Weekly China Trademark News Updates

April 25, 2023

Summary of the Supreme People’s Court’s Annual Trademark Cases

On April 23, 2023, the Supreme People’s Court released the summary of its annual intellectual property cases, among them, there are civil and administrative trademark cases as follows.

(1) Civil trademark cases

 A trademark owner shall not prohibit others from legitimate use of the place names in a trademark

In the retrial, the applicants Xiaoling Wu, Wenping Liu and the respondent Zou Xue’e Tofu Workshop in Nanmiao, Yuanzhou District, Xue’e Zou, Gensheng Gao Vegetable Stall in Chengxi, Yuanzhou District, Gao Gensheng, Yu Zhulan Bean Products Stall in Chengxi, Yuanzhou District, and Yu Zhulan trademark infringement and unfair competition case ((2021) Zui Gao Fa Min Shen No. 7933), the Supreme People’s Court pointed out that if a registered trademark contains a geographical name, the trademark owner shall not prohibit business owners within the area marked by the geographical name from using the geographical name in good faith and legitimately.

Prior administrative punishment does not affect the determination of civil infringement liability

In the retrial trademark infringement and unfair competition case between Nanfang Pump Co., Ltd. and the respondent Yongan Nanfang Science and Technology Pump and Valve Business Department (“Nanfang Pump) ((2021) Zui Gao Fa Min Shen No. 6419), the Supreme People’s Court pointed out that in a trademark infringement case, even if the alleged infringement had been subject to administrative punishments and its evidence can reflect the fact and actual implementation of the infringement, the people’s court shall consider the interest party’s claims and relevant evidence in the infringement case to determine the actual circumstances of the infringement and its corresponding infringement liability.

Application of the statute of limitations in trademark infringement cases

In the said “Nanfang Pump Industry” trademark infringement case, the Supreme People’s Court pointed out that if there was no evidence to prove the starting time of the statute of limitations, and the accused infringer has not raised a defense against the statute of limitations, the people’s court should not directly apply Article 18 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Dispute Cases which stipulates that the accused infringer does not need to bear compensation liability.

(2) Administrative trademark cases

One should reasonably avoid other people’s prior trademarks when applying for a trademark

In the retrial case, the applicant Shenzhen Xiangli Arts and Crafts Furniture Co., Ltd., the respondent Beijing Hongwen Boya Traditional Hardwood Furniture Co., Ltd., and the appellant of the second instance, the CNIPA, an administrative dispute over a request for invalidation of trademark rights ((2022) Zui Gao Fa Xing Zai No. 1) the Supreme People’s Court pointed out that the interest parties who knew of the prior trademarks used by others based on their business operations but did not reasonably avoid them, and still applied for the disputed marks that were similar to other trademarks on identical or similar goods that violated the principle of good faith. Such disputed marks shall not be registered.

Determination of the distinctiveness of English trademarks

In an administrative trademark rejection appeal dispute between the retrial applicant Nuoausi and the respondent the CNIPA ((2022) Zui Gao Xing Zai No. 4), the Supreme People’s Court pointed out that to determine whether an English trademark is distinctive, it should consider the common understanding of the relevant Chinese public for the goods or services designated by the mark as the standard, judging from the element and meaning of the overall composition, considering the degree of association between the mark itself and the goods or services designated for use, and whether it can play a role in distinguishing the source of goods or services when used.

The effect of administrative regulations on judging similarity of goods and services

In the trademark invalidation retrial case between the applicant Hebei Huatuo Pharmacy Pharmaceutical Chain Co., Ltd., the respondent Huatuo Sinopharm Co., Ltd., and the first-instance defendant the CNIPA ((2021) Zui Gao Xing Zai No. 76), The Supreme People’s Court pointed out that when determining whether goods and services are similar, it is necessary to consider the state’s management regulations for the manufacture, sales and related services of such goods in order to maintain the relevant market order, and consider the effect of such regulation on goods sales channels, service methods, and impact on consumer groups, etc. The situation of long-term stable market order formed by such regulations should be taken as an important consideration.

