Weekly China Trademark News Updates

January 23, 2024

1. The Court Finds Geographical Indication Collective Mark “Champagne” Constitutes a Well-Known Mark

Recently, the Beijing High Court concluded a second instance trademark infringement dispute between the French Champagne Industry Commission (the “Champagne Commission”), Guangzhou Xuelei Cosmetics Co., Ltd. (“Guangzhou Xuelei”), and Beijing Yalishadi Cosmetics Co., Ltd. (“Beijing Yalishadi”). The court held that the “Champagne” mark with reg. no.  11127266 and the “Champagne in Chinese” mark with reg. no. 11127267 constituted well-known marks on wine and other goods. Guangzhou Xuelei and Beijing Yalishadi should immediately stop the infringement and compensate for economic losses and reasonable expenses of RMB 220,000 (USD 30,980).

Cited Marks

The court found that: First, based on the sales scope, sales volume and sales price of Champagne wine in the Chinese market, and the facts such as the advertising, honors and protected records of the registered “Champagne” and “Champagne in Chinese” marks in mainland China, it was sufficient to conclude that before the infringement occurred on July 5, 2019, the Champagne Commission’s “Champagne” and “Champagne in Chinese” marks have gained high visibility and influence on wine products, and were widely known to the relevant public and constituted well-known marks.

Second, although the packaging boxes and bottles of the accused infringing products were still marked with the words “MeiDun” and “Mei Dun in Chinese,” there are many cases in the market where two or more commercial logos are used on the same product at the same time. The existence of a commercial logo does not necessarily affect the role of other logos in distinguishing the source of goods. The allegedly infringing goods prominently use the “Champagne Life” and “Champagne Life in Chinese” logos on the bottle and packaging box in a more eye-catching manner. The said acts obviously have the purpose of indicating the source of the goods to enable the relevant public to distinguish different product providers, which constituted as trademark use under the Trademark Law.

Third, although the perfume product used by the accused logo and the wine product for which the “Champagne” mark is approved and famous for use are not classified as the same or similar goods according to the CNIPA Classification of Goods and Services, there are relatively large overlap among the relevant public. The “Champagne” and “Champagne in Chinese” marks have been widely known to the public, when the accused logos “Champagne Life” and “Champagne Life in Chinese” were used on the accused infringing goods, it was enough to cause the relevant public’s misunderstanding of the source of goods with the said well-known marks, which constituted an infringement of the Champagne Commission’s well-known trademark rights, and it should bear corresponding legal liability.

2. The Court Recognized “AO Smith in Chinese” as a Well-known Mark

Recently, the Jiangsu High Court concluded a second instance trademark infringement and anti-unfair competition dispute between A.O. Smith Corporation (“A.O. Smith”), A.O. Smith (China) Water Heater Co., Ltd. (“A.O. Smith China”), and Guangdong Simaisi Electric Co., Ltd. (“Guangdong Simaisi”), Taizhou Qingfeng Decoration Co., Ltd. (“Taizhou Qingfeng”). The court held that the “AO Smith in Chinese” mark with reg. no. 1114992 and “AOSmith” mark with reg. no. 2017196 constitute well-known marks on water heaters and other goods. The defendants infringed upon A.O. Smith and A.O. Smith China’s trademark right and should immediately stop the infringement and compensate for economic losses of RMB 1.5 million (USD211,400).

Cited Marks

The court found that: First, despite the administrative rulings found that when a third party used the “AO Smith in Chinese” mark on laundry machine goods in June 2003, the Cited mark “AO Smith in Chinese” with reg. no. 1114992 has not yet constituted as a well-known mar. According to the case-by-case principle followed by courts in recognizing well-known marks, such finding may not necessarily affect this court’s rulings of this case based on the evidence at hand. Therefore, whether the Cited Marks can be recognized as well-known marks shall be determined based on the evidence and facts of this case.

Second, if there is a slight difference between the actually used trademark and the registered trademark, but its distinctive features does not change, it can be regarded as the use of a registered trademark. Before October 2003, the plaintiff used the words “A.O. Smith” and “A.O. Smith in Chinese” in commercial activities, and a stable corresponding relationship between the two marks had been established. The plaintiff’s actual use of the two marks did not change the distinctive features of the trademark involved and can be regarded as trademark use. In addition, for trademarks that have been actually used before registration is approved, such use can be considered as a continuation of use. Therefore, it can be concluded that the plaintiff continued to use its Cited Marks before October 2003.

Third, comprehensive consideration of the sales contracts, advertising, promotion activities, media reports, audit reports involved, market survey reports, search reports, etc. provided by the plaintiff was sufficient to determine that before October 2003, the Cited Marks had been widely known to the relevant public in China and reached a well-known level, and is still well-known today.

In addition, in this case, the Cited marks mainly contains elements such as “Smith in Chinese” and “SMITH.” Through the publicity and use of the right holder, “Smith in Chinese” and “SMITH” have become the core elements for identifying the source of goods. The accused infringing logo is similar to the Cited Marks in text, pronunciation, and overall appearance, which constituted similar marks. When the alleged infringing trademark was used, the Cited Marks had already gained a high reputation across the country. The use of the accused infringing mark on the same or similar goods can easily cause confusion to the relevant public, and the accused acts constituted trademark infringement.

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Weekly China Trademark News Updates

January 17, 2024

1. The “Freshfragrance” mark  was invalidated by the “fresh” mark

In an administrative trademark invalidation dispute between the plaintiff Fresh Company and the defendant CNIPA and the third party Qiong Luo, the Beijing Intellectual Property Court held that the Disputed Mark violated Article 30, Article 31 and Article 32 of the 2013 Trademark Law. The CNIPA’s decision shall be revoked and the CNIPA shall make a new ruling.

Disputed Mark

No.13450891 Subclass 4402

Cited Mark 1	Cited Mark 2	Cited Mark 3	Cited Mark 4	Cited Mark 5
No. 13450891 Subclass 0306	No. 10838741 Subclasses 0301, 0305-0306	No. 8690350 Subclasses 0301, 0305-0306	No. 25228002 Subclass 4405	No. 22753556A Subclasses 4401, 4403, 4405

The first issue is whether the Disputed Mark filed by the third party violates Articles 30 and 31 of the 2013 Trademark Law. The court found that the Disputed Mark consists of the English letters “Freshfragrance”. according to the general English cognition level of Chinese consumers, it is easy to read it as two parts: “Fresh” and “fragrance” of which the “Fresh” part is the same as the Cited Marks 1 and 4 in letter composition. It is also identical with the distinctive part of Cited Marks 2 and 3. It is similar in pronunciation to the Cited Mark 5. The Disputed Mark constitute as an identical mark with all five Cited Marks.  Although all approved services such as “beauty services, massages, and manicures” for use under the Disputed Mark and the approved goods and services for use under the Cited Marks 1 to 5 are in different classes, when considering the following factors, they constitute similar marks. First, the “beauty services, makeup artist services, waxing and hair removal” and other services approved for use by the Disputed Mark are identical to the Cited Marks 1 to 5. The consumer groups of the goods and services approved for use such as “cosmetics and sanitary equipment rental” basically overlap, and are often used in combination, so they are highly related. Second, the Disputed Mark completely contains the distinctive parts of the Cited Marks 1 to 4. They are highly similar. Third, the plaintiff’s “fresh/fuleishi in Chinese” series of trademarks have gained a certain reputation on “cosmetics” products through continuous publicity and use. The coexistence of the Disputed Mark and the Cited Marks may easily cause confusion and misunderstanding the relevant public. In summary, the Disputed Mark and the Cited Marks 1 to 5 constitute similar marks on similar goods and services which violated Articles 30 and 31 of the 2013 Trademark Law.

