INTA Annual Meeting at Atlanta – Ethics for Trademark Attorneys

May 31, 2024

Austin Chang spoke at the “Ethics for Trademark Attorneys” panel at INTA Annual Meeting at Atlanta with other esteemed panelists 

Our very own counsel, Austin Chang, was invited by Catherine Farrelly, Chair of the Trademark and Brand Management Group at US Firm Frankfurt Kurnit Klein & Selz to uncover sanctions lawyers in the U.S., U.K., Latin America, and China would face for an ethical breach. This panel of five lawyers also included Kate Swaine, Co-head of IP, Global, at Gowling WLG in Londong, Richardo Alberto Antequera, Managing Partner of a Venezuelan law firm Antequera Parilli & Rodrigues, and Tyler Maulsby, a partner at Frankfurt Kurnit Klein & Selz.

The World IP Review attended this discussion and reported the highlights of this sold-out panel.

Ethics are vital for trademark lawyers, but depending on where you are, the precise rules can differ significantly, finds Baron Armah Kwantreng.

Getting on the wrong side of ethics on trademark issues can end up with an attorney facing sanctions, or worse—jail.

A panel of five lawyers addressed the tricky issue of trademark lawyers and ethics at the International Trademark Association (INTA) Annual Meeting, on Sunday, May 19, exploring the different definitions of unethical behaviour depending on where you practise.

Asking questions of her panel, chair Catherine Farrelly, chair of the trademark and brand management group at US firm Frankfurt Kurnit Klein & Selz, uncovered the sanctions lawyers in the US, UK, Latin America and China would face for an ethical breach.

Farrelly asked the panellists: “What do you do if a trademark clearance search identifies a pre-existing trademark for another client?”

Starting points

Kate Swaine, co-head of IP, Global, at Gowling WLG in London, said: “There are two key issues in the UK. One, we cannot advise against the interests of a client, even when advising another client. Secondly, we cannot draw on information that compromises the confidentiality of another client.”

Ricardo Alberto Antequera, managing partner of Venezuelan law firm Antequera Parilli & Rodriguez, said a starting point is identifying if there is a formal relationship with the existing client.

“Most countries in Latin America need a letter of engagement and a power of attorney to create a formal client relationship. If there is only a limited power of attorney there shouldn’t be a conflict of interest.”

Antequera advised: “If you determine they are a client, then you should disclose this to the first client and step aside.”

Austin Chang, counsel at Chinese law firm, Beijing East IP, agrees with this approach. “We look at the similarity between the marks, and if they are dissimilar we continue. But we keep in mind potential conflicts.”

Waiver issues

Tyler Maulsby, a partner at Frankfurt Kurnit Klein & Selz, who is a leading authority on legal ethics, quoted the American Bar Association’s model rules for resolving attorney-client conflict. “You cannot take on a matter that is adverse to a current client, unless you can get a waiver. If it is a former client then you cannot use their confidential information.”

Maulsby said he would defer to Farrelly as a trademarks lawyer for specifics to decide on asking for a waiver. Farrelly replied: “I would never ask for a waiver because I wouldn’t want to disclose to my client that I was assisting a competitor. So I would tell the new client I couldn’t help.”

Farrelly then asked the panel how to resolve the fiduciary duties to a client who refuses to pay its bills or is uncontactable.

Swaine said: “In the UK registered trademark and patent attorneys’ rules of conduct are that they should make reasonable efforts to maintain the client’s interests. There is no mention of payment or outstanding bills.”

Swaine said the best defence is to write the rules of engagement in the instruction letter and ask the client to sign it. “That puts you in a much stronger position,” he said.

Antequera noted that this is an issue experienced partners need to educate junior lawyers on. “This is a conversation within the firm. You have to be smart, and to have the terms and conditions adhered to. Otherwise you can be held to continue to represent the client. Even if you withdraw the power of attorney, you still have to give the client time to find a new attorney.”

Chang added: In extreme situations where the client would not respond to messages. We’ve sent a LinkedIn message to the client and that got a response.”

Maulsby said this is a big issue for law firms. “I can tell you a lot of law firms spend a lot of time and money trying to get out of relationships with clients.”

An evidence trail

But he adds that law firms in the US need to adhere to set deadlines and provide substantial reasons for terminating client relationships. “If the client is before a tribunal you need permission from the judge.”

Maulsby suggests creating an evidence trail. “The biggest takeaway is to document everything you are doing with clients. One in 100 clients will say: ‘We don’t know what you are talking about,’ when you challenge them. So document your emails and calls so you can show them later.”

A question from the audience touched upon the ethical issues of trademark lawyers using external investigators who may use impersonation and other practices to get their results.

Maulsby mentioned a counterfeiting case where the other side alleged the law firm violated ethical rules by using a private investigator: “A lawyer cannot engage in fraud or deceit, the penalties for which can be jail or other sanctions.

“A lawyer can supervise someone else doing that to advance a societal good, such as the vindication of a trademark right. But the action of the investigator has to be lawful, such as no use of threats or intimidation.”

Click here to access the full report in PDF:  INTA 2024-Trademark lawyers—Staying ethical and out of jail – reprint.

Weekly China Brand Protection News

May 29, 2024

1. The registration of the “A2” mark on milk related goods was recognized as having distinctiveness and unlikely to cause confusion

The A2 Milk Company Limited is the registrant of the “A2” trademark with reg. no. 14013718, designated on “milk; milk products” and other goods. Nestlé Products Co., Ltd. (“Nestlé”) filed an invalidation request claiming that the “A2” mark constitutes generic name on milk products, milk powder, and other goods. When used on milk and other goods, it directly expresses the nutritional content and other characteristics of the designated goods and lacks the distinctive features that a trademark should have. At the same time, its registration may easily cause confusion to the public regarding the quality and origin of the goods.

The court found that “A2” is not an inherent vocabulary and has no specific meaning. It is not directly related to the characteristics or quality of the goods such as “milk; milk products” used in the disputed trademark. The evidence cannot prove when using “A2” on its approved goods such as “milk; milk products” the public can naturally associate it with “vitamin A2” or “A2β-casein” based on their general understanding, and cause confusion with the disputed trademark.

