Chinese” (roughly translated as “sounds like in the scene”) (“Disputed Mark”) infringes its trademark and filed a lawsuit with the court. Immersive Culture owns the Cited Marks (roughly translated as “actually being in the scene” in English).

Cited Marks	Disputed Mark

Defendant Hunan Radio and Television Station produced the TV program “The Sound,” defendant Hunan Happy Sunshine Interactive Entertainment Media Co., Ltd. exclusively enjoyed the network dissemination rights of “The Sound,” and defendant Beijing iQiyi Technology Co., Ltd. streamed “The Sound.” Immersive Culture claimed that its Cited Marks had become well-known and influential in TV program through continuous promotion and use. The use of the Disputed Mark by the three defendants constituted as trademark infringement.

The court found that the use of the Disputed Mark by the defendants in broadcasting and promoting of “The Sound” was insufficient to cause the relevant public to confuse the Cited Marks with the Disputed Mark and did not constitute as trademark infringement. The court reasoned that the name of a TV program constituted as trademark use because it is an integration, effects, and final presentation of production, signal transmission, broadcast control management, and other processes. Thus, a TV program constated as similar to Class 41 program production and Class 38 television broadcasting. The content of “The Sound” and the services of Classes 38 and 41 approved for use for the Cited Mark constituted as similar services. Although the Disputed Mark was similar to the Cited Mark, the degree of similarity was the key to whether the relevant public was confused or mistaken. The Disputed Mark or its distinctive part was derived from the idiom “being in the scene”, however, the Disputed Mark is an application of the idiom “being in the scene,” highlighting the feeling of the situation through sound, there was a fundamental difference between the two. Therefore, the degree of similarity was limited to sound and shape. But their meanings were significantly different. The audience’s perception of “The Sound” did not simply rely on the Disputed Mark, it was even more related to the content and characteristics of the program itself. In addition, each of the three defendants used their own trademarks while broadcasting the program, which clearly indicated the fact that the programs involved were related to the three defendants, and further reduced the possibility of confusion among the relevant public.

2. The CNIPA on the validity of blockchain electronic evidence in administrative adjudication cases of patent infringement disputes

On March 18, 2022, the CNIPA approved the validity of blockchain electronic evidence as follows:

Article 6, Chapter 4, Section 2, of the Guidelines for Handling Administrative Adjudication on Patent Infringement Disputes provides specific provisions on the review and determination of electronic evidence. In addition, Article 11 of the Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Cases by Internet Courts clearly states that evidence collected, fixed and tamper-proof through electronic signatures, trusted time stamps, hash value verification, blockchain, etc. shall be affirmed by the Internet court, if the authenticity can be proved by technical means or through the electronic evidence collection and storage platform. Moreover, Article 14, Article 90, Article 14 Article 93, Article 94, and Paragraph 2 of Article 99 of the revised 2019 Several Provisions on Civil Litigation Evidence stipulate the subject matter, authenticity, and probative value of electronic data. In order to promote the unification of administrative and judicial standards, in administrative cases, if a party submits relevant electronic evidence such as blockchain, it can be determined by referring to the Guidelines for Handling Administrative Adjudication on Patent Infringement Disputes and the relevant provisions of the said judicial interpretation.

3. The CNIPA: 482,000 bad faith applications have been cracked down and the general trademark registration cycle has been shortened to 7 months

In 2021, the number of trademark registrations reached 7.739 million, a year-on-year increase of 34.33%. Among them, 7.543 million were domestic registrations, 97.5% of the total. 194,000 foreign trademark applications were registered, 2.5% of the total.

In order to precisely crack down on bad faith registrations and hoarding of trademarks, the CNIPA has implemented targeted policies and all departments have worked together to crack down on 482,000 bad faith applications that were not intended for use. The Special Action Plan for Combating Malicious Preemptive Registration of Trademarks were strictly implemented and collectively rejected 1,628 bad faith registrations with clear bad faith intent that had harmed social and public interests. Also, 1,729 registered trademarks were invalidated ex officio.

In order to implement ” streamlining administration and delegating powers, combining decentralization and management, and optimizing services,” the CNIPA has formulated and implemented the Work Plan for the Reduction of Trademark Registration Cycle under General Conditions, which made overall arrangements to make sure that the average examination period for trademark registration is stable at 4 months, the trademark registration cycle under normal circumstances has been successfully compressed to 7 months by the end of 2021.