The second issue is whether the Disputed Mark violates Paragraph 3, Article 13 of the 2013 Trademark Law. The court found that the sales evidence, publicity news, comment articles, etc. submitted by the plaintiff could prove that the plaintiff’s “fresh” and “Fuleishi in Chinese” trademarks had a certain degree of popularity on “cosmetics” products through use and promotion. However, after considering the scope of influence and scale of the popularity, the Cited Marks have not yet reached the level of well-known. Therefore, the filing of the Disputed Mark does not violate Paragraph 3, Article 13 of the 2013 Trademark Law.

The third issue is whether the Disputed Mark violates Paragraph 1(vii), Article 10 and Paragraph 1(ii), Article 11 of the 2013 Trademark Law. The plaintiff claimed that the word “fragrance” in the Disputed Mark means “perfume, fragrance” and its use in services such as Class 44 “beauty services and makeup artist services” can easily lead to consumers misunderstanding the content of the services. It is also a direct expression of the designated service. After hearing, the court held that the use of the word “fragrance” in services such as “beauty services and makeup artist services” can easily cause consumers to associate and believe that the services related to the use of the Disputed Mark denotes wonderful enjoyment, but such associations have not yet reach the extent of being deceptive, it does not violate Paragraph 1(vii), Article 10  of the 2013 Trademark Law. In addition, although the Disputed Mark may cause consumers’ associations and imaginations, it is not a direct description of its service, so it does not violate Paragraph 1(ii), Article 11 of the 2013 Trademark Law.

The fourth issue is whether the Disputed Mark damages the plaintiff’s prior trade name rights. The court found that the plaintiff had been selling “fresh/fuleishi in Chinese” brand cosmetics in China since 2012 at the latest. Through continuous publicity and use, its English trade name “fresh” has gained a certain reputation in cosmetic products. The third-party should have known that the Disputed Mark “Freshfragrance” completely includes the plaintiff’s English trade name “fresh” and the two are similar in overall appearance and text composition. The approved services under the Disputed Mark such as “beauty service and make-up artist service” basically overlap with the consumer groups of the “cosmetics” goods for which the plaintiff’s trade name is famous. Thus, the two mark constitute similar goods and services. Therefore, the application for registration of the disputed trademark damaged the prior right of the plaintiff and violated Article 32 of the 2013 Trademark Law.

Finally, the court held that the evidence on record was insufficient to prove that the filing of the Disputed Mark violated Article 4 and Paragraph 1, Article 44 of the 2013 Trademark Law.

2. Infringement of Dyson’s trademarks and unfairly competed with Dyson  was ordered to pay RMB 800,000 in damages

The Sichuan High Court dismissed a trademark infringement and unfair competition dispute brough by the appellant Dyson Technology Chengdu Co., Ltd. (“Dyson Chengdu”) against the appellees Dyson Technology Co., Ltd. (“Dyson”) and Dyson Trading (Shanghai) Co., Ltd. (“Dyson Shanghai”) and upheld the lower court’s judgment.

The first instance court found that: 1. Dyson Chengdu has posted on its website www.hvlsfan.cn, www.daisencd.com, WeChat applet “Sichuan Industrial Ceiling Fan,” and the 1688 platform “Dyson Technology Chengdu Co., Ltd.” store , “Dyson Technology Chengdu Company” (TikTok account xc516) and “Dyson Technology Chengdu Co., Ltd.” (Tiktok account Daisenkejich) and third-party websites the accused infringement marks “Dyson in Chinese” and “Dyson Technology in Chinese” and “DAISEN” for the purpose of selling and promoting its industrial fans. The use of the said logos had played the role of identifying the source of the product and constituted trademark use. The specific products used by Dyson Chengdu were mainly large industrial ceiling fans, which is identical to the ceiling fans approved for use under the “Dyson in Chinese” and “DYSON” trademarks with reg. nos. 6369537 and 6334841 (“Cited Marks”) claimed by Dyson and Dyson Shanghai in Class 11. The “Dyson in Chinese” and “Dyson” logos used by Dyson Chengdu were identical or similar to the Cited Marks. The “DAISEN” mark used by Dyson Chengdu had identical pronunciation as the “DYSON” mark owned by Dyson with only some letters being different. Since the Cited Marks had a high reputation in the relevant industries in China, based on the general attention of the relevant public, the two marks were similar. To sum up, Dyson Chengdu used logos similar to the Cited Marks in identical or similar goods without the permission of Dyson and Dyson Shanghai, which could easily cause confusion among the relevant public and infringed upon the trademark rights of Dyson and Dyson Shanghai. In addition, the first instance court held that the “DS and Design” used by Dyson Chengdu were neither identical nor similar to the Cited Marks, so it did not support the trademark infringement claim based on it. 2. The main part of the www.daisencd.com domain name registered and used by Dyson Chengdu in March 2021 is similar in pronunciation and spelling to the Cited Marks, which was enough to cause misunderstanding among the relevant public, and Dyson Chengdu has the bad faith intent to deliberately mislead users into accessing its website. Therefore, its actions infringed upon the trademark rights of Dyson and Dyson Shanghai. 3. Dyson Chengdu was registered and established in 2017. As a company that also produces and sells fan products, it should be aware of the popularity of the Cited Marks and the names of Dyson and Dyson Shanghai. However, it still used “Dyson in Chinese” as its company name, which is the same as the Cited Marks. Such actions showed subjective intent to take advantage of the goodwill of others, which may easily cause the relevant public to mistakenly believe that it was related to Dyson and Dyson Shanghai, or there was a specific connection that creates confusion. Therefore, Dyson Chengdu’s use of “Dyson in Chinese” as a corporate name and used words including “Dyson Technology” and “DAISENTECHNOLOGY” in recruitment, bidding and other business activities constituted unfair competition. Accordingly, the first instance court held that Dyson Chengdu should immediately stop the infringing behavior (including stopping using the infringing logo, stopping using and canceling the www.daisencd.com domain name, stopping using the company name with the same or similar words as “Dyson”, and change its company name), post apologies on newspaper to eliminate the impact, and compensation for economic losses and reasonable expenses totaling RMB800,000 (USD112,000).