As to whether the disputed trademark is a generic name, the determination falls on the factual status on the date of trademark application. Nestlé failed to submit evidence to prove that relevant professional reference books and dictionaries have listed “A2” as the product name of “milk; milk products” and other goods. Most of the evidence submitted by Nestlé such as the publicity and usage of its peers, the publicity of video websites, online reports, and journal articles were later than the application date or the registration of the disputed trademark. The evidence submitted by Nestlé before the filing date of the disputed trademark mainly includes relevant journal articles and some media reports, but the content is mainly research and introduction of A2β-casein and does not directly reflect the association between “A2” and “milk; milk products” and other goods. It also was not sufficient to reflect the relevant public’s awareness of “milk; milk products” and other goods across the country. Therefore, the evidence on record submitted by Nestlé is not enough to prove that “A2” has been generally recognized as a generic name that can refer to “milk; milk products” and other goods by the relevant public on the application date of the disputed trademark and at the time of approval of registration.

Regarding Nestlé’s claim that the disputed trademark is a simple combination of letters and numbers and does not have inherent distinctiveness, the court found that “A2” is not a fixed combination of letters and numbers, has no inherent meaning, and is identifiable in itself. The disputed trademark “A2” has no direct or fixed association with the “milk; milk products” and other goods approved for use. According to the evidence on record submitted by The A2 Milk Company Limited, its “A2” brand has been used among the relevant public in China after long-term publicity. It has a certain degree of popularity and influence and has the distinctive characteristics that a trademark should have.

In summary, the court upheld the registration of the disputed trademark.

2. Top 40 Chinese Trademark Agencies Serving Foreign Clients are released

On May 20, 2024, at the 146th INTA at Atlanta, USA, the China Trademark Association Forum released the “Top 40 Chinese Trademark Agencies Serving Foreign Clients.” The list uses official data to establish a systematic evaluation model from more than ten dimensions, including the number of foreign related trademark applications, foreign related trademark agency opposition cases, and foreign related trademark agency review cases. The model evaluates trademark agencies that have been registered with the Trademark Office of the CNIPA, and selects the top 40 outstanding trademark agencies. East IP is included in the list.

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 Brand Protection News

May 15, 2024

1. 2023 Typical Cases of Trademark Opposition and Invalidation

The CNIPA has recently released 10 typical trademark opposition and adjudication cases in 2023, including:

1. “Huangta Plaster in Chinese” trademark opposition case. The CNIPA found that the “Huangta Plaster” mark has a certain degree of fame after long-term use by the opponent. The opposed mark and the cited mark have the same text composition. The oppose mark’s designated services in Class 35 and the cited mark’s approved goods in Class 5 constituted as similar. Additionally, the opposed mark applicant and the opponent are from the same town. The registration of the opposed mark is likely to cause confusion to the relevant public.

2. “A Mere Touch of Green in Chinese” trademark opposition case. The CNIPA found that the opponent’s “A Mere Touch of Green in Chinese” dance poetry drama has a high reputation and influence. The opponent, as a business operator in the same industry, applied for the opposed mark designating “music performances; providing musical and dance performance in performance venue” constitutes as bad faith filing of the opponent’s mark.

3. “Slow Flying Angel in Chinese & MAN FEI ANGEL & Design” trademark opposition case. The opponent cited prior marks but the CNIPA did not find mark similarity. However, considering that “Slow Flying Angel in Chinese” is usually a friendly term for children with intellectual disabilities, autism, or learning difficulties, the CNIPA proactively applied Article 10(1)viii of the Trademark Law in finding that the use of the opposed mark on “spirits (beverages); liquor” and other goods is likely to have adverse social impacts.

4. “Baishuifan in Chinese” trademark opposition case. The CNIPA found that prior to the application of the opposed mark, the “Baishuifan Radish in Chinese” mark had been used as a local agricultural product geographical indication product. Although the opposed party argued that the goods it sold came from that place, but it is not a local grower, so it is not reasonable for it to register the geographical indication name of local agricultural products as a trademark.

5. “DEMARSON” trademark invalidation case. This case regulates the act of multiple related entities hoarding trademarks through hidden relationships, and improves the accuracy and deterrence of combating bad faith trademark hoarding.

6. “Fenghua Beauty in Chinese” trademark invalidation case. This case clarifies the applicable requirements for well-known trademark recognitions, and moderately reduces the burden of proof based on the specific circumstances of the case. This case is not only in line with the dynamic changes in trademark fame, but can also reduce the cost of trademark protection and encourage trademark owners to pay attention to trademark management.

7. “MASTRO’S STEAKHOUSE M & Design” trademark invalidation case. This case determined that the respondent’s application for registration of the disputed mark was in fact an application by a trademark agency using the camouflage of its affiliated company in exploiting a loophole. Such action violates Article 19(4) of the Trademark Law.

8. “100,000 Whys in Chinese & 100,000 WHYS & Design” trademark invalidation case. This case comprehensively considered factors such as the historical origins, continued use, and influence of the well-known book brand “100,000 WHYS in Chinese” among the relevant public. This case provided an accurate determination as to whether the registration of a well-known book title as a trademark violates the distinctiveness clause, affirming the legitimacy and legality of the trademark owner’s use of the disputed trademark, and maintaining the validity of trademark rights.
9. 9. 8 series cases of invalidations against “Platinum Selection in Chinese.” When applying Article 15(2) of the Trademark Law, the CNIPA examiners did not stick to the evidence materials in individual cases but conducted an overall analysis of related cases. Comprehensive consideration should be taken to achieve the unification of legal effects and social effects.

2. Quadruple punitive damages awarded for infringement after reaching settlement 

A Xiamen company is the registrant of the “Yanzhiwu in Chinese” and “Wanyan in Chinese”, and sued the defendant a Changzhou food factory who produced and sold products under marks “Yanzhiwo in Chinese” and “Wanyan in Chinese” for trademark infringement.

The first instance court found that the “Yanzhiwo in Chinese” mark used on the outer packaging of the accused infringing product and the plaintiff’s “Yanzhiwu in Chinese” mark were both composed of Chinese characters, with only one character difference between “wu” and “wo.” The pronunciations of them are highly similar, which constitutes similar marks. Given the plaintiff’s Yanzhiwu in Chinese brand enjoys a high reputation in the field of bird’s nest products, the accused infringing mark “Yanzhiwo in Chinese” can easily cause confusion among the relevant public, who may believe that the accused infringing product originates from the plaintiff or there are some specific relationships with the plaintiff. The “Wanyan in Chinese” logo used on the outer packaging of the accused infringing product is visually indistinguishable from the plaintiff’s “Wanyan in Chinese” mark, which constitutes as identical marks. Therefore, the defendant used marks identical with the plaintiff’s registered trademarks on the same goods without authorization, which constituted an infringement of the plaintiff’s trademark right, and should be liable to stop the infringement and compensate for damages.