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Weekly China Trademark News Updates

March 22, 2022

1. The Supreme People’s Court released judicial interpretation of the Anti-Unfair Competition Law, effective March 20

Recently, the “Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of the Anti-Unfair Competition Law of China” (hereinafter referred to as the “Interpretation”) was released, which will come into force on March 20, 2022. The Interpretation has a total of 29 articles, which focus on general provisions, counterfeiting and confusion, false publicity, and online unfair competition. Some selected excerpts are as follows.

Article 1: a business operator disrupts the market competition order, damages the legitimate rights and interests of other operators or consumers, but did not violate Chapter II of the Anti-Unfair Competition Law and the provisions of the Patent Law, Trademark Law, and Copyright Law, the people’s court may apply Article 2 of the Anti-Unfair Competition Law, the general clause. This provision not only clarifies the applicable relationship between general clause, specific conduct clause, and provisions of intellectual property laws, but also clarifies the application of the general clause to other intellectual property laws such as the Anti-Unfair Competition Law and the Trademark Law.

Article 4: a sign with a certain market reputation and a distinctive feature that distinguishes the source of a good may be identified by the people’s court as a sign with “certain influence” as stipulated in Article 6 of the Anti-Unfair Competition Law. When the people’s court determines whether a logo stipulated in Article 6 of the Anti-Unfair Competition Law has a certain market reputation, the court should comprehensively consider the degree of knowledge of the relevant public in China, the time, geographical area, number of sales, and target of the sale of goods, and the duration, degree and extent of publicity, geographical scope, and protection records, etc. This article clarifies the meaning of the “certain influential” sign and the factors to be considered for determination.

Article 7: if an interest party petition for protection under Article 6 of the Anti-Unfair Competition Law a sign as stipulated in Article 6 of the Anti-Unfair Competition Law or its distinctive identification part is stipulated in the first paragraph of Article 10 of the Trademark Law as a sign that shall not be a trademark, the people’s court shall not support that petition. This provision clarifies that marks that fall within the scope of unregistrable trademark cannot be protected by the Anti-unfair Competition Law.

Article 9: the name of an enterprise registered with the market entity registration management department according to the law, and the name of an overseas enterprise used for commercial use within the territory of China may be determined by the people’s court as the “company name” stipulated in Article 6 of the Anti-Unfair Competition Law. This provision referred to Article 2 of the “Regulations on the Administration of Registration of Market Entities” to refine the scope of market entities whose names can be protected.

2. The owner of a trademark labeled to the alleged infringing product can be deemed as a proper defendant

The Supreme People’s Court made a final ruling on a computer software copyright infringement case between the appellant Plymouth Company (“Plymouth”) and the appellee Lenovo (Beijing) Co., Ltd. (“Lenovo”): the first-instance ruling was revoked, and the Beijing Intellectual Property Court was ordered to continue the trial.

The issue of the second-instance court was: whether Lenovo was a qualified defendant in the case. The Supreme People’s Court held that a plaintiff must have an ascertained defendant when filing a civil lawsuit. The legal requirement for “ascertained” was that the people’s court can specify the defendant according to the plaintiff’s lawsuit, which includes two meanings. First, the defendant’s entity must be clear. If it is a natural person, its identity information such as name, gender, age, and domicile must be determined; if it is a legal person or an unincorporated organization, its main information such as name and domicile must be clarified. Second, the defendant should be able to bear civil liability, that is, the plaintiff should submit prima facie evidence to prove that the defendant is able to bear civil liability for the specific claim made. Otherwise, the purpose of the lawsuit will be defeated, and the lawsuit will not be able to proceed. Whether the plaintiff’s claim can be supported by the people’s court and whether the defendant bears civil liability is not a necessary condition for the people’s court to accept a civil case. In short, when examining whether a defendant is “qualified” in a lawsuit, people’s courts only need to examine whether the plaintiff has provided prima facie evidence that the defendant is associated with the disputed legal issues, and this issue should not be judged by the substantive trial procedure, or whether the defendant is ultimately the subject of an obligation or subject of a liability in the disputed legal issue.