Determination of a registered trademark that damages the name right of foreign natural persons

In the trademark invalidation retrial case between the applicant Manolo Blahnik, the respondent the CNIP and, Yuzhou Fang ((2021) Zui Gao Xing Zai No. 75), the Supreme People’s Court pointed out that foreign natural persons such as well-known designers use and promote their name as the brand of the product. Before the application for registration of the disputed trademark, its name has a certain popularity among the relevant public in mainland China, the disputed mark completely contains the name of the natural person, and the relevant public believes that the disputed mark referred to the natural person, or that the goods marked with the disputed mark were authorized by such natural person, or that there were special association with that natural person, such disputed mark’s registration damaged the natural person’s name right.

The effect of the trademark registrant’s earlier trademarks on the approval and registration of its later trademarks

In the trademark invalidation retrial case between the applicant Guangdong Goodwife Technology Group Co., Ltd. and the respondent CNIPA and Foshan Kaidaneng Enterprise Management Consulting Co., Ltd. ((2022) Zui Gao Xing Zai No. 3), the Supreme People’s Court pointed out that whether a trademark can be registered should be judged in accordance with the relevant provisions of the Trademark Law, and the prior well-known trademark owned by the trademark registrant cannot be the obvious reason for the registration of the later-filed trademarks.

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

Weekly China Trademark News Updates

April 19, 2023

1. Chivas successfully invalidated a copy registered on coffee, tea, and cookies

A Beijing company registered the “Zhihuashi CHIVAS” mark (“Disputed Mark”) in May 2015, which was partially rejected and published for opposition for Coffee; Tea; Sweetmeats [Candy]; Honey; Cookies; Noodles; Prawn cracker; Ice cream. An opposition was raised against the publication but the Disputed Mark was allowed. Chivas filed an invalidation against the Disputed Mark shortly after its registration.

The CNIPA found in the invalidation that the Disputed Mark’s approved use for coffee, cookies, and other goods constituted as a similar mark with the Cited Mark 1 and 2 “CHIVAS in Chinese” on identical or similar goods. However, the Disputed Mark’s other approved goods of sweetmeats [candy], ice cream, honey were not the same as those approved goods of the Cited Mark 1 and 2. Thus, the Disputed Mark was maintained for “sweetmeats [candy], ice cream, honey” but invalidated on “coffee, tea, cookies, noodles, prawn cracker”.

The owner of the Disputed Mark filed an appeal to the Beijing IP Court. The Beijing IP Court rejected the appeal. The owner of the Disputed Mark then appealed to the Beijing High Court to request to vacate the prior decisions and claimed that the Disputed Mark was a continuation of the mark with reg. no. 1768387. Thus, the Disputed Mark’s status shall still be valid.

During the process of the second instance appeal, the Disputed Mark was cancelled for all said goods due to three-year non-use and was published on January 13, 2023 on the Registered Trademark Cancellation Gazette.

The Beijing High Court found that: although all of the Disputed Mark’s goods had been cancelled and published, the nature and legal consequences of trademark cancellation and trademark invalidation are different. In addition, the Disputed Mark’s rights can have certain impact to the civil cases involved while it was still valid. Thus, even though the Disputed Mark had been cancelled and its status published, it was still necessary to determine whether the Disputed Mark violated Article 30 of the 2013 China Trademark Law.

In this case, the Disputed Mark’s approved goods for “coffee, tea, cookies, noodles, prawn crackers” fell into the same subclasses as “coffee, tea, sandwich, instant noodles, popcorn” approved for the Cited Mark 1 and 2. And the said goods’ function, use, manufacturing department, consuming public highly overlapped. These goods constituted identical or similar.

