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.

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

Weekly China Trademark News Updates

November 15, 2023

1. Assignment or actual use of a trademark registered in bad faith does not change its nature

The Beijing High Court concluded a final judgment on the administrative trademark invalidation dispute between Junshan WANG, the CNIPA, and a third party, Zhiqiang FAN.

The Beijing High Court held that: in this case, the original registrant of the Disputed Mark, Shenzhen Lanxin Weiye Electronics Co., Ltd. filed for more than 80 trademarks in various classes, of which more than 50 marks, including the Disputed Mark, were applied between 2009 and 2011, and the goods and services designated for use in many of the trademarks are not related to the scope of its business. In addition, there was no evidence to prove that it had the intention and behavior to use all the trademarks. Therefore, the above applications obviously exceed the needs of normal production and operation. Furthermore, the trademarks including “Warm Sheep in Chinese,” “You Ke Li Lin in Chinese,”, “lamyal-star,” etc. are identical or similar to the names of famous movie and TV characters, performing arts groups, and other famous marks, which are beyond the scope of coincidence in the absence of any reasonable explanations. In summary, the original registrant’s application for the Disputed Mark disrupted the normal order of trademark registration management, damaged the market environment of fair competition, did not have the legitimacy of the registered trademark, which constituted as “by deception or other improper means to obtain the registration of the situation” under Article 41(1) of the 2001 Trademark Law. Zhiqiang FAN’s acquisition of the Disputed Mark cannot change the fact that the Disputed Mark was obtained by improper means. Zhiqiang FAN’s actual use of the Disputed Mark after registration was not a reasonable explanation to maintain the Disputed Mark’s registration.

2. Filing trademark infringement lawsuit based on marks assigned to outsider constituting bad faith litigation

The Xi’an Yanta District Court recently concluded a bad faith intellectual property disputed between the Plaintiff Xi’an Beilin Guoxing Dental Clinic Co., Ltd (“Guoxing Dental Clinic”) and the Defendant Xi’an Kai Wen Hospital Co. (“Kai Wen Hospital”).

The Court found that Kai Wen Hospital had filed a trademark infringement lawsuit (“Lawsuit No. 62”) against Guoxing Dental Clinic in 2023 and sought an order for Guoxing Dental Clinic to pay RMB200,000 (USD27,418) in economic damages. That court ultimately found that Kai Wen Hospital was not the trademark owner of the four disputed trademarks and that Kai Wen Hospital failed to provide the original evidence of its claim that Guoxing Dental Clinic infringed upon its trademarks. Therefore, the court rejected all of Kai Wen Hospital’s litigation requests. Guoxing Dental Clinic claimed that due to said litigation filed by Kai Wen Hospital and its subsequent complaint to the Bureau of Health of Beilin District, it had delayed obtaining the administrative license and delayed its opening by one-month. Based on the evidence currently available, it was not clear that Lawsuit No. 62 and complaint resulted in Guoxing Dental Clinic’s delay in obtaining the administrative license, but it was certain that, as a result of the filing of the said lawsuit, Guoxing Dental Clinic incurred litigation costs such as attorneys’ fees. Therefore, the evidence can prove that there were actual infringements that caused damages, and a causal relationship between infringement behaviors and damage results in this case, so the key to this case is whether the behavior of Kai Wen Hospital’s filing of the Lawsuit No. 62 was in bad faith.

The Court found that the following factors should be taken into consideration to determine whether Kai Wen Hospital filed Lawsuit No. 62 with subjective malice:

First, the basis of Kai Wen Hospital’s rights in Lawsuit No. 62 and its ability to understand that basis of rights. According to the Notice of Assignment/Transfer of Trademarks dated November 6, 2022, Kai Wen Hospital has assigned the four trademarks in the case to Zhen YANG, an outsider. Kai Wen Hospital was not the trademark owner of the four trademarks in the case at the time of filing Lawsuit No. 62. Upon inquiry by the court, it was learned that the transfer agreement to the outsider Zhen YANG was stamped with the official seal of Kai Wen Hospital and signed by Zhuo SUN, the legal representative of Kai Wen Company.  As an independent commercial entity with multiple trademark registrations, it should have been aware of the consequences of the signing of the “assignment agreement,” and should have known it did not have the basis of the right to file Lawsuit No. 62.