Dyson Chengdu appealed. The Sichuan High Court found that the key issues in the second instance were 1. Whether Dyson Shanghai has the right to initiate litigation in this case. 2. Whether the accused actions of Dyson Chengdu constitute trademark infringement and unfair competition. 3. Whether the amount of compensation determined by the first instance judgment is appropriate.

Regarding issue 1, the court found that Dyson Shanghai was authorized by Dyson, the trademark owner, to use the Cited Marks within China, and had the right to file lawsuits for infringement of trademark rights, corporate names, etc. According to relevant legal provisions, Dyson Shanghai has the right to initiate litigation in this case.

Regarding issue 2, the Sichuan High Court found that the approved goods for use under the Cited Marks in Class 11, including air conditioning devices, ceiling fans, self-operated fans, etc., are the same as the large industrial fan used by Dyson Chengdu with the infringing logo. They constituted the same goods. Combined with the fact that the Cited Marks enjoys a high reputation in China, Dyson Chengdu used a logo similar to the Cited Marks on the same product, which was enough to confuse the relevant public and constituted trademark infringement. Regarding Dyson Chengdu’s appeal that its use of a legally registered corporate name does not constitute unfair competition, the court found that the evidence on record could prove that Dyson Shanghai has a certain market reputation in its industry and that the “Dyson” brand name is a company name with certain influence. Dyson Chengdu, as a later registered commercial entity that sells fan products like Dyson Shanghai, should be aware of Dyson Shanghai’s well-known status and reasonably avoid it based on the principle of good faith and recognized business ethics. However, Dyson Chengdu did not make any reasonable circumvention when registering its company name, and still used “Dyson in Chinese” in its company name, which could easily cause people to mistakenly believe that it has a specific connection with Dyson Shanghai and has the ability to take advantage of Dyson Shanghai’s good will which constituted unfair competition.

Regarding focus issue 3, Dyson and Dyson Shanghai did not provide evidence to prove the actual losses they suffered due to the infringement, nor the benefits gained by Dyson Chengdu from the infringement. There is no trademark license fee, etc. for reference in this case. The first instance court comprehensively considered the popularity and influence of the Cited Marks, the nature, duration, scope of influence and subjective state of the infringement committed by Dyson Chengdu, as well as the fact that a lawyer appeared in court in this case and the difficulty of the case. The court also considered the evidence collection process, lawyer’s work attitude and workload and other factors. The court finally determined that Dyson Chengdu should compensate Dyson and Dyson Shanghai for a total of RMB800,000 (USD112,000) in economic losses and reasonable expenses, which was not inappropriate.

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Weekly China Trademark News Updates

January 10, 2024

1. Damages of RMB 5 million was ordered against the counterfeit “Skechers” mark

SKECHERS U.S.A., INC. II (“Skechers”) sued individuals Xiong, Mao, Xiao and others for trademark infringement. The court found that Skechers is the owner of “,” “,” and “Skechers in Chinese” marks on sneakers related goods. All marks are valid. Xiong, Mao, and Xiao have been producing and selling shoes counterfeiting the registered trademarks of Sketchers since 2017. Xiong, as the main person in charge, opened the factory, was responsible for material procurement, and contacted potential customers. Mao and Xiao were in charge of the daily production matters of the factory and were responsible for the production and packaging of the counterfeited products. On May 20, 2021, the public security authorities arrested Mao, Xiao, and another individual Cai at the scene, and seized a total of 14,052 pairs of counterfeit Skechers sneakers, valued at up to RMB 8 million (USD1.12 million). On May 21 of the same year, the public security authorities again seized a total of 10,470 pairs of counterfeit Skechers sneakers by the four defendants, valued at nearly RMB 6 million (USD841,000). The Defendants Xiong, Mao, Xiao, and Cai produced and sold sneakers with counterfeit “SKECHERS” mark, which constituted the crime of counterfeiting a registered trademark, and also infringed the Skechers’ trademark right, and should be held liable for civil damages in accordance with the law. In this case, it has been ascertained that from 2017 to 2021, the Defendants produced and shipped a total of 321,211 pairs of counterfeit Skechers sneakers, which were valued between RMB 19 million to 305 million (USD 2.6 million to 42 million) according to the shipping price of RMB 60-95 per pair, and the total infringing profits of the four Defendants were calculated at a total amount of not less than RMB 2 million (USD279,000) based on the level of the actual profit margin of approximately 10% as confessed by the four Defendants. Due to the defendants’ infringement lasted for a long time, production, and sales scale, with subjective infringement of intent and infringement of the seriousness of the circumstances, Skechers claimed that Xiong’s damage should be tripled as punitive damages, the court supported Skechers’ claim and ordered Xiong to pay for economic loss of RMB 5 million (USD699,291) and reasonable costs of RMB 162,504 (USD22,727). Mao and Xiao should be jointly responsible for RMB 3662,504 of Xiong’s liability.

2. Davidoff wins another administrative trademark enforcement action

Hong Kong Wanli International Limited is the registrant of the “Davidowen Daweiouwen in Chinese” mark with reg. no. 12873589 (“Disputed Mark”). ZINO DAVIDOFF SA (“Davidoff”) filed an invalidation request based on its prior trademarks. After hearing, the court found that the goods designated for use by Davidoff’s “DAVIDOFF” mark with reg. nos. 1790412, G467510 and G876874 and the Disputed Mark fall into spices and cosmetics related classes. In terms of function, use, manufacturing department, place of sale, consumer, etc., they are identical or are highly related, and constitute identical or similar goods. Given that the Disputed Mark consisted a combination of “Davidowen” and “Daweiouwen in Chinese,” which is highly similar to the corresponding Chinese mark of Davidoff’s “DAVIDOFF” mark in China based on the evidence submitted by Davidoff. Davidoff’s evidence can prove that “Davidoff in Chinese” has formed a one-to-one corresponding relationship with the “DAVIDOFF” mark through long term use and promotion. Comparing the two marks, they are similar in terms of composition and pronunciation. Considering such high relevance, the Disputed Mark is highly likely to cause relevant public to be mistaken as a series of Davidoff’s “DAVIDOFF” mark and cause confusion. Therefore, the registration of the Disputed Mark violated Article 30 of the 2013 Trademark Law and should be invalidated.

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Weekly China Trademark News Updates

January 3, 2024

1. Trademark and Brand Development Index 2023

Since 2020, the Intellectual Property Utilization Promotion Department of the CNIPA has guided the China Trademark Association to compile and publish the “Trademark and Brand Development Index (TBDI),” which evaluates the trademark brands of all provinces (autonomous regions and municipalities included) across the country to conduct index evaluation on the comprehensive level of development.

