Weekly China Trademark News Updates

January 10, 2024

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

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

2. Davidoff wins another administrative trademark enforcement action

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

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Weekly China Trademark News Updates

January 3, 2024

1. Trademark and Brand Development Index 2023

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

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

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

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

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

China FAW Corporation appealed the unfavorable decision.

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

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

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

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Weekly China Trademark News Updates

December 19, 2023

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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Weekly China Trademark News Updates

December 12, 2023

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

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

Cited Marks

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

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

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

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

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

Cited Mark

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

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

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

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

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Weekly China Trademark News Updates

December 6, 2023

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

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

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

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

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

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

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

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

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

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

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Weekly China Trademark News Updates

November 30, 2023

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

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

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

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

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Weekly China Trademark News Updates

November 21, 2023

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

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

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

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

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

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

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

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

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

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

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

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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.

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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.

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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.

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