Second, Kai Wen Hospital’s purpose in filing Lawsuit No. 62. After filing Lawsuit No. 62 on March 24, 2023, Kai Wen Hospital initiated a complaint with the Bureau of Health of Beilin District on March 27, 2023, and set forth in the complaint materials that it had filed a trademark infringement lawsuit with the Xi’an Beilin District Court against Guoxing Dental Clinic, and claimed that Guoxing Dental Clinic infringed upon its trademark right and its actions amounted to unfair competition, and requested that its illegal behavior be investigated and punished. At the same time, in view of the company’s dishonest business practices, it requested the Bureau of Health of Beilin District to apply a stricter standard in approving Guoxing Dental Clinic’s license to practice as a medical institution. Combining the above public notice, the time of filing the complaint, and the content of the complaint, it was difficult to exclude the possibility that Kai Wen Hospital filed Lawsuit No. 62 in order to file a complaint against Guoxing Dental Clinic at the time Guoxing Dental Clinic filed to obtain its license with the Bureau of Health of Beilin District. Therefore, it is difficult to conclude that Kai Wen Hospital filed Lawsuit No. 62 with the purpose of defending its rights according to the law and was properly exercising its right to litigate.

Given the above, it can be concluded that Kai Wen Hospital’s filing of Lawsuit No. 62 was a bad faith filing of intellectual property litigation.

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

Weekly China Trademark News Updates

November 8, 2023

1. Henkel awarded RMB15 million in damages in a lawsuit for trademark infringement upon its “Schwarzkopf in Chinese” mark

Recently, the Zhejiang High Court concluded a trademark infringement lawsuit between Henkel Co., Ltd. (“Henkel”) and Fuzhou Yiqian Beauty and Hairdressing Co., Ltd. (“Yiqian”) , Nanchang Magic Styling Co., Ltd. (company is deregistered, abbreviated as “Magic”), etc.. The appeal was dismissed, and the lower court’s judgment was affirmed. Both courts ordered Yiqian and others to immediately stop infringing Henkel’s registered trademark rights; Yiqian and others jointly compensated Henkel for economic losses and reasonable expenses incurred to stop the infringement, totaling RMB15 million (USD2.06 million).

Henkel claimed that Magic’s infringement was manifested in promoting the “Schwarzkopf in Chinese” hair salon chain franchise business on its official website www.olysrdzjm.com, and using the accused infringing logo “Schwarzkopf in Chinese Hairdressing Chain Schwarzkopf & Design (the accused infringing logo).” Magic also used the accused infringement logo and “Schwarzkopf in Chinese National Chain Schwarzkopf” on WeChat to promote recruitment and franchising, and used the accused infringement logo on Weibo to promote recruitment and franchising; Yiqian’s infringement includes the acts of using the accused infringing logo in the “Schwarzkopf in Chinese Hairdressing Chain” stores on Dianping and Meituan platforms under its unified operation and management, and guiding franchisees to use the accused infringing logo.

The court found that: First, Magic used and guided franchise stores to use the accused infringing logo in publicity, promotion and recruitment of franchisees on its official website, associated WeChat and Weibo. Yiqian was the management entity of “Schwarzkopf in Chinese Hairdressing Company” on Meituan and Dianpin and used the accused infringement logo in the group buying coupon sales promotion of Meituan.com. The above was sufficient to prove that Magic and Yiqian used and guided franchise stores to use the accused infringing marks in commercial promotion and solicitation of franchisees. Second, without the permission of the trademark registrant involved, Magic and Yiqian used identical or similar accused infringement logos as the trademarks involved in the case in barbering, beauty, hairdressing, and other service categories similar to the goods approved for use of the trademarks involved. Combined with the strong distinctiveness and high popularity of the registered trademarks involved, the use of the accused infringing logos may easily cause the relevant public to misunderstand the source of the service, or associate the services with Henkel’s registered trademarks. In summary, the alleged acts of Magic and Yiqian infringed on the exclusive rights of the trademarks involved.