In this case, Plymouth sued Lenovo claiming that Lenovo had installed the “TaptheFrog” game copyrighted by Plymouth on its mobile phone without authorization, and demanded that Lenovo be ordered to stop the infringement and compensate for its losses. In order to prove its claim, Plymouth submitted an allegedly infringing mobile phone, which had the “Lenovo” trademark on the outer packaging and on the mobile phone, and Lenovo recognized that it was the exclusive owner of the registered trademark of the “Lenovo” trademark. When Plymouth filed this lawsuit, it provided the name and domicile of Lenovo, and confirmed the identity of Lenovo to prove that Lenovo may have carried out the alleged infringement. If the alleged infringing product was affixed with a trademark, it can be determined that the owner of that trademark was the manufacturer of the alleged infringing product, and in relevant infringement lawsuits, that manufacturer constituted as a defendant who was actually associated to the dispute. Therefore, it should be determined that Lenovo was qualified as the defendant in this case, and the petition of Plymouth complies with Article 119 of the Civil Procedure Law, and the first instance court should continue to hear this case. The first instance court erred in rejecting Plymouth’s appeal.

3. An OEM company was found to be infringing another’s trademark

The Guangdong Jiangmen Intermediate Court recently made a final judgment on a trademark infringement dispute between the appellant Guangdong Jinlaite Intelligent Technology Co., Ltd. (“Jinlaite”) and appellee Zhongshan Kada Optoelectronics Lighting Co., Ltd. (“Kada”). Jinlaite’s appeal was rejected and the lower court’s judgment was affirmed.

The first issue was whether Jinlaite’s OEM constitutes as trademark infringement. First, there was no evidence to prove that there was any illegitimacy with the trademark owner Wang Rongjin’s filing of the application and registration of the trademark “” involved in the case with reg. no. 33186539 (“Disputed Mark”). Kada used the Disputed Mark with Wang Rongjin’s authorization, and had the exclusive right to file a lawsuit in its own name, so Kada’s exclusive right to use the Disputed Mark should be protected by law. Second, the use of trademark is an objective behavior, including physical attachment, market circulation and other links. In this case, Jinlaite used the Disputed Mark on its products and product packaging to identify the source of the goods, and the use status was a trademark use. Jinlaite rebutted that they were an OEM. The accused infringing products were not sold in China and would not confuse consumers with the Disputed Mark. It does not constitute as trademark use. The court found Jinlaite’s evidence was insufficient and cannot be supported. Third, Jinlaite used the Disputed Mark on the same goods (hand lamp, charging lamp, flashlight), which infringed Kada’s exclusive right to use its trademark. Finally, due to the territorial nature of trademark rights, for trademarks that have not been registered or licensed in China, even if those trademarks were registered abroad, they did not have rights in China. Jinlaite’s reliance on its principal’s trademark right in Turkey to export its OEM products cannot be supported by the law. Jinlaite infringed upon Kada’s trademark right. Accordingly, the first instance’s judgment was affirmed.

The second issue was how to determine the amount of damages. Based on the facts of this case and another case, the first instance court comprehensively considered the popularity and influence of the Disputed Mark, the nature, consequences, sales scope of the infringement, and the amount paid by Kada to stop the infringement, along with reasonable expenses and other factors. According to the law, Jinlaite should compensate Kada for economic losses of RMB 100,000 (USD15,736) (including reasonable expenses), which was affirmed.

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Weekly China Trademark News Updates

March 15, 2022

1. The Supreme People’s Court Annual Report – 541,000 First Instance IP Cases

On March 8, 2022, President of the Supreme People’s Court Qiang Zhou reported in the work of the Supreme People’s Court at the National People’s Congress that, in 2021, courts nationwide concluded 541,000 first instance intellectual property cases. The people’s courts have strengthened the protection of intellectual property rights through various measures, including promulgating judicial interpretations on punitive damages for intellectual property rights, awarding punitive damages to infringers in 895 cases. Applying the behavior preservation system in accordance with the law, preventing further damages, and support reasonable expenses claim against abusers, saying “no” to malicious litigation that may hindering innovation, etc.

2. The “Champagne” trademark was recognized as a well-known trademark

The Beijing Intellectual Property Court recently released a civil first-instance case for infringement of the trademark “Champagne in Chinese.” The Comité Interprofessionnel du vin de Champagne is the owner of the “Champagne in Chinese” geographical indication and the “Champagne” geographical indication. The Comité Interprofessionnel du vin de Champagne sued Guangzhou Xuelei Cosmetics Co., Ltd. and Beijing Yalishadi Cosmetics Co., Ltd. (“defendants”) for trademark infringement by claiming that defendants copied its well-known trademark and diluted the association between wine products and its well-known trademarks by labeling “Champagne Life” and “Champagne Life in Chinese” on perfume products. The Beijing Intellectual Property Court found that the trademarks owned by the Comité Interprofessionnel du vin de Champagne constituted well-known trademarks on wine products after its long-term use. Guangzhou Xuelei Cosmetics Co., Ltd.’s use of the accused infringing logo on the accused infringing goods had already misled the public and constituted trademark infringement. Beijing Yalishadi Cosmetics Co., Ltd. was able to rebut its liability by proving that it had obtained the accused infringing goods with authorization from Guangzhou Xuelei Cosmetics Co., Ltd. with sufficient evidence. Beijing Yalishadi Cosmetics Co., Ltd., however, cannot escape its liability to stop infringement and compensate the Comité Interprofessionnel du vin de Champagne for reasonable legal expenses.