Regarding whether punitive damages can be applied against a defendant and how the amount of damages is determined. The court verified that, the defendant was sued by the plaintiff in another case for the same infringements and they reached settlement. The settlement letter clearly stipulated that “the defendant promised not to produce or sell products that infringed the exclusive rights of the plaintiff’s registered trademarks of ‘Yanzhiwu in Chinese’ and ‘Wanyan in Chinese’” and voluntarily assumed liability for infringement. Under this circumstance, the defendant continued to carry out trademark infringement production and online promotion activities, and established a sales channel in cooperation with another agent, making it easy for the infringing products to be placed elsewhere. Combined with factors such as the defendant’s false statements in the lawsuit, it can be determined that its subjective intention to infringe is obvious and circumstance is serious. The plaintiff also voluntarily selects to first apply punitive damages, so punitive damages should be applied in this case.

The plaintiff claimed that the amount of RMB26,500 (USD3,663) in said settlement case between the two parties should be used as the base for punitive damages, and that the amount of punitive damages should be RMB100,000 (USD13,825) as quadrupled. Based on factors such as the intentionality of the defendant’s infringement, the moderateness of the compensation base, and the false statements, the first instance court supported the plaintiff’s claim that punitive damages should be quadrupled. The court specifically stated that the calculation method should be quadrupled by RMB26,500 and the total should be RMB106,000. The plaintiff only claimed RMB100,000, which is the plaintiff’s disposal of its own right and this court shall respect such claim.

In addition, regarding the final amount of compensation that the right holder should receive, in addition to punitive damages RMB100,000, it should also receive the base compensation RMB26,500 itself. At the same time, considering the plaintiff’s reasonable rights protection expenses, the court ordered the defendant to compensate the plaintiff for economic losses and reasonable expenses to stop the infringement, totaling RMB150,000.

The defendant was dissatisfied and appealed. After trial, the second instance court affirmed the compensation amount and affirmed the lower court’s decision.

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 Brand Protection News

May 7, 2024

1. Michelin prevailed in a trademark infringement dispute involving the “Mizhilian in Chinese” mark

The Compagnie Generale des Etablissements Michelin (“Michelin”) owns the registered trademarks “MICHELIN” and “Michelin in Chinese.” The said trademarks had been recognized as well-known marks multiple times. Since 1900, Michelin has published the “Michelin Guide” for restaurants around the world, and the restaurants included in it are recognized as Michelin restaurants. In 2008, Michelin began to use “Mizhilian in Chinese” as the Cantonese translation of “MICHELIN” and has issued the “Mizhilian Guide in Chinese” for a long time. A catering company in Shanghai used the “Mizhilian in Chinese” logo during its business activities without authorization and promoted on its website: “My name is ‘Mizhilian in Chinese.’ In Hong Kong, ‘Mizhilian in Chinese’ means Michelin… …”. Its business scale has expanded rapidly, with 500 stores opened across the country in the past five years. Michelin then filed a lawsuit in court, claiming that this Shanghai catering company had infringed on its well-known marks. The first instance court held that Michelin’s “MICHELIN” and “Michelin in Chinese” trademarks are well-known trademarks, and “Mizhilian in Chinese” is the Cantonese translation of “MICHELIN.” The Shanghai catering company used the “Mizhilian in Chinese” logo without authorization that infringed Michelin’s trademark right. The court ordered the Shanghai catering company to stop the infringement and compensate Michelin RMB10 million (USD1.4 million). The Shanghai catering company appealed. The Hubei High Court found that when judging whether the relevant languages have a translation relationship, not only is it necessary to consider the corresponding language habits and regional differences, but also to respect the current market situation. Foreign trademarks can have multiple different Chinese translations. The “MICHELIN” trademark can be translated as “Michelin in Chinese,” but Michelin also translated it into Cantonese as “Mizhilian in Chinese” and issued the “Mizhilian Guide in Chinese.” After long-term use and publicity, “Mizhilian in Chinese,” “MICHELIN” and “Michelin in Chinese” have formed a stable language correspondence. The Shanghai catering company claimed in its promotion that “’Mizhilian in Chinese” means Michelin in Hong Kong dialect and that it deliberately took advantage to the goodwill of the “MICHELIN” and “Michelin in Chinese” trademarks and intentionally caused consumer confusion. The appeal was dismissed, and the lower court’s decision affirmed.

2. A judicial punishment case for bad faith litigation involving the “Chang Gao Dian Xin in Chinese” mark

Houfu Qitian Digital Technology Co., Ltd. (“Houfu Qitian”) was approved to register the 12 “Chang Gao Dian Xin in Chinese” trademarks in September and October 2022. In November 2022, Houfu Qitian and its affiliated company Changgao Dianxin International Trading Co., Ltd. jointly filed a lawsuit in court, claiming that Changgao Dianxin Technology Co., Ltd.’s use of the “Chang Gao Dian Xin” logo constituted trademark infringement and unfair competition. The Changsha Intermediate Court found that Houfu Qitian has applied for registration of 129 trademarks in just 8 months since its establishment in March 2021, covering 24 classes, and it cannot prove that it has the intention to use. After Changgao Dianxin Technology Co., Ltd. announced it will change its company name due to its listing, Houfu Qitian immediately applied to register the 12 “Chang Gao Dian Xin in Chinese” trademarks and filed a lawsuit demanding a huge compensation of RMB10 million (USD1.4 million). During the trial, all 12 “Chang Gao Dian Xin in Chinese” trademarks have been declared invalid by the CNIPA. The first instance court held that Houfu Qitian and its affiliated company Changgao Dianxin International Trading Co., Ltd. knew that the trademark involved in the case was registered through improper means, but still maliciously filed a trademark lawsuit to demand huge sums of money for the purpose of obtaining illegal benefits. Its action violated the principle of good faith and filed the lawsuit in bad faith and abused its intellectual property rights. The court fined Houfu Qitian and its affiliated company RMB100,000 (USD14,135). Houfu Qitian and Changgao Dianxin International Trading Co., Ltd. petitioned for reconsideration. The Hunan High Court dismissed the petition and affirmed the first instance decision.