The Disputed Mark is a word mark consisting of “Zhi-hua-shi” on top and “CHIVAS” at the bottom. The Cited Mark 1 is a word mark consisting of simplified Chinese characters “Zhi-hua-shi.” The Cited Mark 2 is a word mark consisting of traditional Chinese characters “Zhi-hua-shi.” The Disputed Mark’s Chinese part “Zhi-hua-shi” shared the first two Chinese characters with the Cited Mark 1 and 2, and the ending characters “shi” shared identical pronunciation and similar fonts with the “Shi” characters in the Cited Marks 1 and 2. The Disputed Mark and the Cited Mark 1 and 2 are similar in word composition, pronunciation, meaning, overall appearance, and visual effect; if the marks are used simultaneously on identical or similar goods, the relevant public, when paying general attention and observing the marks individually, would likely to believe that the said marks’ goods came from the same source or the two entities were associated and thereby causing confusion. Thus, the Disputed Mark constituted as similar mark with identical or similar goods for “coffee, tea, cookies, prawn crackers, and noodles” with the Cited Mark 1 and 2, which violated Article 30 of the China Trademark law and shall be invalidated.

The owner of the Disputed Mark claimed that the Disputed Mark was a continued registration of its prior registered trademark No. 1768387. On this point, the court held that, the registrant enjoys separate trademark exclusive rights to each of the registered marks, and there was no definite continuation relationship between successively registered marks. The protective continuation registration of a new trademark on the basis of a registered trademark should not disrupt the established order of trademark registration, especially it should not constitute identical or similar trademark used on the same or similar goods with other’s previously registered trademarks.

Therefore, the relevant grounds of the appeal of the owner of the Disputed Mark cannot be found and the court would not support it.

2. A simple act of filing trademark applications does not infringe another’s trademark right or constitute unfair competition

Castrol is one of the world’s leading professional lubricating oil manufacturers. It owns the “Castrol in Chinese,” “CASTROL,” “CASTROL and Design,” “Jihu in Chinese,” “Cihu in Chinese,” “Jiahu in Chinese,” “Jinjiahu in Chinese,” and other trademarks in Class 4 on “industrial oils and greases; lubricants; greases; fuels,” etc. Among them, the “Castrol” trademark was first recognized as a well-known mark on lubricating oil products in China in 2008.

Castrol noticed that Annaichi Company (“Annaichi”), whose business scopes covered “lubricating oil (except brake fluid), grease, antifreeze, glass water, filter element processing and sales”, hired Century Dingli Agency to file applications for the “Castrol in Chinese,” “CASTROL & Design,” “Cihu in Chinese,” “Jihu in Chinese,” and “Jinjiahu in Chinese” marks in Class 39 for “goods delivery; goods delivery; commodity packaging; commodity packaging; transportation reservation; shipping goods; automobile transportation; cargo storage liquefied gas station; filling service,” etc.

Castrol filed a lawsuit before the Xicheng District Court in Beijing arguing that Annaichi’s act of applying for trademarks was a preparatory act for trademark infringement, and if the act did not constitute trademark infringement, it should constitute unfair competition. Castrol also argued that Annaichi’s trademark agency should know that these trademarks were improper, but still helped it to register these marks in bad faith. It was obvious that they have a common intention to infringe and cause damage, and they should bear joint and several liability for compensation.

The first instance court found that Annaichi’s applying for trademark applications were neither the act of trademark use regulated by the China Trademark Law, nor act of business production or operation regulated under the China Anti-Unfair Competition Law. Therefore, Annaichi’s application for registration of the disputed trademarks did not constitute trademark infringement or unfair competition against Castrol, and Castrol’s claims were dismissed.

Castrol appealed to the Beijing IP Court and, after holding an inquiry of both parties, the court affirmed the lower court’s decision.

The Beijing IP Court reasoned the following issues.

1. Whether Annaichi’s act of applying for trademark applications infringed upon Castrol’s trademark right

Article 1 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Dispute Cases (“Judicial Interpretation”) stipulates that the following acts are acts that cause other damages to others’ exclusive right to use registered trademarks: 1) prominently using words identical to or similar to others’ registered trademarks as the name of the enterprise on identical or similar goods, which may easily mislead the relevant public; 2)  copying, imitating, or translating a well-known trademark or its main part registered by others and using it as a trademark on different or dissimilar goods, misleading the public, and causing possible damage to the interests of the registrant of the well-known trademark; 3) registering identical or similar characters as others’ registered trademarks as domain names, and conducting e-commerce transactions of related commodities through this domain name, which may easily mislead the relevant public.