Regarding the amount of damages, Henkel did not provide evidence to prove the actual losses it suffered due to the infringement. The exact amount of the defendant’s benefits due to the infringement cannot be accurately calculated based on the existing evidence, and there was no reasonable royalties for reference. According to Magic’s official website, WeChat public account and Meituan’s “Schwarzkopf in Chinese Hairdressing Chain,” there are thousands of franchise stores, and the franchise fee for each store ranges from RMB8,000 to 10,000 or 13,000, and a separate management fee is to be paid monthly. It can be seen that the profits from infringement by Magic and Yiqian clearly exceeded the maximum statutory compensation of RMB5 million. Therefore, the discretionary compensation can be applied to determine the amount of compensation in this case, and the following factors should be considered: 1. the registered trademarks of Henkel have very high popularity and reputation in the field of beauty and hairdressing; 2. Magic and Yiqian knew clearly the popularity and influence of the trademarks involved in the case, but still assigned and used the accused infringing marks that are similar to the trademarks involved in the case irregularly and try to take advantage of the goodwill of the trademarks involved in the case. The infringement was obviously subjective and malicious. The defendants live off infringements.  The scope of infringement was all over the country. 3. The notarized certificate involved in the case showed that the infringement activities of Magic and others started as early as in June 2017 and has not ended as of February 2021. 4. In order to stop the infringement in this case, Henkel conducted evidence preservation and notarization, entrusted a lawyer to litigate on its behalf, and spent notarization fees, attorney fees and other fees. At the same time, the first instance court asked the defendants to provide relevant account books, but the defendants failed to provide account books or information related to their infringement, nor did they provide substantive evidence or defense reasons. Therefore, the first instance court referred to Henkel’s claims and evidence provided, and comprehensively considered the above factors, and determined the compensation amount in this case to be RMB15 million (USD2.06 million), which was not inappropriate.

2. The bright yellow walls and other elements used in KKV stores decorations constitute “service decoration with a certain impact”

The Jinhua Intermediate Court of Zhejiang Province concluded an unfair competition lawsuit between Guangdong Kuai Ke E-Commerce Co., Ltd. (“KK”) and Yiwu Sanwei Brand Management Co., Ltd. (“Yiwu Sanwei”) and Yongkang Sanwei Household Products Store (“Yongkang Sanwei”) and other three defendants. The court ordered the five defendants to immediately stop the unfair competition acts that infringed on the service decoration of KK. The five defendants shall compensate KK for its economic losses and reasonable expenses incurred to stop the infringement in a total of RMB1.1 million (USD151,000). Recently, the Zhejiang High Court made a final judgment that dismissed the appeal and affirmed the lower court’s judgment.

The first instance court reasoned that the decoration of goods under the Anti-Unfair Competition Law also applies to the decoration of services. In this case, the evidence provided by KK proved that the bright yellow walls, rainbow walls and other decoration elements used in the store decoration design and the advertising slogan “Exquisite Life Collection” are significantly different from existing similar stores. Through the store decoration design in Beijing, Guangzhou, and Shanghai, it was widely used in stores across the country such as, Chongqing, Chengdu, Wuhan, Changsha, and other places. It has great influence and can enable the relevant public to form a fixed connection with KK. Taking into account factors such as the degree of awareness of the relevant public, the time, area, amount and target of sales, the duration, extent and geographical scope of publicity, the status of trademark protection, etc., it should be determined that the decoration design of the KKV store opened by KK has constituted service decoration with certain influence.

Yiwu Sanwei used identical or similar logo as KK, which has a certain influence on the Internet and physical investment promotion. In addition to online investment promotion and use, the unified decoration design was also authorized offline to a number of franchisees including the four defendants such as Yongkang Sanwei, which caused the relevant public to misunderstand the decoration value of the V.V.V brand and the store opening status, mistaken that there was a specific association with KK, and constituted unfair competition. Yongkang Sanwei used design elements including a bright yellow iconic exterior wall, a container-shaped main wall, white and yellow product shelves, yellow and white employee clothing, and yellow and black billboards. Judging from the overall visual effect, the similarity between the two may easily cause the relevant public to misunderstand the source of the service and mistakenly believe that the retail services provided by it have a specific connection with KK, which constituted unfair competition.