3. The “SLAMBALL” trademark was awarded for RMB 200,000 in damages

SlamBall (Shanghai) Sports Culture Development Co., Ltd. (“SlamBall”) owns the registered trademark “SlamBall” and “SlamBall in Chinese”. SlamBall sued Shanghai Mengna Sports Culture Development Co., Ltd. (“Mengna”) for trademark infringement.

The court found that the “SlamBall” trademark was a suggestive mark, and the word SLAMBALL itself has certain distinctiveness in terms of services such as physical education and organizing sports competitions, and can distinguish specific service sources. “SlamBall in Chinese” was directly derived from the Chinese transliteration of SlamBall, and was not an existing Chinese vocabulary, which also satisfied the distinctiveness requirements for approval of trademarks under the Chinese Trademark Law. Although relevant associations’ documents or news media reports directly point SlamBall as a specific competitive sport, and even used SlamBall to refer to the sport itself, these facts alone could not draw the conclusion that “the aforementioned trademarks have obviously degraded due to their distinctiveness in subsequent use, and cannot be used to differentiate service sources.” Whether it is the said association documents, news media reports, or online Weibo publicity, almost without exception, there was a deep participation of SlamBall and its management, which direct point SlamBall (as the sport) to SlamBall. Therefore, the relevant public could still clearly perceive the direct connection between the sport and the company. On the other hand, Mengna did not submit sufficient evidence to prove that the term “SlamBall in Chinese” was a legal or conventional generic name. Mengna used the words “SlamBall in Chinese” in sports venue, in introduction of the origin of the SlamBall sport, on WeChat public account, etc., which was highly similar with SlamBall’s portion and was likely to cause the relevant public to mistaken that Mengna was either authorized by SlamBall and had business cooperation with SlamBall. SlamBall’s registered trademarks SlamBall and SlamBall in Chinese had established a stable correspondence and can be recognized as similar trademarks interchangeably. In its judgement, the court ordered Mengna to immediately stop infringement, publish an announcement to eliminate its negative effect on SlamBall, and compensate SlamBall for economic loss and legal costs of RMB 200,000 (USD 31,366).

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Weekly China Trademark News Updates

March 09, 2022

1. Marvel successfully invalidated a squatted “Spider-Man in Chinese” trademark

The Beijing High Court recently made a second-instance judgment, finding that the Disputed Mark owned by an individual and used on goods such as swimwear, shoes, hats, socks, etc. in Class 25 constituted as a similar mark with Marvel’s Cited Mark on identical or similar goods. The individual’s appeal was rejected, and the original judgment was upheld.

Disputed Mark	Cited Mark

The Disputed Mark was applied on December 10, 2014, and was approved for registration on September 13, 2018 for “Clothing for gymnastics, swimwear, shoes, sports shoes, slippers, football boots, hats, socks, belts (for clothing), girdles” after an opposition decision. Marvel then filed an invalidation. The CNIPA found that the Disputed Mark and Marvel’s Cited Mark constituted as similar marks used on identical or similar goods, and that the Disputed Mark damaged the character name of Marvel’s prior work and should be invalidated according to Articles 31 and 32 of the Chinese Trademark Law.

The individual appealed the CNIPA’s decision, but the Beijing IP Court upheld the CNIPA’s decision. The individual appealed to the Beijing High Court.

The Beijing High Court found that: the Disputed Mark’s approved goods for “swimwear, shoes, hats, socks, etc.” were identical or relatively similar with the Cited Mark’s approved goods for “swimwear, socks, suspenders, etc.” in terms of function, production department, sales channels, consumer, etc. and constituted as identical or similar goods. The Disputed Mark consisted of “Spider-Rogue in Chinese,” “ZHIZHUXIA” in pinyin and an image of “Spider-Man.” The Cited Mark consisted of “Spider-Man in Chinese” and English “SPIDER-MAN.” Comparing the “Spider-Rogue in Chinese” and “Spider-Man in Chinese,” there was only one Chinese character difference between the Chinese part of the two parties’ marks, and the overall meaning of the two marks were not clearly distinguished. Considering that the Disputed Mark and the Cited Mark were very similar in terms of referenced subject, text composition, pronunciation, meaning, and overall visual effect, if the two coexist on the same or similar goods mentioned above, the relevant public would easily be mistaken that the goods came from the same entity when paying average attention and viewing each mark separately, or believe that there were special associations between the providers and to be confused with the source of goods. Thus, the first instance court did not err in determining that the Disputed Mark and the Cited Mark constituted as similar trademarks used on identical or similar goods.