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 Brand Protection News

April 30, 2024

1. The China Supreme Court releases the 2023 Top 10 IP Cases

On April 22, the China Supreme  Court released the 2023 Top 10 IP Cases and 50 Typical IP Cases. Among these cases, those involving trademark infringement and unfair competition are as follows:

1. The “Siemens in Chinese” trademark infringement and unfair competition disputes

SIEMENS AKTIENGESELLSCHAFT and Siemens (China) Co., Ltd. (“Siemens”) are the rights holders of the “Siemens in Chinese” and “SIEMENS” trademarks. The two trademarks are registered on washing machines and other goods. After long-term use and vigorous promotion by Siemens, these two trademarks have obtained high reputation. Ningbo Qimou Electric Co., Ltd. (“Qimou”) and others registered the name “Shanghai Siemens Electric Co., Ltd.” overseas and extensively used it as a commercial logo on the washing machine products, packaging, and related promotional activities. Siemens claimed that the acts of Qimou and others infringed on its registered trademark rights and constituted unfair competition. The first instance court found that the alleged infringement by Qimou and others did not constitute trademark infringement, but constituted unfair competition. The court held that Qimou and others should immediately stop the infringement and compensate for economic losses of RMB 100 million (USD 138 million) and reasonable expenses of RMB 163,000 (USD 22,500). Qimou appealed. In the second instance, the China Supreme  Court found that Qimou and others knew the popularity of the “Siemens in Chinese” and “SIEMENS” trademarks and deliberately used “Shanghai Siemens Electric Co., Ltd.” on washing machine products, causing confusion among consumers and constituted trademark infringement. The use of this logo on packaging and promotional activities also constituted unfair competition. QImou shall bear liability for compensation. Regarding the amount of compensation, although it was difficult to determine Siemens’ actual losses or Qimou’s infringement profits from the evidence, it was sufficient to determine that Qimou’s infringement profits have clearly exceeded the maximum statutory compensation of RMB 5 million. Given that Qimou refused to provide financial information related to the infringement, which has constituted evidence impediment, the first instance court referenced to media reports that Qimou’s annual sales totaled RMB 1.5 billion (USD 207 million), and based on the relevant facts of the case that the sales ratio of the accused infringing products was one-fifteenth in determining the compensation to be RMB 100 million was not wrong. The China Supreme  Court dismissed the appeal and affirmed the original judgment.

2. The “Lafite in Chinese” trademark infringement and unfair competition disputes

Chateau Lafite Rothschild (“Rothschild”) is the right holder of the “LAFITE” trademark and the “CHATEAU LAFITE ROTHSCHILD” trademark (collectively as “Cited Marks”). The Cited Marks are registered on alcoholic beverage goods. The Cited Marks obtained high reputation after long-term use. “LAFITE” and “Lafite in Chinese” have established a solid association. On April 1, 2005, Nanjing Jin Mou Wine Co., Ltd. (“Jin Mou”) filed for the “Lafite Chateau in Chinese” mark on wine and other goods. Since then, Jin Mou and others have used labels such as “Lafite Manor in Chinese” and “LAFEI MANOR” in the process of producing, importing, and selling wine, and promoted them on their websites and transaction documents. On December 23, 2016, the China Supreme  Court made a retrial judgment and supported the CNIPA’s canceling of Jin Mou’s “Lafite Chateau in Chinese” trademark. Rothschild then sued seven defendants including Jin Mou to the court. The first instance court found that the seven defendants’ acts constituted trademark infringement and unfair competition, and ordered them to stop infringement and applied punitive damages. Jin Mou and others appealed. In the second instance, the China Supreme Court found that Jin Mou and others had bad faith intention to take advantage of the Cited Marks when applying for registration and using the “Chateau Lafite in Chinese” trademark, and they failed to show good faith and trustworthy interests in using the said mark. Their use of “Chateau Lafite in Chinese,” and “LAFEI MANOR” logo constituted trademark infringement, and exaggerating the historical heritage and popularity of the “Lafite Manor in Chinese” wine in publicity constituted false publication. Jin Mou and others obviously acted in bad faith and the infringement was serious. According to Rothschild’s request, punitive damages were applied against Jin Mou and others, and a total of RMB 79.17 million (USD 10.9 million) compensation in economic losses and reasonable expenses were ordered.

2. The Beijing High Court released the Top 10 Judicial IP Protection Cases and the Top 10 Judicial Trademark Authorization and Confirmation Cases in 2023

On April 25, the Beijing High Court released the Top 10 Judicial IP Protection Cases and the Top 10 Judicial Trademark Authorization and Confirmation Cases in 2023. In 2023, Beijing courts applied punitive damages in a total of 26 IP infringement. A significant year-on-year increase.

The trademark infringement and unfair competition disputes involving the “Jegere in Chinese” brand

In the trademark infringement and unfair competition disputes involving “all-round” imitation of “Jagermeister” beer, the defendant imitated the “Jagermeister” mark from liqueur bottle labels, bottle caps, website promotions and other aspects, which was considered an “all-round” brand imitation. In this case, the court applied punitive damages and ordered the defendant to pay RMB 10 million (USD 1.38 million) in compensation.

Mast-Jagermeister SE (“Mast-Jagermeister”) is the owner of registered trademarks such as “Jägermeister in Chinese” and “JÄGERMEISTER.” The Sheng Luo La Liquor Company (“Sheng Luo La”) used logos such as “Jager Haguleisi in Chinese” and Deer Head logos on labels, bottle caps, and official websites of the liquors it produced and sold. The packaging and decoration were the same or similar, and the words “German Master Group Co., Ltd. In Chinese” and other words are used on the website. The defendant applied for the registration of the “Jager Haguleisi in Chinese” trademark on Class 33 on liquors, and after obtaining the registration, he and Sheng Luo La jointly used the “Jager Haguleisi in Chinese” mark on liquor products. Pu Yuan Garden Trading Company is a distributor of Sheng Luo La that sells “Jager Haguleisi in Chinese” liquor on JD.com stores and combines Mast-Jagermeister’s “Jagermeister” liquor with “Jager Haguleisi in Chinese” Liqueur. Mast-Jagermeister claimed that the three defendants had infringed upon its trademark rights and constituted unfair competition, and claimed that punitive damages should be applied.