Regarding the appellant’s appeal, the bright yellow color used in KKV’s store is a popular color and does not form a unique combination of patterns or design, so it is not original. The second instance court held that the service decoration protected by law does not necessarily have originality, but is often reflected in the overall business image composed of the operator’s unique style and decoration of the business premises, catering utensils and sales staff clothing. This overall image is significantly different from existing stores with similar services and can enable the relevant public to closely and stably associate the store decoration with the service provider.

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

Weekly China Trademark News Updates

October 31, 2023

1. Damages in a trademark infringement on Loui Vuitton’s “LV” mark was increased from RMB50,000 to RMB120,000

Recently, the Tianjin No. 3 Intermediate Court made a final decision on a trademark infringement lawsuit in favor of Louis Vuitton Malletier (“LV”) and against Chongqing Maoluxin Import and Export Trading Co., Ltd. (“Maoluxin”), and Lutong Chen. The court found Maoluxin infringing LV’s trademarks and increased the damages from RMB50,000 (USD6,800) in the lower court’s decision to RMB120,000 (USD16,400).

The court found that: first, LV has a long brand history and has strong brand influence in the fashion industry. It has been included in China’s national key trademark protection list and has been the target of protection against counterfeits and trademark infringements in Beijing, Shanghai, Guangzhou and other places. The LV and Design mark (“Cited Mark”) has been recognized as a well-known trademark by the courts of many provinces and cities because it has high fame in China and is widely known to the relevant public. The accused infringing mark was not only similar to the Cited Mark, but also similar to other registered trademarks owned by LV, which was enough to cause confusion and misunderstanding among the relevant public, and damage LV’s trademark rights.

Second, when both Tianjin Xingang Customs and the first-instance court determined that the accused infringing products constituted trademark infringement, Maoluxin still did not provide the name, contact information and other information of the traders during the second-instance procedure, which was not only detrimental to traceability and cease of trademark infringement. Such refusal to cooperate with court orders made it more difficult for rights holders to safeguard their rights, which showed Maoluxin’s obvious objective bad faith.

Third, the quantity of exported products was large and the logo used was the same or similar to the well-known Cited Mark. Maoluxin, as the exporter, should also determine whether the accused infringing products constituted infringement and whether the transaction party has the corresponding qualification, etc. However, it failed to exercise duty of care of preliminary screening of said accused infringing products. Once these large quantities of infringing products enter the relevant market, they will definitely damage the legitimate rights and interests of LV and consumers, thereby disrupting the normal order of market competition.

2. “Furuta in Chinese” has established a corresponding relationship with “Furuta”

Recently, the Shanghai Intellectual Property Court concluded a trademark infringement lawsuit between Furuta Food Trading (Shanghai) Co., Ltd. (“Furuta Shanghai”) and Ohisi International Trading (Shanghai) Co., Ltd. (“Ohisi”). The court held that the alleged infringing products s did not infringe upon Furuta Shanghai’s trademark rights.

Furuta in Chinese

Furuta Japan has registered the “Furuta” mark in Japan and China, and Furuta Shanghai has registered the corresponding “Furuta in Chinese” mark in China. Neither of them has registered the “Furuta in Chinese” trademark in Japan, the country where the accused infringing products were exported. Both the accused infringing products and products bearing the “Furuta in Chinese” mark imported and sold by Furuda Shanghai originated from Furuta Japan. Ohisi used the “Furuda in Chinese” mark on Chinese labels of its imported products. Furuda Shanghai sued Ohisi for trademark infringement based on its  “Furuta in Chinese” mark.