The newly released TBDI-2023 also encloses the 2023 List of Global Brand Value Top 100 – PRC brand list, which is compiled by China Trademark Association and the Information Resource Management Colleague of Renmin University using the PRC algorithm and data from Brand Finance, Brand Z, Interbrand and Forbes. The top ten brands are Apple, Google, Amazon, Microsoft, Samsung, McDonald’s, Facebook, Tesla, Coca-Cola and Nike. The top ten Chinese brands are Tencent, Moutai, Alibaba, Douyin (TikTok), Industrial and Commercial Bank of China, Huawei, China Construction Bank, Ping An, State Grid, and Agricultural Bank of China.

2. Revoking the first-instance judgment, the Beijing High Court determined that the registration of “Yiqi Hongqi” on tires should be invalidated

The Disputed Mark “Yiqi Hongqi” (FAW Red Flag in Chinese) with reg. no. 29148123 was filed on February 6, 2018 and approved on March 7, 2019 for use on automobiles; automobile wheels; automobile tires and other goods in Class 12. The current trademark owner is China FAW Corporation.

Hualin Jiatong Company cited its ”  ” “” “” marks to invalidate the Disputed Mark. The CNIPA found the marks were similar and held that the Disputed Mark should be invalidated on the similar goods of “tires for vehicles; automotive tires.”

China FAW Corporation appealed the unfavorable decision.

After hearing, the Beijing IP Court found that: the Disputed Mark consists of the Chinese characters for “FAW Red Flag” in ordinary font, the Cited Marks contain the stylized Chinese characters of “Red Flag,” and the Cited Marks 1 and 3 also contain related design. Looking at the development history of the “Red Flag” trademarks owned by China FAW Corporation and Hualin Jiatong Corporation on automobile products and tire products respectively, it can be concluded that the “Red Flag” trademarks owned by both companies were adopted by their predecessors under special historical backgrounds and economic systems. The legitimate rights obtained from their own operations should be protected in accordance with the law. It should be pointed out that although the three Cited Marks are currently valid trademarks, Hualin Jiatong Company recognized that it stopped using the “Red Flag in Chinese” trademark after introducing foreign investment in 2003. In 2004, China FAW Corporation successively applied for marks incorporating “Red Flag in Chinese” on vehicle tire products, which were subsequently approved. Until Hualin Jiatong Company resumed use of the “Red Flag” trademark in 2020, there were many “Red Flag” marks on the market on tires related goods. On this basis,  China FAW Company applied for the Disputed Mark in 2018 and added its well-known word “FAW in Chinese” before the word “Red Flag,” which in fact helped the relevant public to distinguish on tire products produced between China FAW Company and Hualin Jiatong Company. In addition, the tire goods in this case have a special relationship with the well-known automobile products of China FAW Corporation, which are complete products and major parts. The two products are highly related. The popularity of China FAW Corporation’s “Red Flag” trademark on automobile products can be extended to tire goods. Taking the above factors into consideration, the coexistence of the Disputed Mark with the three Cited Marks on the product “tires for vehicles; automobile tires” will not easily lead to confusion and misunderstanding by the relevant public.

Hualin Jiatong Company was dissatisfied with the original judgment and appealed to the Beijing High Court. In the second-instance, the court held an inquiry and China FAW Corporation admitted that after securing registration of trademarks containing the word “Red Flag” on tire products in 2004, there was no relevant evidence of use.

The Beijing High Court found that the Disputed Mark and the Cited Marks 1-3 were similar in terms of text composition, pronunciation, meaning, and overall appearance, and thereby constituted similar marks. The evidence on file submitted by China FAW Corporation was insufficient to prove that the Disputed Mark can be distinguished from the Cited Marks through use. In addition, although the “Red Flag in Chinese” and “FAW in Chinese” trademarks owned China FAW Company were relatively famous on automobile products, the evidence in the case was not enough to prove that its popularity on automobile products has extended to the ” tires for vehicles; automobile tires” goods used under the Disputed Mark. Therefore, the registration of the Disputed Mark on the goods “tires for vehicles; automobile tires” and the three Cited Marks constitute similar trademarks used on the same or similar goods and should be declared invalid.

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Weekly China Trademark News Updates

December 27, 2023

1. Reversal of the second instance judgment! Invalidation of the “Puma” design similarity trademark case

Recently, the Beijing High Court made a final judgment on a trademark invalidation case between the appellant Puma Europe Co., Ltd.  (“Puma”) and the respondent the CNIPA, and the third party in the original trial, Rujun Zuo.

Disputed Mark

Cited Marks

The Beijing High Court found that the Disputed Mark and the Cited Marks are both design marks, and they are similar in design style, composition elements, visual effects, etc. At the same time, according to the advertisements, media reports, sales data, annual income statement, profit and loss statement and other documents submitted by Puma, it can be proved that before the application of the Disputed Mark, each Cited Mark has a certain degree of popularity on “shoes” and other goods. Rujun Zuo, as a competitor in the same industry, should have known about the said information, but failed to fulfill his obligation to reasonably avoid it and still filed for many marks, including the Disputed Mark on identical or similar goods. Such filings could not be regarded as a coincidence. If the Disputed Mark and the Cited Marks are used on identical or similar goods at the same time, it would easily cause the relevant public to mistakenly think that the two were series of trademarks of the same market entity, or that there was some kind of relationship between the two trademark holders, which may lead to misidentification of the source of goods. The difference between the Disputed Mark and the Cited Marks was not enough to eliminate confusion and misunderstanding among the relevant public, and the evidence on record was not sufficient to prove that the Disputed Mark can be distinguished from the Cited Marks after use.

2. The 3D trademark of Panerai is legal and valid, and the unauthorized manufacture and sale of similar wristwatch products constitute an infringement

The Tianhe District Court of Guangzhou rendered a trademark infringement and unfair competition case between the plaintiff, Officine Panerai AG (“Panerai”), and the defendant, holding that the defendant should immediately stop the production and sale of the infringing products and compensate Panerai for the economic loss and the reasonable costs for a total of RMB650,000 (USD90,930).

Allegedly infringing goods

Cited Marks and Panerai’s products

The court found that the defendant operated an online store to sell watches, including the allegedly infringing products. The allegedly infringing goods were identical to the goods authorized for use of Panerai’s 3D trademark. Upon comparison, the shapes and sizes and proportions of the cases, crowns and lugs of the allegedly infringing goods were similar to the relevant elements of the Cited Marks as a whole, and the hands and numerals displayed in the dials of the allegedly infringing goods were similar to those of the said trademarks, which had a close resemblance. The said goods infringed the Panerai’s trademark right by using the product shape similar to its 3D marks without the Panerai’s authorization. The defendant as the production and sale of infringing goods should be held liable for infringement and damages.

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Weekly China Trademark News Updates

December 19, 2023

1. Top 10 Typical Bad Faith Trademark Registration Cases from the Beijing Intellectual Property Court

On December 14, 2023, the Beijing Intellectual Property Court released its top 10 typical cases regulating bad faith trademark registrations. Among them, administrative cases cover the application of absolute grounds and relative grounds of the Trademark Law, and the regulatory targets include trademark registrants and trademark agencies. These cases further clarify the judgment dimensions and identification standards of bad faith trademark registrations. Civil cases include both abuse of rights by trademark owners and cases in which punitive damages are applied in accordance with the law to infringers with obvious bad faith intent and those that cause serious infringement consequences.