The first instance court found that Mast-Jagermeister’s “Jagermeister” trademark had been well-known to the relevant public in China on liquor products before the defendant applied to register the “Jager Haguleisi in Chinese” trademark, and constituted a well-known mark. The defendant applied to register a trademark similar to Mast-Jagermeister’s trademark, and the three defendants’ use of the trademark constituted an infringement of Mast-Jagermeister’s well-known trademark rights. The overall appearance similarity between the accused infringing products and Mast-Jagermeister’s products is relatively high, and the accused infringing products were mixed and sold with Mast-Jagermeister’s products, which can easily cause the relevant public mistakenly believe that the said products belong to a series of products or originated from the same source. The defendants’ actions had damaged the goodwill of Mast-Jagermeister’s “Jagermeister” brand. Sheng Luo La’s false publicity has the subjective intention of taking advantage of and free riding Mast-Jagermeister’s reputation. Mast-Jagermeister had issued multiple rights protection statements and sent demand letters to the three defendants. However, after receiving the demand letters, Sheng Luo La and other defendants did not respond in time and continued to infringe. The infringement was serious and punitive damages were applicable. The first instance court held that the three defendants should immediately stop the infringement and eliminate negative impact. Sheng Luo La should compensate Mast-Jagermeister for economic losses of RMB 10 million and the remaining two defendants should be jointly and severally liability for the compensation. Sheng Luo La and Pu Yuan Garden Trading Company appealed. The second instance court dismissed the appeal and affirmed the original judgment.

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 Brand Protection News

April 23, 2024

1. The Fujian High Court applied punitive damages against infringers of South Korean brand ADLV and awarded RMB 6 million in compensation

Recently, the Fujian High Court concluded a second-instance trademark infringement dispute between Sewoong Global Co., Ltd., (“Sewoong”) and Jingdezhen Dehang Trading Co., Ltd. (“Dehang”), Xiamen Dajun Trading Co., Ltd. (“Dajun”), Feifan Nvlang (Xiamen) Trading Co., Ltd. (“Feifan Nvlang”), an individual Zhou, an individual Lin. The court applied punitive damages based on the obvious serious malicious intent of the infringement by Dajun and Dehang. The court also ordered the infringing products and packaging to be destroyed immediately. The defendants shall be jointly compensating Sewoong for economic losses and reasonable expenses to stop the infringement, totaling RMB 5.925 million (USD814,152)

Cited Marks

The court found that: First, the accused infringing product was the same gods as the approved goods of Sewoong’s “ADLV” mark with reg. no. 28261402, “acmé de la vie” mark with reg. no. 39050794, “acmédelavie” mark with reg. no. 38630247, and “acmédelavie” mark with reg. no. 29065353. The alleged infringing product used identical labels, hang tags, laundry tags, and outer packaging bags, which constitutes infringement. The packaging and hangtag of the accused infringing product use the “www.acmedelavie.com” logo, which includes the main distinctive part of the “acmédelavie” mark with reg. no. 38630247. Therefore, there is basically no visual difference between the two and constitute infringement. The sales carried out by Dehang and Dajun infringed Sewoong’s trademark rights.

Second, Dajun and Dehang comprehensively counterfeited the Cited Marks and obtained huge sales volume and sales. Sewoong filed 25 complaints with e-commerce platform, however, Dajun and Dehang provided false materials and statements to the platform to escape review and continue to sell infringing products. After Sewoong filed this lawsuit, although the flagship store involved stopped selling infringing products, the customer service of the flagship store still diverted customers to the WeChat platform to continue for purchase. Dajun admitted that the infringing products involved in the case were provided to Dehang, but it refused to provide the source of the goods without justifiable reasons. It should be identified as the manufacturer of the infringing products involved in the case. In summary, Dajun and Dehang’s infringement was obvious and intentional, and the infringement was serious, so punitive damages should be applied.

2. Squatters of “ReFa” mark was ordered to immediately stop filing similar marks for registration

Recently, the Ningbo Yinzhou District Court concluded a trademark infringement and anti-unfair competition dispute between MTG Co., Ltd. (“MTG”), a Zhejiang electrical appliance company, a Ningbo electrical appliance company, a Ningbo holding company, a Ningbo network technology company, and a Ningbo electronic technology company (“defendants”). The court found that the defendants’ actions constituted trademark infringement and unfair competition. The infringement of the plaintiff’s exclusive rights to registered trademarks with reg. nos. G1149527, 36415538, and 47113710 should be immediately stopped, and the defendants should jointly and severally compensate the plaintiff for economic losses and reasonable expenses incurred to stop the infringement, totaling RMB650,000 (USD 89,693).

Cited Marks

The court found that: First, the defendants used the “Refa in Chinese”, “refa” and “Refa” logos on the product name of its hair dryer products, product details page, store home page promotion picture, top and bottom of the home page, and on the packaging box and handbag. The “Refa in Chinese” logo is used in the manual, fuselage, etc., which is a trademark use. The “Refa in Chinese” logo is the same as MTG’s trademark, and the goods used constitute identical goods. Such uses infringed MTG’s trademark right. The “refa” and “Refa” logos have the same English composition as MTG’s Cited Mark. The only differences are letter size and composition, which are enough to cause confusion and misunderstanding among the relevant public about the source of the goods. These marks constitute similar. The defendants’ production and sale of the product infringes MTG’s trademark right.

Second, the defendants used the word “ReFa” in the product names and brand marks of the two products, and the “ReFa” logo on the display box, manual, charging cable packaging paper, body, etc. The sonic facial cleansing product constitutes identical goods with the approved goods of MTG’s prior mark with reg. no. G1149527. The rotating facial cleansing product constitutes similar goods to the approved goods in terms of functional use, consumer objects, etc. The “ReFa” logo is identical with MTG’s Cited Mark. “ReFa” shares identical letters and composition with the Cited Mark. The only differences are the letter size and composition, which are enough to cause confusion and misunderstanding among the relevant public about the source of the goods. The marks constitute similar. Therefore, the use of the said logo, production and selling of the accused infringing products infringed upon MTG’s trademark right.

Third, MTG’s cited mark with reg. no. G1149527 applied for extension of protection in China on March 2, 2013. In 2013, MTG started promoting the ReFa brand and selling products. Both “ReFa in Chinese” and “ReFa” have high originality. The defendants first began to file for “REFA” and “Refa in Chinese” marks in August 2014, and began to file a large number of these marks in 2017. When the defendants applied for the “REFA” and “Refa in Chinese” marks after the MTG’s products entered the Chinese market and when MTG’s brand had a certain fame and influence in China’s household beauty equipment industry. Such marks were highly similar to the Cited Marks in terms of Chinese and English composition, and the defendants also failed to provide a reasonable explanation for its intention to register these marks and the source of the design creation. It can be concluded that the defendants had the intention to imitate MTG’s Cited Marks. Judging from the classes and quantity of the marks filed by the defendants, the numbers were obviously beyond the needs of normal business operations. It can be concluded that the defendant has the intention to hoard trademarks and engage in unfair competition with the goodwill of MTG’s brand. The said defendants’ actions of constituted unfair competition.

