Weekly China Trademark News Updates

June 14, 2022

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

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

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

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

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

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

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Weekly China Trademark News Updates

June 8, 2022

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

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

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

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

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

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

 Disputed Mark

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

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

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

3. Claire’s successfully invalidated a squatted mark

Disputed Mark

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

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

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

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

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

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Weekly China Trademark News Updates

June 1, 2022

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

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

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

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

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

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

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

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

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

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Weekly China Trademark News Updates

May 25, 2022

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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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.

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