In this case, first, Annaichi’s act of trademark applications was mainly to apply for five marks of “Castrol in Chinese,” “CASTROL & Design,” “Cihu in Chinese,” “Jihu in Chinese,” and “Jinjiahu in Chinese” in Class 39 for “goods delivery; goods delivery; commodity packaging; commodity packaging; transportation reservation; shipping goods; automobile transportation; cargo storage liquefied gas station; filling service,” etc.  The acts of applying these trademarks were not the circumstances of causing other damages to others’ exclusive trademark rights as stipulated under Article 1 of the Judicial Interpretation. Second, Annaichi only applied for trademarks and did not put the five trademarks into business activities for use as defined in the China Trademark Law. These marks did not play the role of identifying the source of goods as trademarks and therefore did not constitute trademark infringement. Thus, Castrol’s claim that Annaichi’s act of applying for registration of trademark was trademark infringement lacked facts and legal basis, the court cannot support such claim.

2. Whether Annaichi’s alleged acts constitute unfair competition

Article 2 of the Anti-Unfair Competition Law stipulates that operators shall abide by the principles of voluntariness, equality, fairness, and good faith, and abide by laws and business ethics in production and business operations. The act of unfair competition referred to in this law refers to the conduct of business operators in violation of the provisions of this law, disrupting the order of market competition, and damaging the lawful rights and interests of other business operators or consumers in their production and business operations. The business operators mentioned in this law refer to natural persons, legal persons and unincorporated organizations engaged in the production and operation of commodities or the provision of services.

In this case, the accused behavior was that Annaichi’s applied for the registration of five marks “Castrol in Chinese,” “CASTROL & Design,” “Cihu in Chinese,” “Jihu in Chinese,” and “Jinjiahu in Chinese” in 2017 in Class 39 for “goods delivery, cargo shipment, shipping cargo, automobile transportation” and other services. The “Castrol in Chinese” and “Castrol” series trademarks of Castrol are fanciful words with high distinctiveness and high popularity. Judging by common sense, the possibility of creating a similar mark in coincidence without contact or knowledge at all was very unlikely. As a competitor in the same industry, Annaichi should know that the “Castrol in Chinese” and “Castrol” series trademarks are extremely well-known, but it still applied for the registration of the disputed marks that are identical or substantially similar to the “Castrol in Chinese” and “Castrol” series trademarks, and it did not provide evidence or fully explain the source of creativity of the five disputed marks. Their subjective intentions were hardly legitimate. Therefore, Annaichi’s act of applying for trademark registration of the disputed marks was an act of applying for trademark registration in bad faith.

However, it was not appropriate to apply Article 2 of the Anti-Unfair Competition Law to provide relief only for the act of applying for trademark registration. First, the act of applying for trademark registration itself can be given administrative relief through the relevant provisions of the China Trademark Law. For example, Article 13 of the China Trademark Law provides protection of well-known marks, Article 15 provides regulation of agents or representatives preemptively registering trademarks, Article 30 provides regulation of identical or similar trademarks for identical or similar goods, and Article 32 provides protection of prior rights or prior unregistered trademarks, and Article 44’s prohibition of “obtaining trademarks by other improper means” provides regulation of preemptive registration of trademarks. These articles provide administrative relief for trademark registration applications in bad faith. Second, the act of applying for trademark registration is an administrative act of applying to the CNIPA for trademark registration. In the absence of abuse of trademark rights after registration, it would be difficult to identify a simple act of trademark registration as a production and operation act, so it did not belong to the acts regulated under the Anti-Unfair Competition Law. Third, as far as the evidence on file is concerned, Annaichi’s accused act was only the act of applying for trademark registration, and the applications for the five disputed marks have been rejected or decided not to be registered. The legal rights of Castrol Company had been protected. Therefore, there was no legal basis for Castrol’s claim that Annaichi’s alleged conduct constituted an act of unfair competition, and this court does not support its claims.