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Weekly China Brand Protection News

April 18, 2024

1. Lacoste sued Cartelo for trademark infringement and won with RMB 15.05 million in compensation

The Beijing High Court recently concluded a trademark infringement dispute between the appellants Xinjiang Ka E E-commerce Co., Ltd. (“Xinjiang Ka E”), Nanji E-commerce Co., Ltd. (“Nanji E-commerce”), Nanji E-commerce (Shanghai) Co., Ltd. (“Shanghai Nanji E-commerce”), Shanghai Xinhezhao Enterprise Development Co., Ltd. (“Shanghai Xinhezhao”) and the appellee Lacoste Company (“Lacoste”) and the defendant in the original trial, Beijing Surprise Outlet Mall Co., Ltd. (“Beijing Surprise”). The court has dismissed the appeal and affirmed the lower court’s decision.

The lower court found that Lacoste’s  mark with reg. no. 141103 (“Cited Mark”) reached well-known status before the filing date of the  mark with reg. no. 5358242 and the  mark with reg. no. 10499067 (“Disputed Marks”) owned by Nanji E-commerce. The appellants jointly infringed on Lacoste’s Cited Mark by using the Disputed Marks in commercial activities and should immediately stop infringing activities and are jointly and severally liable to compensate Lacoste for economic losses of RMB14.8 million (USD2.04 million) and reasonable expenses of 250,000 yuan, totaling RMB15.05 million (USD2.08 million).

The Beijing High Court tried on the following issues.

1. The application of law. When the lower court judgment was made, the Disputed Marks were valid. The lower court judgement is appropriate in clarifying whether Lacoste’s Cited Mark satisfied Article 11 of the Several Issues of the Supreme People’s Court on the Application of Law in the Trial of Civil Disputes Involving the Protection of Well-known Trademarks for protection. However, given that the Disputed Marks had been declared invalid during the second instance trial, the Disputed Marks’ right was deemed to have ceased to exist from the beginning, so said Article 11 no longer applies, and this court changed the application of relevant laws in accordance with the law.

2. Whether the use of the Disputed Marks on the accused infringing goods infringes upon Lacoste’s Cited Mark. The Disputed Marks were in Class 25 for clothing, hats, shoes and other goods, which constituted the same or similar goods as the goods “clothes” approved for the Cited Mark. The main difference between the marks is that the head of the crocodile is facing in a different direction. The overall comparison between the marks is not obvious, and they constitute similar trademarks. Therefore, without Lacoste’s permission, the use of the Disputed Marks that were similar to the Cited Mark in the same or similar goods such as Class 25 clothing, hats, and shoes may easily cause the relevant public to misunderstand or confusion regarding the source of the goods, or that there is an association between the source of the accused infringing goods. The lower court’s decision did not err in finding that the appellants infringed Lacoste’s rights. Regarding the infringing goods in Class 18 such as backpacks, handbags, wallets, suitcases and other goods, since they are in a different class than the clothing approved for the Cited Mark, this court must assess whether the Cited Mark constituted as a well-known mark. The evidence in this case can prove that the Cited Mark enjoys a high fame on clothing products and is well-known to the relevant public. Therefore, it can be recognized as a well-known trademark and protected. Given that the main difference between the Disputed Marks and the Cited Mark is the direction of the crocodile’s face, the Disputed Marks constituted a copy and imitation of the Cited Mark, and that the Disputed Marks use on Class 18 goods such as backpacks and handbags constituted as infringing. It was enough to cause the relevant public to mistakenly believe that the Disputed Marks have some connection with the well-known Cited Mark, thereby unfairly exploiting the market reputation of the well-known Cited Mark. The lower court’s decision that the appellants infringed upon Lacoste’s rights is affirmed.

Regarding the appellant’s grounds for appeal that this case is inconsistent with the Civil Judgment No. 3 of the Supreme People’s Court (2009) Min San Zhong Zi (“Previous Lawsuit”), the court held that the alleged infringement involved in this case and the Previous Lawsuit had different time of occurrence, location, and specific circumstances. Compared with the Previous Lawsuit, the alleged infringement in this case has significantly changed in the environment and state of use of the Disputed Mark. The distinguishing factors have been greatly reduced and the convergence factors have been greatly increased, such as the product itself, its packaging, and product hangtags no longer use the highly distinguishable “CARTELO and design” mark. Some products only use the word “CARTELO” on the left or below the crocodile design, which lost the distinctiveness that could be used to identify the two marks. The use of the Disputed Marks will inevitably cause confusion and misunderstanding with the Cited Mark, so it has met the requirements for trademark infringement. The user of the Disputed Marks failed to abide by the obligation to refrain from using Lacoste’s trademark in a similar manner and was at fault for changing the original market perception and breaking the original market order. Therefore, it is reasonable for the appellants to bear the corresponding adverse consequences. The grounds of appeal of the appellant cannot be found.

As for the settlement agreement signed overseas between Lacoste and Lee Sheng Min Company (the former name of Crocodile International, the original registrant of the Disputed Mark with No. 5358242), due to the territorial nature of trademark rights, the settlement agreement only applies to expressly agreed terms. In the five countries or regions of Taiwan, Singapore, Indonesia, Malaysia and Brunei, the coexistence of foreign trademarks stipulated in the agreement cannot be the basis for determining infringement in this case.

Regarding infringement liability and the amount of compensation. In this case, the hangtag of the allegedly infringing product showed that the manufacturer was Shanghai Xinhezhao, and the trademark licensor was shown as Xinjiang Ka E or Nanji E-commerce. These companies recognized themselves as the trademark licensees.  Nanji E-commerce’s wholly-owned subsidiary Shanghai Nanji E-commerce is the registered operator of the official website of the relevant brand and is responsible for publicity and investment promotion on the official website. The four companies had division of labor and cooperation in the process of carrying out the alleged infringement, which constituted joint infringement. It was not inappropriate for the lower court to decide that the four companies jointly bore the infringement liability to stop the infringement and compensate for the losses. In addition, the lower court found the number and time range of the accused infringing stores for calculating the amount of compensation based on Lacoste’s claims and the evidence provided. It calculated sales according to the different situations of the accused infringing stores and determined the product based on the circumstances of the case. Based on the profit margin and trademark contribution rate, the lower court correctly found the final amount of damages to be RMB 14.8 million, and the court affirmed.