In addition, although both the first instance court judgment and the disputed CNIPA decision ruled that the Disputed Mark damaged the prior rights and interests enjoyed by Marvel in relation to the character name in the “Spider-Man” series of films, in fact, there was no relevant fact that Marvel enjoyed a prior interest in the character name in the “Spider-Man” series of films. Even if the character name in the “Spider-Man” series of films constituted as a certain kind of prior interest, the lower court and the CNIPA’s decisions lacked the relevant factual finding that such interest belongs to Marvel. Therefore, the first instance court judgment that the Disputed Mark damaged the prior rights and interests of the character name enjoyed by Marvel lacks factual basis, and this Beijing High Court corrected it.

After comprehensive consideration, the Beijing High Court dismissed the appeal and upheld the first instance court’s judgment.

2. New Balance was awarded of RMB 10.8 million in damages based on its “N” logo decoration

The Shanghai IP Court recently ruled in favor of New Balance against Niubalun (China) Co., Ltd. (“Niubalun”) located in Jinjiang City, Fujian Province in a second instance judgment for Niubalun’s unauthorized use of a logo that was identical or similar to another’s product decoration with certain influence. The court rejected Niubalun’s appeal and affirmed the first instance court’s decision that ordered Niubalun to immediately stop unfairly competing with New Balance by using the “N” logo decoration on two sides of its shoes and pay New Balance for economic losses and reasonable expenses of RMB 10.8 million (USD 1.7 million).

New Balance sued Niubalun for manufacturing or licensing to sell shoes with a “stylized N” logo on two sides. The first instance court found that the “N” logo decoration had become the most prominent and recognizable part of the decoration of New Balance’s sneakers, and had nothing to do with the functionality of the product. Through New Balance’s long-term publicity and repeated use, it was sufficient for the relevant public to associate products with “N” logo decoration on both sides of a sneaker with New Balance, which allowed such decoration to obtain a distinctive feature of identifying the source of a product and be distinctive. Therefore, the use of the N logo on both sides of New Balance’s sneakers constituted as “a good’s decoration that has certain influence.” Thus, Niubalun’s use of a similar logo on identical position of identical goods infringed upon New Balance’s prior rights and interests and amounted to unfair competition. Niubalun was ordered to compensate New Balance for economic losses of RMB 10 million and reasonable expenses of RMB 80,000. Niubalun was also ordered to publish a statement to eliminate its negative impact.

Niubalun was unsatisfied and appealed to the Shanghai IP Court claiming that the “N” letter, upon securing registration as a trademark, should not be protected by the Anti-Unfair Competition Law as a unique decoration of a famous good, and that its use of the “N” letter is a legitimate use of its registered trademark and should not be held liable or amount to unfair competition.

The Shanghai IP Court found that: in spite that a registered trademark and a unique decoration of a famous goods were all commercial logos, and that the unique decoration of the famous goods involved in this case and the registered trademark “” all have the letter “N,” the unique decoration of the famous goods involved also includes a location factor. After all, the famous good’s unique decoration and the registered trademark belong to different rights and are protected by different laws. They can coexist as different civil rights (benefits) and serve separately as the basis for the right to file an infringement lawsuit.

Although Niubalun has legally obtained the exclusive right to use the registered trademark “,” its registration and use were later than New Balance’s use of the unique decoration of the “N” letter on its sneakers. According to the protection of prior rights and the principle of good faith, it is not inappropriate to determine that Niubalun’s use of the “N” letter in a specific position on its sneakers constituted as unfair competition against the unique decoration of a famous goods enjoyed by New Balance.

For the damages, given that there was insufficient evidence to prove the actual losses claimed by New Balance or the profits of Niubalun obtained from infringement, the first instance court comprehensively considered the famous status of the decoration of New Balance’s products, the duration, scale and geographical scope of Niubalun’s infringing acts, and Niubalun’s subjective fault to arrive at an appropriate amount of economic losses and reasonable expenses, which was based on legal evidence and should be affirmed.

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