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

Weekly China Trademark News Updates

April 12, 2023

1. Ralph Lauren was awarded RMB 3.3 million in an unfair competition dispute involving storefront decorations

The Jiangsu High Court recently concluded an unfair competition dispute between Ralph Lauren Company, Polo/Lauren Co., Ltd. (“Polo Lauren”), Ralph Lauren Trading (Shanghai) Co., Ltd. (“Ralph Lauren Shanghai”), Shanghai Ruifa Clothing Co., Ltd. (“Ruifa”), Shanghai Yangpu Qiansheng Household Goods Store (“Qiansheng Household”), and Suzhou Industrial Park Pengfa Clothing Store (“Pengfa”). The court made a final decision that Ruifa, Guojie LIN, and Guopeng LIN to immediately stop the unfair competition and compensate Ralph Lauren for economic loss of RMB3 million (USD435,875) and the reasonable expenses spent to stop the infringement totaled RMB300,000 (USD43,587).

Regarding whether Ruifa’s actions constituted unfair competition, the court found that: First, Ruifa used, without authorization, the store decoration and product packaging of Ralph Lauren which had a certain influence. The store decoration and product packaging involved in the case had already had a certain impact. Ralph Lauren is a well-known international company. Its Ralph Lauren brand stores are all over the world with nearly 100 active “Polo Ralph Lauren” stores in China. The brand has a high reputation and influence in the relevant consumer market. The main features of the store decoration involved in the case are a dark background wall outside the store, with eye-catching bright yellow “POLO RALPH LAUREN” logo and a “polo rider” graphic logo on the wall as prominent signboard decoration. On top of the store’s entrance is the bright yellow “POLO RALPH LAUREN” signboard. The store’s interior design uses many retro wooden materials decoration design, including product display design based on unique wooden shelves, exposed white brick walls, and embellished with retro style posters. The lighting design on the ceiling is a unique linear shape that adopts a retro style, which constitutes an overall business image with a unique style. The main features of the product packaging involved in the case include: a hard paper cuboid shopping bag with a blue background color, a bright yellow “POLO RALPH LAUREN” text printed on one side of the paper bag, and bright yellow “Polo Rider” graphic logo printed on the other side. The various design elements of the said store decoration and product packaging complement each other and are inseparable, which present a unique visual effect of American retro style as a whole and carry distinctive features to identify the source. Second, Ruifa adopted a combination of design elements similar to “Polo Ralph Lauren” store decoration and product packaging in its store decoration and product packaging, including a dark bottom plate on the storefront with bright yellow “POLO SPORT” text and a “Polo Rider” graphic logo. The overall decoration of the store was in retro style that used a large number of wooden materials and recycled bricks painted with white paint, and the ceiling lighting devices were arranged in a straight line. The shopping bag printed with bright yellow “POLO SPORT” text and a “Polo Rider” graphic logo. The said store decorations and product packaging used by Ruifa were basically the same as those of Ralph Lauren in terms of visual effect, and it was very easy for the relevant public to mistakenly believe that Ruifa’s products came from Ralph Lauren or there exists a specific connection between the two.

Second, Ruifa made misleading statements in its publicity. Its official website and WeChat public account positioned itself as a sports style brand founded in the new leisure era in the United States and transplanted a large number of “Polo Ralph Lauren” brand creations and Ralph Lauren’s history of entering the China market. Ruifa failed to provide corresponding evidence to prove that the said publicity content was related to itself, and its franchise store, Pengfa, made misleading statements to consumers in the actual operation process. In addition, relevant consumer’s comments also reflected that “POLO SPORT” store salesperson publicized that it was a POLO brand. The above misleading statements of Ruifa were enough to make the relevant public to mistakenly believe the brand “POLO SPORT” operated by Ruifa as a sub-brand of the “Polo Ralph Lauren” brand of Ralph Lauren or there was an association with the “Polo Ralph Lauren” brand.

Third, Ruifa imitated some of the classic clothing styles of Ralph Lauren such as the “Polo Bear,” “Winter Stadium,” and embroidered logo series clothing that are all classic clothing styles independently designed by the “Polo Ralph Lauren” brand with a strong brand style. The “POLO SPORT” brand of Ruifa had successively launched several products similar to the said clothing styles. The two clothing styles were highly similar in terms of pattern shape, layout design, and overall image.

Accordingly, it should be determined that the said behavior of Ruifa constituted unfair competition.