2. Modelo Group successfully used its “Corona in Chinese” registrations fend off the “Yincheng Corona in Chinese” mark

The Beijing High Court recently concluded a trademark invalidation dispute between the appellant, Fujian Dehua County Lifei Food Co., Ltd. (“Lifei Food”), and the appellee, CNIPA, and the third party in the original trial, Trademarks Grupo Modelo, S. De R.L. De C.V. (“Modelo”). The court affirmed the lower court’s judgement.

Disputed Mark	Cited Mark 1	Cited Mark 2	Cited Mark 3
Reg. No. 4210240	Reg. No. 1059038	Reg. No. 3943293	Reg. No. 3628871

The issue in this case is whether the Disputed Mark and the Cited Marks constitute similar trademarks used on the same or similar goods, thus violating Article 30 of the 2013 Trademark Law. The court found that the goods approved for use in the Disputed Mark were Class 32 with subclasses 3201-3203. The goods approved for use by each of the Cited Marks were also in the same class and subclasses. The Disputed Mark and the goods approved for use by each of the Cited Marks are either the same kind of goods, or are identical or highly related goods in terms of functions, uses, production departments, sales channels, consumer groups, etc., which constitute as the same or similar goods as stipulated in Article 30 of the 2013 Trademark Law. Lifei Food claimed that the Disputed Mark and the goods approved for use by the Cited Marks do not constitute similar goods, which has no factual or legal basis. In addition, the Disputed Mark is composed of the words “Yincheng Corona in Chinese,” and each of the Cited Marks is composed of “Corona in Chinese.” The Disputed Mark and the Cited Marks are similar in terms of text composition, calling, and overall recognition effect, etc., and they constitute similar marks. When the Disputed Mark and the Cited Marks are used on the same or similar goods, and when the relevant public pays general attention, it is easy for them to believe that the goods of the two are from the same entity or have a specific connection, which will lead to confusion and misunderstanding. The Disputed Mark and the Cited Marks constitute similar trademarks used on the same or similar goods. The lower court correctly apply Article 30 of the 2013 Trademark Law.

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Weekly China Brand Protection News

April 10, 2024

1. The SPC held that the burden of proof for individual retailers’ legitimate source defense should be moderately reduced

Nature Republic Co., Ltd. (“Nature Republic”) is the exclusive licensee of the “NA YI QI ER in Chinese” mark with reg. no. 9481384 (license term: Jan. 1, 2018 to June 5, 2022, said mark was later assigned to Nature Republic in 2020). Nature Republic sued Jianglin Cosmetics Store (“Jianglin”) for trademark infringement. Jianglin argued that the evidence it submitted could prove that the alleged infringing goods came from legitimate sources, and that it had exercised reasonable care during the purchase of the alleged infringing goods and should not be liable for compensation. The first and second instance courts did not recognize Jianglin’s legitimate source defense and ruled that Jianglin should stop the infringement and compensate Nature Republic for reasonable legal costs and economic losses of RMB10,000 (USD1,383). The Supreme People’s Court held in retrial that the review of the objective elements of the legitimate source defense should proceed from the original legislative intention and comprehensively consider factors such as the market position of the seller, the rights holder’s legal costs, market transaction habits, and lay a reasonable burden of proof on retailers. Here, Jianglin, as an individual retailer, has a weak position in market activities and its trading methods are usually more flexible. Its burden of proof to prove legitimate sources should be appropriately reduced, and the completeness of the formal requirements for evidence should not be too stringent. The chain of transactions shown in the product distribution contracts, outbound orders, inbound orders and other documented evidence is complete and in line with general trading practices. Its source of supply has been proven legitimate. Therefore, the evidence can carefully prove that Jianglin obtained the accused infringing goods through legal channels. As an individual industrial and commercial owner, Jianglin has a small business scale and low professionalism. The bar to determine its ability as to understand whether the goods he sells is infringement should not be too high. Based on the evidence in the case, it can be inferred that it did not know and should not have known that the goods it sold were infringing goods, and there was no subjective fault. Therefore, Jianglin has completed its burden of proving that the accused infringing goods have a legitimate source and that it has exercised reasonable care. Its legitimate source defense is satisfied and it should not be liable for compensation.

2. The distinctiveness of a registered trademark is not a consideration in determining similar trademarks

Jinjia SU is the applicant of the “” mark with app. No. 32253377 (“Disputed Mark”). Beijing Xiaoguncha Co., Ltd. (“Xiaoguancha”) filed an opposition against the Disputed Mark based on its prior marks such as “” and “.” Jinjia SU argued that the word “Xiaoguancha in Chinese” in Xiaoguancha’s prior marks lacked distinctiveness, and the scope of protection should match its distinctiveness and should not hinder the legitimate use of other market entities. After trial, the Beijing High Court determined that the distinctiveness of the words “Xiaoguancha in Chinese” is not a factor to consider in determining whether a disputed mark and the cited marks constitute similar trademarks. If the distinctiveness of cited marks is overemphasized and later marks allowed to be registered by adding other elements to the cited marks that have been allowed, it will be seen as a direct denial of the validity of the cited marks when judging similarity. This practice not only indirectly invalidated the cited marks, damages the cited mark owner’s rights, and impacts the trademark registration order. The cited marks in this case have been approved for registration, and their validity should be respected. Therefore, Su’s lack of distinctiveness argument cannot be supported.

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Weekly China Brand Protection News

April 2, 2024

1. Unauthorized labeling of “Supervised by the Palace Museum” on alcohol products constitutes unfair competition

Recently, the Palace Museum discovered that a Sichuan liquor company and a Beijing trading company used the words “Supervised by the Palace Museum” in the process of promoting and selling alcohol products. The Palace Museum filed a lawsuit against them alleging unfair competition.

The first instance court found that the actions of the Sichuan liquor company and the Beijing trading company constituted unfair competition, and ordered them to compensate the Palace Museum for its economic losses and reasonable expenses. The defendants appealed to the Beijing IP Court. The Beijing IP Court affirmed the lower court’s finding that the defendants’ action constituted unfair competition but adjusted the compensation amount based on new evidence.