Case 1 – File numerous trademark applications in a short period of time without proving the true intention of use or provide other genuine reasons, which constitutes “bad faith registration without purpose of use” as referred to Paragraph 1 of Article 4 of the Trademark Law.

Summary of the decision:
To review and determine whether the applied trademark falls under the said circumstances, courts must consider the number of registered trademarks applied for by the applicant, including natural person, legal person, or other organization related to it, the classes designated for use, and trademark transactions. Factors such as the applicant’s industry, business conditions, and whether the trademark filed for registration is the same as or similar to someone else’s famous trademark. If a large number of trademarks are filed in multiple classes of goods or services in a short period of time, which obviously exceeds the normal production and operation needs, and the applicant cannot prove the true intention of use or other legitimate reasons, it should be deemed as a registration in bad faith without the purpose of use.

Case 2 – If the current or former legal representative, senior managers, and other staff of the trademark applicant worked for others, and they knew that others had previously used the trademark, but preemptively registered a similar trademark on similar goods, it is deemed as a violation of Paragraph 2 of Article 15 of the Trademark Law.

Summary of the decision:
“Other relationships” stipulated in Paragraph 2 of Article 15 of the Trademark Law refers to situations where there are specific relationships other than those stipulated in Paragraph 1 of Article 15, and the existence of unregistered trademarks of others can be known and should be actively avoided. The applicant and the prior user have kinship, employee relationships, business address proximity, etc. The current or former legal representative, senior managers and other staff of the trademark applicant worked for others, which constitutes “other relationships” stipulated in this Paragraph. Anyone who knows that others have previously used a trademark through the above relationship but preemptively register a similar trademark on similar goods violates Paragraph 2 of Article 15 of the Trademark Law.

Case 3 – If a trademark applicant files a trademark containing a geographical indication but cannot prove that the designated goods come from the scope of protection of the protected products from that geographical indication, it should be determined that the use of the disputed trademark is likely to mislead the public.

Summary of the decision:
The protection of geographical indications is intended to prevent goods that do not originate from the geographical indications from misleading the public by using such trademarks. Thereby, ensuring the specific quality, reputation or other characteristics of goods using trademarks containing geographical indications are mainly determined by the natural or human factors of the geographical indication. If there is no evidence to prove that the goods come from the scope of protection of the protected goods of that geographical indication, and the trademark filing contains such geographical indications, it should be determined that the use of the trademark is likely to mislead the public.

Case 4 – The names of TV columns and programs with certain influence constitute prior rights stipulated in Article 32 of the Trademark Law. If a trademark applicant squatted an identical or similar trademark on the same or similar goods, he shall be subject to the regulations under Article 32.

Summary of the decision:
TV columns and programs have the attributes of goods, and the names of TV columns and programs that have certain influence are “goods names that have certain influence” as stipulated in Article 6 of the Anti-Unfair Competition Law and constitute “priority rights” as stipulated in Article 32 of the Trademark Law. Therefore, if a trademark applicant squatted a trademark with identical or similar title to someone else’s TV column or program that has a certain influence on identical or similar goods, it is easy to confuse the relevant public to mistakenly believe that the trademark applicant has a specific connection with the owner of the prior right, which constitute “damage to the prior rights of others” stipulated in Article 32 of the Trademark Law.

Case 5 – If a trademark applicant applies for the registration of a large number of trademarks based on public event terms and names of public cultural resources for the purpose of improperly occupying public resources, this constitutes “obtaining registration by other unfair means” as specified in Paragraph 1 of Article 44 of the Trademark Law.

Summary of the decision:
“Obtaining registration by other improper means” as mentioned in Paragraph 1 of Article 44 of the Trademark Law refers to disrupting the order of trademark registration, harming public interests, improperly occupying public resources, or seeking improper benefits by means other than deception. A trademark applicant who applies to register a large number of trademarks for public event terms and public cultural resource names has the subjective intention to improperly occupy public resources and should be deemed as “obtaining registration by other improper means” as stipulated in Paragraph 1 of Article 44 of the Trademark Law.

Case 6 – A trademark agency files a trademark in the name of its former executive in order to bypass the regulation, such filing can be regarded as filing by a trademark agency as regulated by Paragraph 4 of Article 19 of the Trademark Law.

Summary of the decision:
Paragraph 4 of Article 19 of the Trademark Law clarifies the circumstances under which trademark agencies are prohibited from registering trademarks. The legislative intent is to protect public interests and prevent trademark agencies from taking advantage of the convenience or advantage of being familiar with the trademark registration process to squat others’ trademarks for profit, disrupting the order of trademark registration. The act of a trademark agency applying to register a trademark in the name of its former executive can be regarded as an act of the trademark agency and shall be subject to Paragraph 4 of Article 19 of the Trademark Law.

Case 7 – Regarding the applicant’s malicious cross-class squatting of a well-known mark of others on the Internet, factors such as the applicant’s subjective bad faith on the Internet and whether the relevant public for goods or services are highly overlapping should be fully considered to reasonably determine the scope of cross-class protection of the well-known mark.

Summary of the decision:
When determining whether a trademark on the Internet constitutes a well-known mark, the characteristics and speed of information dissemination on the Internet, the establishment of brand influence, and the regions of influence, etc. should be fully considered. Various factors for the identification of a well-known mark should be comprehensively considered. For actors who squatted other’s well-known mark on the Internet in other classes, factors such as the squatter’s degree of subjective bad faith and whether the relevant public for goods or services are highly overlapping should be fully considered to reasonably determine the scope of cross-class protection for well-known marks. This will intensity regulation of the scope of protection of well-known marks.

Case 8 – The applicant knew that the registered trademark had major rights defects but still used it as the main purpose to obtain unfair commercial interests and harm the legitimate rights and interests of others, and sent demand letters to others and filed administrative complaints. Such acts seriously violated the principle of good faith and constituted abuse of trademark rights.

Summary of the decision:
A trademark registrant knew that the registered trademark has major rights defects, but still sent demand letters to others, filed administrative complaints, etc. with the main purpose of seizing unfair commercial interests and harming the legitimate rights and interests of others. Such acts seriously violate the principle of good faith and constitute abuse of trademark rights. The trademark registrant shall be liable for compensation in accordance with the law for the necessary expenses incurred by the allegedly infringed party to safeguard their legitimate rights and interests and respond to the trademark registrant’s abuse of trademark rights.

Case 9 – A party who violates the principle of good faith by filing a trademark infringement lawsuit against others’ fair use of trademark rights based on trademarks obtained with bad faith constitute abuse of rights.