The court found that, first, the accused infringing products are genuine, have the same quality as the “Furuta in Chinese” products imported and sold by Furuta Shanghai, and were both legally sourced from Furuta Japan. Furuta Japan is the controlling shareholder of Furuta Shanghai and there was a close relationship between them. Second, although the trademark owner of the “Furuta in Chinese” mark is Furuta Shanghai, after long-term use, the “Furuta in Chinese” trademark and the “Furuta” mark of Furuta Japan have formed a sole correspondence. Furuta Japan also confirmed this corresponding relationship. Thus the identification function of “Furuta in Chinese” in the case is unique and one-directional relationship between the goods and the manufacturer Furuta Japan. Ohisi marked “Furuta in Chinese” on the accused infringing products, which can be used to identify the sole relationship between the “Furuta in Chinese” mark and Furuta Japan and would not cause confusion among the relevant public. Moreover, the quality of accused infringing products were no different than genuine products, which would not cause damage to the quality and goodwill carried by Furuta Japan’s marks and would not damage consumer’s interests. Therefore, the accused infringing acts did not constitute trademark infringement.

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

Weekly China Trademark News Updates

October 27, 2023

1. The Apostille Convention will come into effect in China on November 7, 2023

On March 8, 2023, China acceded to the Convention of 5 October 1961 Abolishing the Requirement of Legalization for Foreign Public Documents (“Apostille Convention”). The Convention will enter into force in China on November 7, 2023.

The Apostille Convention is an international treaty with the widest scope of application and the largest number of contracting parties under the framework of the Hague Conference on private international law. It aims to simplify the procedures for cross-border circulation of public documents. Starting from November 7, official documents sent by China to other contracting states for use only need to apply for the apostille as stipulated in the Apostille Convention. There is no need to apply for consular legalization services at the embassies or consulates in China of other contracting states. When official documents from other contracting states are sent to mainland China for use, only an apostille from that country is required, and there is no need to apply for consular legalization by the local embassy or consulate of China in that country.

The Ministry of Foreign Affairs of China is the competent authority for additional certificates stipulated in the Convention and issues additional certificates for official documents issued within the country. Entrusted by the Ministry of Foreign Affairs, the foreign affairs offices of the China’s governments of relevant provinces, autonomous regions, and municipalities directly under the Central Government of China, as well as the foreign affairs offices of some municipal people’s governments, can issue additional certificates for official documents issued within their own administrative regions. For specific procedures and requirements for applying for additional certificates, please log on to the China Consular Service Network (http://cs.mfa.gov.cn) or the websites of relevant local foreign affairs offices.

China’s apostille will be in the form of a sticker with a silver national emblem seal. Additional certificates issued by the Chinese Ministry of Foreign Affairs and relevant local foreign affairs offices support online verification. There is a website provided along with this news release as follows. http://consular.mfa.gov.cn/VERIFY/.  However, at the time of posting this news, this website is not yet available.

Please note that this is a general news release from the China Foreign Ministry. The people’s courts have not yet released any news regarding abolishing the current notarization and legalization practices. Therefore, we recommend continue with all pending notarizations and legalizations until further notice.

Please see here the link to the news in Chinese.

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

Weekly China Trademark News Updates

October 25, 2023

1. A trademark containing deceptive elements cannot be registered by giving up some of its constituent elements and limiting the scope of goods

Disputed Mark	Designated Goods
No. G1563666	Class 22: Carbon fibers for textiles; nonwoven polymer fibers for textiles; textile fibers; plastic fibers for textiles; chemical fibers for textiles; polyimide fibers for textiles; all the above goods are related to polyimide (PI) in the field of new materials.

In an administrative dispute between PI Advanced Materials Co., Ltd. (“PAM”) and CNIPA, the Beijing Intellectual Property Office ruled to reject the PAM’s claim.

The focus of the dispute in this case is whether the extended territorial protection of the Disputed Mark for use in Class 22 in China violates the provisions of Article 10(1)(vii) of the Chinese Trademark Law.