2. The combination mark of “Peppa Pig in Chinese” is recognized as a well-known mark and granted cross-class protection

In March 2023, the Guangdong High’s Court concluded a trademark infringement dispute between Entertainment One UK Limited (Entertainment One), Yanlin CAI, Yiwen CAI, and Shenzhen Aosha Import and Export Co., Ltd. In the judgment, Yanlin CAI and Yiwen CAI were judged to compensate Entertainment One for economic losses and reasonable expenses paid for stopping the infringement totaling RMB500,000 (USD72,600).

Entertainment One is the registrant of the “ ” mark with reg. no. 12330796 and the “” mark with reg. no. 12330735 in Class 9 for “computer game software (recorded), electronic learning machine, cartoon, etc.” Baida Company, ran by Yanlin CAI and Yiwen CAI, sold products such as “Peppa Pig QQ Candy,” “Peppa Pig Sandwich Marshmallow,” and “Peppa Pig George Popsicle” in its online store.

The second instance court found that: according to the evidence in the case, it can be proved that through the continuous publicity and use of the “” mark by Entertainment One, such trademark has a very high reputation in cartoon products and is widely known to the relevant public in China, which constituted a well-known mark.

In this case, although the infringing marks “,” “,” and “” altered “Peppa Pig” to “PeiPeiPig,” and changed “Peppa Pig in Chinese” to “Xiao Zhu Pei Pei,” they still kept the “Xiao Zhu Pei in Chinese” and the distinctiveness of the “Pig” and double P. Moreover, the changed font and position arrangement were the same as the Cited Marks, and other main constituent elements such as the cloud-shaped frame, the image of Peppa Pig, and the relative position arrangement between the main elements were still highly similar to the Cited Marks. In this case, although there was a certain difference, they were enough to make ordinary consumers misidentify the source of the goods using the accused mark, which was likely to cause confusion.

Considering the popularity of the Cited Marks, the nature and quantity of the allegedly infringing products, the nature of the alleged infringement, the circumstances of the infringement and subjective faults of Yanlin CAI, Yiwen CAI and Aosha, and the reasonable expenses paid by Entertainment One for rights protection, the second instance court affirmed the first-instance judgment that determined Yanlin CAI and Yiwen CAI should compensate Entertainment One for economic losses and reasonable expenses of RMB500,000 (USD72,600).

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

Weekly China Trademark News Updates

April 4, 2023

1. Nokia was awarded RMB 3 million in compensation based on its famous but discontinued product name and decoration

The Guangdong High Court recently concluded a final judgment on a trademark infringement and unfair competition case between Nokia Corporation (“Nokia”) and Shenzhen Nuoyaxin Technology Group Co., Ltd. (“Nuoyaxin”). The court ordered Nuoyaxin to compensate Nokia for economic losses and reasonable expenses totaling RMB3 million (USD 435,951).