Regarding the issue of whether the use of the words “Supervised by the Palace Museum” on the alleged goods and the related publicity in the online store constituted unfair competition, the Beijing IP Court found that:

Article 6 of the Anti-Unfair Competition Law stipulates that operators shall not use without authorization the names of other enterprises, social organizations, or persons that have certain influence to cause people to mistakenly believe that the goods are from others or that they have a specific connection with others. Regarding the use of the words “Supervised by the Palace Museum” on the alleged infringing products, the evidence can prove that the production dates marked in the online store were after the expiration of the supervision agreement involved. After the expiration, the Sichuan liquor company continued to label its liquor products with the words “Supervised by Palace Museum,” which includes the full name of the Palace Museum, without the authorization or permission. Even though the Sichuan liquor company continued using the packaging design and product promotion style which were authorized during the supervision agreement period, but the words “Supervised by the Palace Museum” will not only make consumers believe that the Palace Museum supervises the packaging design and product promotion of the alleged infringing goods, it will inevitably make the public mistakenly believes that this product is closely related to the Palace Museum, or that the Sichuan liquor company still has a cooperative relationship with the Palace Museum on alcohol products, etc. This is obviously a case of obtaining unfair competitive advantages and commercial interests by taking advantage of the popularity of the Palace Museum. At the same time, it also caused damage to the reputation and business interests of the Palace Museum, constituting unfair competition as stipulated in Article 6 of the Anti-Unfair Competition Law. In addition, the Sichuan liquor company claimed that the words “Supervised by the Palace Museum” are not in a prominent position, however, combined with the relevant publicity of the allegedly infringing products, consumers will inevitably pay attention to the relationship between the allegedly infringing products and the Palace Museum. The allegedly products and its packaging will objectively cause confusion and misunderstanding. Whether they are in a prominent position does not affect the determination of unfair competition.

Article 8 of the Anti-Unfair Competition Law stipulates that operators shall not make false or misleading commercial publicity about the performance, functions, quality, sales status, user reviews, honors, etc. of their products to deceive or mislead consumers. The first instance court found that the online store involved in the case repeatedly mentioned the Palace Museum in the “Historical Events” in the product details, showed the authorization letter issued by the Palace Museum in January 2007, and highlighted the “designated liquor of the Palace Museum in the past five hundred years” along with other content, which constitutes false propaganda as stipulated in Article 8 of the Anti-Unfair Competition Law. Regarding such promotions, the mention of the history of the Palace Museum in the “Historical Events” and the content of the authorization letter issued by the Palace Museum to the Sichuan liquor company were facts. However, on this basis, when promoting the products involved, the Sichuan liquor company failed to disclose to consumers the fact that the authorization letter issued by the Palace Museum has expired, and its claim that the products sold in the online store were “the designated liquor of the Palace Museum.” Such publicity will cause confusion among consumers. Consumers are likely to misunderstand and falsely believe that the allegedly infringing goods still have valid authorization from the Palace Museum, which constitutes false or misleading commercial propaganda as stipulated in Article 8 of the Anti-Unfair Competition Law. At the same time, since the above-mentioned behavior has been determined as false propaganda, the use of the full name of the Palace Museum will no longer be separately determined as an act of unfair competition that uses a company name without authorization.

2. A color combination trademark application failed to be approved in the second instance appeal

A company applied for registration of the “” mark (“Disputed Mark”) on “agricultural machinery” on November 1, 2021, and was refused. During the review, the CNIPA determined that the representation of the Disputed Mark is simple, it will be difficult for the relevant public to recognize it as a trademark to distinguish the source of the goods if registered on the designated goods. The submitted evidence, including the product promotional videos and brochures, the market share of its product from the China Agricultural Machinery Industry Association, statements on sales, store photos, audit reports, tax payment certificates, honorary certificates, award certificates, exhibition and campaign pictures, articles on periodicals and magazines, CCTV news reports, etc., are insufficient to prove that the Disputed Mark has been used to obtain distinctive features and can easily be identified. Therefore, the Dispute Mark shall be rejected based on Article 11.1.3 of the Trademark Law.

The applicant appealed to the court, and supplemented additional evidence of domestic and foreign sales contracts and invoices, overseas trademark registration certificates, granted invention patent information, etc. to prove that after extensive use and publicity, the Disputed Mark has gained a high reputation and has established a unique corresponding relationship with the applicant, thereby bearing the distinctiveness to identify the source of goods.

The Beijing Intellectual Property Court found that:

First, the Disputed Mark is a color combination consisting of red and light gray. Its color and combination are relatively ordinary, and its expression is relatively common. If the color combination specified by the Disputed Mark is used on “agricultural machinery,” the relevant public tends to recognize it as an expression of the appearance and decoration of the goods rather than a mark that distinguishes the source of goods. Therefore, the Disputed Mark does not have the inherent distinctive features that a trademark should have.

Second, according to the evidence submitted, when the applicant uses a red and light gray color combination in designated locations on agricultural machinery such as harvesters and tractors, it usually also displays the “Wo De in Chinese” logo on a prominent position on the fuselage. When relevant public seeing agricultural machinery products, it is easier to recognize the word mark rather than the color as a mark to distinguish the source of the product.

Finally, regarding the applicant’s claim that the Disputed Mark has acquired distinctive features through use, this court found that although the evidence can prove that the agricultural machinery produced by the applicant in recent years has a relatively high sales share in the industry and has also achieved a certain degree of fame, the use and publicity reports and honorary materials mainly reflect the commercial use of “Wo De in Chinese” mark. In most cases, the Disputed Mark was only used as the background color of “Wo De in Chinese.” The said evidence was insufficient to prove that the Disputed Mark has obtained distinctive features and can act as an identification for ordinary consumers to distinguish the source of goods just by being used as the background color of a logo such as “Wo De in Chinese.”

In sum, the existing evidence is insufficient to prove that the Disputed Mark has gained a certain degree of fame in actual use and can play a role in distinguishing the source of goods, thereby obtaining distinctiveness that can be approved for registration.

The applicant appealed to the second instance court, however, the appeal was dismissed and the original judgment was affirmed.

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East IP is pleased to announce the expansion of its trademark and IP enforcement practices with the arrival of two new teams, including SIPS, a market-leading IP firm based in Hong Kong, founded by Joe Simone, and a team of six partners with 36 professionals led by Jimmy Huang Jingwen, from the Beijing office of a top Chinese law firm.

The SIPS team includes five partners and 90 professionals and staff based in Beijing, Shanghai, Guangzhou and Hong Kong. SIPS is known for its trademark prosecution, investigations, and enforcement work for multinational clients. Going forward, it will operate under the name East IP Limited.
The team led by Jimmy Huang, which arrives in stages from April 1, includes 36 professionals and staff. Jimmy’s team is particularly recognized for its capabilities in trademark prosecution and IP litigation.

The incoming teams include several senior professionals with extensive experience in international law firms, many of whom are qualified in the United States, the UK, Australia, Hong Kong and elsewhere.