The court found that although the goods designated for use by PAM’s Disputed Mark have been limited to “all the above-mentioned goods that are related to polyimide (PI) in the field of new materials”, however, this limitation is PAM’s own limitation on Class 22 related goods. This specific limitation came from its UK-specific basic trademark application. PAM did not submit evidence to prove that the above restrictions had a substantial impact on the goods designated for use for the Disputed Mark. For international registrations that designated China, the CNIPA exams in accordance with the China Trademark Law and relevant regulations. If the application satisfies the Trademark Law or relevant regulations or the trademark used on partial designated goods satisfies the Trademark Law or regulations, it will be preliminarily approved and published for opposition.  The Disputed Mark consisted of the English words “PI” “Advanced Materials” and a design. The English part has the meaning of “polyimide” “advanced materials or new materials” and is designated for use in Class 22 for “carbon fiber for textiles” and other goods. However, the said goods do not necessarily use polyimide in the field of new materials. Based on the general understandings and daily life experience, the public would easily associate the said goods’ characteristics with the attributes of the goods designated by the Disputed Mark, which would cause the public to misunderstand the composition, quality and other characteristics of the goods “carbon fiber for textiles” in Class 22.

In addition, although PAM claimed that it had abandoned the exclusive right to use the English words “PI” and “Advanced Materials” in the Disputed Mark, the relevant public did not naturally know the relevant circumstances of the abandonment of the exclusive rights in the Disputed Mark and would still use the English “PI” and “Advanced Materials” as constituent elements and distinctive part of the trademark. Article 10(1)(vii) of the Trademark Law is an absolute factor in prohibiting the registration of a trademark, and a sign that violate this provision shall not be used as trademarks. Where a mark itself lacks the said characteristic it cannot be overcome by adding other elements or through subsequent use. PAM’s claim that the design part of the Disputed Mark was identifiable and has a high reputation after use does not affect the judgment of whether the Disputed Mark violates Article 10(1)(vii) of the Trademark Law. In addition, trademark right authorization and confirmation cases follow the principle of case-by-case review, and the application, examination, and approval status of other trademarks do not necessarily have relevance to this case. Therefore, the CNIPA’s conclusion that the Disputed Mark violates Article 10(1)(vii) was correct and shall be affirmed.

2. The use of a registered mark in the title of an online store product link constitutes trademark infringement

The Zhejiang High Court recently concluded a trademark infringement dispute between the appellant Chongqing Jinlingyang E-commerce Co., Ltd. (“Jinlingyang”), the appellant Hubei Liangpinpuzi E-commerce Co., Ltd. (“Liangpinpuzi”), and the appellee Zhejiang Tmall Network Co., Ltd. (“Tmall”). The court affirmed the lower court’s decision.

Jinlingyang is the registered trademark owner of the “Zihaiguo in Chinese” trademark with reg. no. 28149844 and claimed that Liangpinpuzi uses of the word “Zihaiguo” in the product link title of its online store constituted a trademark infringement of its said registered trademark. The first instance court found that Liangpinpuzi’s action constituted trademark infringement of Jinlingyang’s registered trademark and ordered Liangpinpuzi to compensate Jinlingyang for economic losses and reasonable expenses incurred to stop the infringement totaling RMB 60,000 (USD8,200). Both parties appealed the first instance judgment.

The key issues of the dispute in the second instance court are: 1. Whether Liangpinpuzi’s action constituted trademark infringement. 2. If there is an infringement, whether the amount of compensation determined by the first instance judgment is reasonable.

Regarding the first issue, the Zhejiang High Court found that the word “Zihaiguo” was used in the product link title of Liangpinpuzi’s subsidiary’s online store to promote the product played a role in identifying the source of the product, and it was a trademark use. The accused infringing product is a self-heating hot pot, which is similar to instant rice, lunch boxes, instant vermicelli and other products approved for use by Jinlingyang’s registered trademark “Zihaiguo” with reg. no. 28149844. “Zihaiguo” is a fanciful word with strong distinctiveness. Liangpinpuzi argued that “Zihaiguo” is a descriptive term but failed to provide sufficient evidence to support its claim. Comparing the accused infringement mark “Zihaiguo” with Jinlingyang’s registered trademark, the text composition, pronunciation, and meaning are all the same. Only the fonts are different. The two constitute similar trademarks. Liangpinpuzi used the word “Zihaiguo” in the title of a product sales link similar to Jinlingyang’s registered trademark, which could easily cause the relevant public to misunderstand the source of the product or believe that its source is specifically related to the product with Jinlingyang’s registered trademark, which would cause confusion and mistaken beliefs. Therefore, the accused action of Liangpinpuzi constituted a trademark infringement of Jinlingyang.