Summary of the decision:
The granting and exercise of trademark rights shall abide by the principle of good faith. If a party violates the principle of good faith and files an infringement lawsuit against others’ fair use of trademark rights based on trademark obtained with bad faith, it not only harms the legitimate rights and interests of others, but also disrupts the order of fair competition in the market, constituting abuse of rights, and its claims should be dismissed in accordance with the law.

Case 10 – Where the infringer carried out “all-round” imitation of the right holder’s well-known brand in all aspects, including trademarks, product packaging, slogans, sales methods, etc., and there was mixing genuine and counterfeit goods, the infringer is said to have taken advantage of the right holder’s goodwill in obvious bad faith and such consequences of infringement are serious, and punitive damages should be applied.

Summary of the decision:
Unlike infringement that only targets a single trademark, “all-round” brand imitation has a greater impact on brand image and rights. The specific patterns may include registering and using trademarks that are similar to the rights holder’s trademark, imitating packaging and decoration, mixing and matching genuine and counterfeit products for sale, using misleading slogans, etc. For such serious infringements of “all-round” imitation of previously well-known brands, punitive damages should be applied.

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Weekly China Trademark News Updates

December 12, 2023

1. The Jiangsu High Court recognized “BURBERRY” as a well-known mark in a decision against a squatted mark registered for over 5 years and awarded RMB 6 million in damages

Recently, the Jiangsu High Court concluded a trademark infringement and anti-unfair competition lawsuit between Burberry Limited (“Burberry”), Shentu Clothing (Shanghai) Co., Ltd. (“Shentu”), Xinboli Trading (Shanghai) Co., Ltd. (“Xinboli”). The court recognized the “BURBERRY” trademark with reg. no. G733385 and the “Burberry Equestrian Knight Design” trademark with reg. no. 781602 (together as “Cited Marks”) constituted well-known marks on clothing and other goods. The defendant had infringed upon Burberry’s trademark and its acts constituted unfair competition. The defendant shall compensate Burberry for economic losses of RMB 6 million (USD 836,120).

Cited Marks

The court found that, first, based on the sales regions and circumstances, the duration of continuous use, the publicity method, duration, extent, geographical scope, and the market reputation of the Cited Marks, it was sufficient to conclude that, before the application date of the allegedly infringing trademark “BANEBERRY” (“Disputed Mark”), Burberry’s Cited Marks were widely known to the relevant public in China and were well-known marks.

Second, although the Disputed Mark and the Cited Marks were approved in the same class, for registered well-known trademarks, the scope of protection extends to marks filed on unidentical or dissimilar goods. For unregistered well-known marks, the scope of protection extends to marks filed on identical or similar goods. Article 45 of the Trademark Law stipulates that if a registered trademark violates the provisions of Article 13 of this Law, within five years from the date of registration of the trademark, the owner of the prior right or the interested party may request the Trademark Review and Adjudication Board to decide to revoke the registered trademark. For registration in bad faith, the owner of a well-known trademark is not subject to the five-year time limit. In this case, based on the fact findings, Burberry’s Cited Marks were not limited by the said five-year time limit.

Third, given that the Cited Marks are well-known marks registered in Class 25 for clothing and other goods, and the Disputed Mark was widely used in the signage of stores selling clothing and related goods, which constituted as bad faith copy and imitation of Burberry’s well-known Cited Marks and misled the relevant public, constituted trademark infringement, and should bear civil liability to stop the infringement and compensate for losses.

2. The second instance court decreased the damages for the “Zhou Liu Fu in Chinese” mark trademark infringement from RMB 30 million to RMB 5 million

Recently, the Hubei High Court issued a second instance judgment for a trademark infringement dispute between Zhou Liu Fu Jewelry Company Limited (“Zhou Liu Fu”), Hong Kong Zhou Liu Fu Jewelry & Gold Company International Group Limited (“Hong Kong Zhou Liu Fu”), Guangdong Fenglong Jewelry Co., Ltd. (“Fenglong”), and Wuhan City Jiang Han District Hongyi Jewelry Co., Ltd. (“Hongyi). The court upheld the trademark infringement finding from the first instance court but decreased the compensation from RMB 30 million (USD 4.18 million) to RMB 5 million (USD 696,650).

Cited Mark

Zhou Liu Fu was established in 2004 in Shenzhen and owns “Zhou Liu Fu” and “Zhou Liu Fu in Chinese ZHOU LIU FU” marks in jewelry related classes. Zhou Liu Fu had been affirmed by the China Jewelry and Jade Jewelry Industry Association as a well-known mark in China in 2015 and 2018.

Hong Kong Zhou Liu Fu was established in 2008 in Hong Kong under the legal name of “Hong Kong Zhou Liu Fu Jewelry Gold International Co., Ltd.” and it had filed trademarks using the said name in Classes 14 and 35. All of its marks filed in Class 14 had been invalidated by the CNIPA. However, trademarks in Class 35 for secretarial related, accounting, medical equipment, and human resource consultation were allowed. The WeChat account of Hong Kong Zhou Liu Fu showed that it has over 572 stores nationwide in accessories and jewelry related business.

The first instance court found that the “Zhou Liu Fu” trademark owned by Zhou Liu Fu is distinctive. Fenglong and Hongyi (acting as Hong Kong Zhou Liu Fu’s agent in mainland China) knowingly used such mark in soliciting franchisees, which exceeded the approved use of the trademarks owned by Hong Kong Zhou Liu Fu and was suspected as taking advantage of the fame of Zhou Liu Fu. The first instance court awarded Zhou Liu Fu RMB 30 million in compensation.

The second instance court found that Zhou Liu Fu had won a compensation of RMB 40 million through a series of rights protection lawsuits. The first instance court calculated the profit from infringement as approximately RMB 30 million based on 572 franchise stores and a franchise fee of RMB 60,000 per store. However, it did not consider that 322 out of the 572 stores had been ordered to pay compensation. Therefore, the liability for the infringement of Hong Kong Zhou Liu Fu should be reduced to RMB 5 million in order to avoid repeated compensation for the same infringement.

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Weekly China Trademark News Updates

December 6, 2023

1. The “KKW” mark was invalidated based on bad faith

The Beijing Intellectual Property Court rejected the plaintiff Yuanqing Yan’s appeal petition in a trademark invalidation case against the CNIPA and the third-party KIMSAPRINCESS INC. (“KIMSAPRINCESS”).

The Disputed  Mark was “KKW” with reg. no. 26910248 in Class 35 for “advertising; organizing commercial or advertising exhibitions; accounting; retail or wholesale services of pharmaceutical products; displaying goods in communication media for retail purposes; personnel management consulting; marketing on behalf of others; optimizing search engines for marketing purposes; and marketing on behalf of others; optimizing search engines for marketing; providing online marketplaces for buyers and sellers of goods and services; computer entry services.”

The issue was whether the Disputed Mark’s registration violated the deceptive or unfair means registration clause under Article 44(1) of the 2013 Trademark Law. The court found that “KKW” is a registered trademark under KIMSAPRINCESS, which was founded by the famous celebrity Kim Kardashian. The evidence submitted by KIMSAPRINCESS proved that “KKW” brand cosmetics, perfume and other goods have had a certain influence in the China market. Yuanqing Yan has applied for registration of more than one hundred trademarks in various classes, including more than 20 “KKW” series trademarks which were identical or similar to KIMSAPRINCESS’s trademarks, such as “KKW” “KKWBEAUTY” “KKW Kai Kai Wei in Chinese” “KKW Ka Ka Wei in Chinese” “KKW Ka Ka Wa in Chinese” “KKWQIC” and “KKWYANQINA”. These filings can hardly be explained as accidental or purely coincidental. Moreover, some of Yuanqing Yan’s trademarks have been invalidated by the CNIPA as constituting “obtaining registration by other improper means”. Yuanqing Yan’s filing of the said marks had obvious subjective bad faith intent of copying and imitating other people’s trademarks, and also exceeded the needs of normal production and operation, disrupted the normal administrative order of trademark registration, and damaged the market environment of fair competition, and was not legitimate, and constituted “obtaining registration by deceptive means or other improper means” under Article 44(1) of the 2013 Trademark Law.

2. “He Ni Ken in Chinese” constituted similar to “HEINEKEN” and was invalidated

In a trademark invalidation dispute between the Plaintiff HEINEKEN BROUWERIJEN B.V. (“Heineken”), the Defendant CNIPA, and the third-party Wenliang Pan, the Beijing Intellectual Property Court has revoked the CNIPA’s decision and ordered the CNIPA to deliver a new decision.

Disputed Mark	Cited Mark 1	Cited Mark 2
Reg. No. 38696030 Class 32	Reg. No. G678138 Class 32	Reg. No. 3289981 Class 32

The two issues in this case were: first, whether the Disputed Mark and the Cited Mark constituted similar trademarks used on identical or similar goods as stipulated under Article 30 of the Trademark Law; and second, whether the Disputed Mark violated the obtaining registration by deception or other improper means clause under Article 44(1) of the Trademark Law.

Regarding issue one, the court found that since the Cited Mark 3 (“Heineken & Design”) was not timely renewed, it no longer constituted an obstacle to the prior right of the Disputed Mark. The Disputed Mark’s approved goods and the goods approved under the Cited Mark 1 and 2 completely overlapped and constituted identical or similar goods. The Disputed Mark consisted of the Chinese character “He Ni Ken in Chinese” and the Cited Mark 1 and 2 were both composed of the English letters “HEINEKEN”. Although the Disputed Mark and the Cited Marks are not identical in appearance and composition, “He Ni Ken in Chinese” and “HEINEKEN” were not inherent vocabulary and were both fabricated words. According to the evidence submitted by Heineken for the translation of “HEINEKEN”, “He Ni Ken in Chinese” is the phonetic translation of the English word “HEINEKEN”. Considering the evidence in the case can prove that the Cited Marks has obtained certain fame before the Disputed Mark’s registration date on beer related goods, the third party and the plaintiff were business operators in the same industry, and the third party had engaged in “HEINEKEN” brand beer parallel import business, its application for registration of the Disputed Mark was not a coincidence. Therefore, the co-existence of the Disputed Mark and the Cited Marks in the market would easily cause confusion and misidentification to the relevant consumers. The Disputed Mark and the Cited Marks constituted as identical marks that were used on identical or similar goods.

Regarding issue two, since the Disputed Mark has been declared invalid under Article 30, and arguments based on Article 44(1) were no longer applicable.

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Weekly China Trademark News Updates

November 30, 2023

1. Michelin won a RMB 10 million verdict against “Mizhilian in Chinese” for trademark infringement and unfair competition

Compagnie Generale Des Etablissements Michelin (“Michelin”) sued Shanghai Mizhilian Catering Management Co. (“Mizhilian”) for trademark infringement and unfair competition. The court found that Michelin’s trademark “MICHELIN” with reg. no. 136402 and trademark “Michelin in Chinese ” with reg. no. 519749 in Class 12 did not constitute identical or similar goods with the catering services used by the disputed mark. Therefore, it is necessary to determine whether Michelin’s cited marks constitute well-known marks. Michelin submitted evidence such as trademark registration certificates, business revenue and profit, enterprise ranking, promotion and advertisement expenses, honors received, news reports and previous protection of well-known mark in support of its well-known status. These can prove that the cited marks have been widely known among the relevant public in mainland China for tires in Class 12 and were also well-known to the public. The cited marks are well-known marks on the goods of tires. Regarding the relationship between “MICHELIN” and “Mizhilian in Chinese,” “Mizhilian in Chinese” is the Cantonese equivalent of “MICHELIN.” Although one of the Chinese translations of “MICHELIN” is “Miqilin in Chinese,” it can be ascertained from online media and reports submitted by Michelin that Michelin’s use of the “Mizhilian in Chinese” logo has been promoted for a long time and has been broadly distributed, and its influence and power was not limited to Hong Kong and Macau but also mainland China. There is an inseparable correspondence between “Mizhilian in Chinese,” “Michelin in Chinese,” and “MICHELIN.” The products used by Michelin’s two marks are tires, inner tubes, etc. Considering that Michelin has always been committed to providing travelers with comprehensive information, including travel, restaurants, etc., Michelin’s “Michelin Restaurant and Hotel Guide” evaluates restaurants. The rating is gradually accepted and respected by the public, and its influence is growing. Although Michelin did not directly provide catering services, Mizhilian’s use of “Mizhilian in Chinese” on drinks and snacks, which fell into to the same catering class as Michelin’s catering rating service. The two were closely related. Consumers could easily associate “Mizhilian in Chinese” logo on drinks and snacks incorrectly with the catering rating services provided under the said Michelin’s well-known marks. Mizhilian has damaged the reputation of Michelin’s well-known marks and diluted its distinctiveness, constituting trademark infringement. At the same time, Mizhilian’s registration and use of the “shmizhilian.com” domain name and promotion of the “Mizhilian in Chinese” brand on the domain name constituted an infringement of Michelin’s “MICHELIN” mark with reg. no. 13640, and such use should be stopped. Mizhilian’s use of “Mizhilian in Chinese” as its corporate name constituted unfair competition. Regarding damages, the court calculated the profit from infringement based on the amount of franchise fees collected by Mizhilian and ultimately supported Michelin’s claim for damages of RMB10 million (USD1.4 million).