Regarding the second issue, the Zhejiang High Court found that Liangpinpuzi had infringed upon Jinlingyang’s registered trademark rights and should bear legal responsibilities such as stopping the infringement and compensating for losses. Regarding the amount of compensation, in the second instance, Jinlingyang claimed a compensation amount of RMB 1.5 million (USD205,007) based on the sales volume of the infringing products of Liangpinpuzi. The Zhejiang High Court held that the first-instance court obtained the transaction data of the accused infringing products from Tmall. The sales volume of the infringing links with the words “Zihaiguo” were 8,220 and 11,469 items, respectively, of which 1,794 were duplicate orders. Although Jinlingyang disputed the data, it did not provide contrary evidence. Under such circumstances, it was not inappropriate for the first instance court to adopt the sales data and use it as a consideration in determining the amount of compensation. Since Jinlingyang’s losses due to the infringement or Liangpinpuzi’s profits from infringement could not be completely ascertained, the first instance court comprehensively considered the nature, manifestation, circumstances and consequences of the infringement of Liangpinpuzi, the price, sales of the infringing products data, the reasonable expenses paid by Jinlingyang to stop the infringement and other factors. The court determined that Liangpinpuzi should compensate Jinlingyang for economic losses of RMB 60,000 (including reasonable rights protection expenses) in the form of statutory compensation, which was within the discretion of the court and was not inappropriate. In summary, the appeals from both parties shall be rejected.

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

Weekly China Trademark News Updates

October 12, 2023

1. The CNIPA issues “Guidelines on Same-Day Trademark Applications Procedures”

On September 27, 2023, the CNIPA issued the “Guidelines on Same-Day Trademark Applications Procedures,” which further clarified the examination procedures and precautions for the trademark applications filed on the same day and clarified the exceptions on same-day trademark applications procedures. According to the Guidelines, in principle, the same-day trademark   applications procedure should first determine the ownership of the trademark application rights and followed by a comprehensive substantive examination of the trademark application. However, if there are valid prior trademarks, and/or that the new application violated Article 19(4) and/or Article 4 of the China Trademark Law, such application shall be rejected. The Guidelines listed some specific exceptions, including the “Leishenshan (Thunder God Mountain)” trademark squatting case, the “Bing Dwen Dwen” trademark squatting case, and deliberate same day filings of “Morphy in Chinese” marks, etc.

2. Online submission of trademark oppositions will be fully implemented

On October 7, 2023, the CNIPA issued a notice that starting from December 1, 2023, trademark agencies handling oppositions should, in principle, submit electronic applications through the trademark online service system and no longer submit paper applications.