2. RMB50 million in damages awarded to the owner of the “CHILDLIFE” mark

Clarke, Murray Collin, BIOZEAL, LLC and Weimi E-Commerce (Shanghai) Co. Ltd. sued Qidong Lu, Nanjing Childhood Time Bio-Technology Co. Ltd. (“Nanjing Childhood Time”), and Zhejiang Jixiang E-Commerce Co. Ltd. for trademark infringement and unfair competition. The court found that Clarke registered the “CHILDLIFE” mark in the United States on January 30, 1996, and then applied for a territorial extension to China on February 6, 2006 (International Registration No. G880154). After this mark expired, Clarke reapplied for the same mark on December 2, 2016 in Class 5, which was approved for registration on January 21, 2018 and remains valid. Clarke had a license agreement with BIOZEAL that allowed BIOZEAL to use the said mark exclusively. According to the facts found in the evidence, the use of “CHILDLIFE” as the trade name of the inne products sold by the overseas flagship store of Nanjing Childhood Time, and the sale of the CHILDLIFE products and the use of the word inne in the promotional images constituted trademark use. The infringing store used the trademark “CHILDLIFE” on its inne products without BIOZEAL’s permission, and the infringing goods and the “CHILDLIFE” products were both children’s nutritional solution products, which constituted the same goods. Considering the distinctiveness and popularity of the trademark “CHILDLIFE,” the use of the trademark “CHILDLIFE” in the key position of the sales picture of the inne products was likely to cause confusion and misrecognition among the relevant public. Therefore, the use of the trademark “CHILDLIFE” by the infringing stores in the sale of inne products constituted trademark infringement. At the same time, although the infringing store’s use of the “CHILDLIFE” trademark during the sale of inne products did not constitute as removing other’s trademarks in the physical sense, in essence, it has the same function and effect of removing other’s trademarks. It also infringed on the “CHILDLIFE” trademark identification function and caused public confusion and misunderstanding. Therefore, the infringing stores constituted trademark infringement and its act constituted reverse counterfeiting. With regard to unfair competition, according to the evidence in the case, Childlife products entered China in 2006, and have gained a certain degree of popularity and many honors and awards in the market of children’s nutritional solution, with a long sales time, wide area and large sales, and their packaging and decoration had a certain degree of influence in the market of children’s nutritional supplements and so on. Although there is a difference between the inne products and Childlife products, but because Childlife products’ packaging and decoration have a high reputation, inne products packaging and decorations could easily cause confusion and misrecognition to the relevant public, the two constituted substantially similar. Therefore, the infringing store sales of inne products with the aforementioned decoration constituted unfair competition. In addition, “Childhood Time in Chinese” is BIOZEAL’s influential trade name, and the unauthorized use of the trade name “Childhood Time in Chinese” by Nanjing Childhood Time after the termination of the distribution relationship between the two parties constituted unfair competition. At the same time, Nanjing Childhood Time’s false publicity behavior/malicious complaints/use of the ”Childlife” keywords also constituted unfair competition. With regard to damages, the court held that the infringing behavior of Nanjing Childhood Time constituted aggravated circumstances, and the punitive damages shall be applied. According to the statistics, the sales of the infringing goods amounted to RMB300 million (USD42.24 million), and the punitive damages in this case amounted to RMB120 million (USD16.9 million) based on a profit margin of 20%. Accordingly, the court supported the plaintiffs’ claim of RMB50 million (USD7 million) in damages.

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Weekly China Trademark News Updates

November 21, 2023

1. Tsingtao Beer about to secure a trademark registration as courts reversed CNIPA decision

Tsingtao Brewery Co., Ltd. (“Tsingtao Brewery”) filed an application for the mark “” on “Beer, Water [beverage], Non-alcoholic preparations for making beverages,” etc. in class 32 in January 2021.  The CNIPA rejected this application holding that the sign should not be registered or used as a trademark because the word “TSINGTAO” is a city’s name in China whereas the mark as a whole does not form a meaning distinguishable from the city’s name.

Tsingtao Brewery appealed the CNIPA decision to the court, and the Beijing IP Court held that:

The term “TSINGTAO” in the Disputed Trademark is usually translated as “Qingdao,” which is a city’s name in China. But at the same time, it is also an important part of Tsingtao Brewery’s trade name, trademark, and other signs used in commercial operations. Considering the evidence and Tsingtao Brewery’s prior registration of series trademarks of “Tsingtao Beer in Chinese & TSINGTAO”, it can be concluded that, when the Disputed Mark is used for beer and other designated goods, the relevant public can establish a relationship with the series of products produced by Tsingtao Brewery by using the word “TSINGTAO”. The Disputed Mark also has other elements and artistic design, and the whole mark has other meanings which are different from the name of the place. Therefore, the Disputed Mark on the designated goods does not constitute as those marks identical with to a city’s name under Article 10(2) of the Trademark Law.

The CNIPA was dissatisfied and filed a second instance to Beijing High Court, which affirmed the lower court’s judgment.

The Disputed Mark has been published for preliminary approval and may finally secure registration after three years since its application date.

2. Courts invalidated a squatter of HERSHEY based on both prior right and good faith principle

A Chinese company registered “” (“Disputed Mark”) on “Chocolate; Confectionery; Cocoa”, etc. in class 30 in 2020. The Hershey Company filed an invalidation action against the Disputed Mark and prevailed.  The CNIPA supported Hershey’s both claims on prior trademarks “Hershey’s” and the absolute grounds of good faith principle.

The registrant of the Disputed Mark appealed the CNIPA decision to the Beijing IP Court, but it appeal was dismissed.  It further appealed to the Beijing High Court, and the court found in the second instance judgment that:

In this case, the Disputed Mark is similar to the cited trademarks “HERSHEY’S” in terms of letter composition, pronunciation, and overall visual effect. Hershey’s evidence can prove that its “HERSHEY’S” marks enjoy a high reputation in “chocolate, candy” and other goods. If the Disputed Mark and the cited marks were used together on identical or similar goods, it would easily cause confusion and misidentification of the source of the goods to the relevant public. Therefore, the Disputed Mark and the cited marks constituted similar marks used on identical or similar goods. This court affirmed the lower court’s judgment.

Regarding “other improper means to obtain registration,” it refers to other improper means than deception that disrupt the order of trademark registration, harm the public interest, improperly use public resources, or other ways to seek improper interests. In this case, after obtaining  several trademarks similar to Hershey’s prior trademarks such as “HEOSHIV’S” and “Hershey’s in Chinese Mei Ke” through assignment, the Disputed Mark’s registrant applied for registration of 16 marks similar to Hershey’s prior trademarks in class 29 and class 30, such as “Hershey’s Companion in Chinese,” “Hershey’s Heritage in Chinese,” “Wonderful Hershey’s in Chinese,” etc., as well as “Roche Family in Chinese,” “FELEREO” and other trademarks that are similar to others’ prior trademarks. The Disputed Mark’s registrant failed to provide a reasonable explanation, which showed that it has the intention of copying and imitating famous trademarks of others and taking advantage of other’s goodwill. The number of trademarks obtained also exceeded normal production and business needs, which disturbed the normal order of trademark registration management, and violated the principle of good faith. Such behavior was detrimental to the fair competition order of the market. Therefore, the Disputed Mark’s registration constituted as “obtaining registration by other improper means” under Article 44(1) of the 2013 Trademark Law. This court affirmed the lower court’s findings regarding this issue.

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