3. Schneider Electric (China) Co., Ltd. wins a trademark invalidation case

Cited Marks	Disputed Mark

Gastongerin Electric (Shenzhen) Co., Ltd. (“Gastongerin”) applied for registration of the “Gastongerin” trademark with reg. no. 21978816 (“Disputed Mark”) on November 21, 2016. The Disputed Mark was approved for registration on January 7, 2018. Schneider Electric (China) Co., Ltd. (“Schneider”) filed an invalidation based on its Cited Marks. After trial, the CNIPA decided that the Disputed Mark should be invalidated. Gastongerin appealed the CNIPA’s decision to the court. After trial, the court found that the “coaxial cables, power supply materials (wires, cables), telephone lines; etc.” approved under the Disputed Mark and the “wires, batteries, circuit breakers; etc.”  approved under the Cited Marks 1 to 3 fall into the same subclasses based on the CNIPA Classification. The said goods were also similar in functions, uses, production departments, sales channels, consumer objects, etc., and constituted identical or similar goods. The Disputed Mark “Gastongerin” is in English, the Cited Mark 1 is “MERLIN GERIN and Design,” and the Cited Marks 2-3 are both “MERLIN GERIN” in English. Comparing the Disputed Mark with the Cited Marks 1 to 3, the English composition and arrangement of the second half of the Disputed Mark and the Cited Marks 1 to 3 were identical. Only the capitalization of the letters was different, hence, these marks shall constitute similar marks. The submitted evidence shows that Gastongerin had previously applied the “MELINGERIN” and “MG” design marks that were similar to Schneider’s “MERLINGERIN” logo, but both were invalidated or refused by the CNIPA. On this basis, if the Disputed Mark and the Cited Marks coexist in the market, it will easily cause confusion and misunderstanding among the relevant public, or make the public to believe that there was some connection between the source of the goods. Therefore, the Disputed Mark and the Cited Marks constituted similar marks used on identical or similar goods, which violated Article 30 of the 2013 China Trademark Law. Accordingly, the Beijing Intellectual Property Court and the Beijing High Court upheld the CNIPA’s decision.

4. Overseas trademarks use and promotions can be deemed to have been used in China and have a certain degree of fame

Guangzhou Hanhuijiaoren Cosmetics Co., Ltd. (“Hanhuijiaoren”) applied to register the “V7 Toning Light” mark with reg. no. 17769144 (“Disputed Mark”) on August 27, 2015. The Disputed Mark was approved on December 21, 2017. HAVE & BE CO.，LTD (“HAVE & BE”) filed an invalidation against the Disputed Mark. After trial, the CNIPA invalidated the Disputed Mark. Hanhuijiaoren dissatisfied with the decision and appealed to the court. After trial, the court found that the Disputed Mark’s application date was only a few months apart from the time when HAVE & BE launched and promoted the “V7 Toning Light” brand, and that HAVE & BE used and promoted the “V7 Toning Light” mark. The evidence, however, was mostly formed outside China, but in the Internet age, consumers learned about new overseas brands in real time through overseas websites, and purchase hot-selling overseas brand products through new marketing models such as purchasing agents, overseas purchases, and outbound travel duty-free shopping. HAVE & BE also provided evidence showing beauty bloggers’ Weibo posts, purchasing agents’ articles and comments related to “V7 Toning Light” facial cream and other products, which can prove that relevant consumers in China knew of HAVE & BE’s “V7 Toning Light” before the Disputed Mark’s application date, and has a certain degree of understanding and awareness. Comprehensively considered the following circumstances: 1. Hanhuijiaoren and HAVE & BE were operators in the same industry; 2. The “V7 Toning Light” trademark was a made-up word. Hanhuijiaoren applied for registration of an identical mark previously used by HAVE & BE  and Hanhuijiaoren had given no reasonable explanations; 3. Hanhuijiaoren has subjective bad faith in taking advantage of HAVE & BE’s products, which can be determined that before the Disputed Mark’s application date, HAVE & BE’s “V7 Toning Light” mark has been used on “cosmetics” products in China and has a certain degree of fame. Products such as “facial cleanser, cosmetics, toothpaste” used under the Disputed Mrak highly overlapped with “cosmetics” products previously used by HAVE & BE ’s “V7 Toning Light” unregistered mark in terms of production departments, sales channels, consumer groups, etc. These goods constituted as identical or similar goods. The Disputed Mark was identical with the “V7 Toning Light” mark previously used by HAVE & BE. Therefore, the Disputed Mark’s approved goods constituted the situation under the 2013 Trademark Law where “a trademark that is already used by others and has a certain influence shall not be preemptively registered by unfair means” and should be invalidated.

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

China’s new punitive damages system bolsters protection against trademark infringement

Recently, BEIJING EAST IP LTD assisted a Chinese sports equipment company to successfully solve the problem that its products sold on Amazon in Japan were complained by competitors for infringing Japanese design patent, and quickly lifted the delisting punishment.

China IP News
 Takeaway Tips for IP Practice in China