Regarding whether the alleged infringing acts constitute trademark infringement, the court found that: first, Nuoyaxin used “,” “,” “,” and “” marks on the alleged infringing products, websites, WeChat accounts, Weibo, and exhibition businesses activities. Said marks constituted identical or similar goods with approved goods under Nokia’s Cited Mark. Second, the distinctive parts of the “” and “” marks were “Nuoyaxin” and “NOAIN,” which constitute similar with “Nokia in Chinese” and “NOKIA” in Nokia’s registered trademark “” in terms of font, letter, letter composition, font structure, and overall word orders, and it was likely to cause confusion among the relevant public. The distinctive part of the “” mark is “NOAIN,” which was only one letter different from the distinctive part of Nokia’s “NOKIA” mark. Moreover, the two marks constitute similar in terms of letter composition, visual effects and pronunciations. The “” mark was similar to Nokia’s “NOKIA” mark in terms of composition, font, and overall appearances, which was likely to cause confusion among the relevant public. Combining the fact of Nokia’s highly famous trademark, Nuoyaxin’s acts shall be held as infringing on Nokia’s trademark right. Due to the characteristics of mobile phone products and the acceptance of new mobile phone products by relevant consumers, it is determined that compared with traditional industry products, mobile phone gateway products will not lose their high market popularity and influence in a relatively short period of time. Therefore, the discontinuation of the cited products was insufficient to negate the fame of its product name and decoration. Consider that Nokia’s “NOKIA” mark had been recognized as a well-known mark, under the circumstances that the trademark and the goods were basically identical, there was direct influence regarding the trademark’s fame and the product name. Accordingly, existing evidence can prove that prior to the alleged infringing acts, the name and decoration of the cited products “Nokia in Chinese 5310” fell into “product name and decoration with certain influence” under the Anti-Unfair Competition Law. Second, Nuoyaxiun’s manufacturing and sales of “Nuoyaxin in Chinese 5310i” cell phone was similar to Nokia’s  “Nokia in Chinese 5310” series phones in terms of Chinese characters, English letters, and numbers. In terms of mobile phone decoration, the two products were highly similar in terms of mobile phone shape, body color, decorative strips, overall layout and design style of buttons, which would cause confusion among relevant consumers when they pay general attentions to the two products. What’s more, Nuoyaxin knew about Nokia’s fame in the mobile phone industry but still manufactured and sold “Nuoyaxin 5310i” products that were similar to Nokia’s “Nokia in Chinese 5310” series phones in terms of product name and decoration,mixed up “Nuoyaxin 5310i” and “Nokia in Chinese 5310” in its promotions, and prominently displayed “Classic Remake” in its promotions. These acts caused confusion among the relevant public to believe that “Nuoyaxin 5310i” products and Nokia’s “Nokia in Chinese 5310” products had special associations. Nuoyaxin had subjective bad faith in free riding Nokia’s fame. Accordingly, it should be determined that Nuoyaxin’s manufacture and sale of the “Noah 5310i” mobile phone constitutes unfair competition.

2. The registrant’s failure to use its registered trademark allows alleged infringers to escape from paying compensation for economic loss

In March 2023, the Shandong High Court concluded a trademark lawsuit between Jiyuan Xinyuan Beverage Co., Ltd. (“Xinyuan Beverag”), Beijing Yanjing Beverage Co., Ltd. (“Yanjing Beverage”), Beijing Yanjing Beer Group Co., Ltd. (“Yanjing Beer”), etc. The court reversed the first-instance judgment that ordered Yanjing Beverage to compensate Xinyuan Beverage for economic losses and reasonable expenses of stopping the infringement totaling RMB300,000 (USD43,579), and ordered Yanjing Beverage and Yanjing Beer to compensate Xinyuan Beverage for the reasonable expenses of RMB40,000 (USD5,810) paid to stop the infringement.

On July 28, 2013, Xinyuan Beverage registered the “” mark with reg. no. 10759984 in class 32 for mineral water (beverage), water (beverage), etc. Yanjing Beverage admitted that it produced the accused infringing products, that is, “Yanjing Super Body Energy in Chinese” drinks. The bottle sticker of the accused infringing products was marked with the “Yanjing” trademark but in a small font, and “Super Body Energy in Chinese” was used in a prominent position in the middle of the bottle sticker, there was a lightning pattern between “Super Body in Chinese” and “Energy in Chinese,” and there was a “TM” sign on the upper right corner of “Super Body Energy in Chinese.”

The court found that the accused infringing products and the approved goods of consumer water (beverage), etc. of the cited mark constituted similar. The accused infringing products prominently used “Super Body in Chinese” that was identical to the cited mark. The acts of Yanjing Beverage and Yanjing Beer constitute using identical mark with Xinyuan Beverage’s registered trademark on similar goods, which was likely to cause confusion among the relevant public as to the source of goods, or was likely to cause the relevant public to believe that there were exiting associations between the source of the cited mark. These acts infringed upon Xinyuan Beverage’s trademark right. Although the accused infringing products were labeled with “Yanjing in Chinese” mark, it was not enough to influence the trademark infringement findings.

Regarding civil liability issues, the court cited Article 64 of the Trademark Law which stipulates that where a registered trademark registrant is requesting compensation, where the accused infringer rebut that the registrant failed to use the registered trademark, the court can request the registrant to provide evidence of actual use of the registered trademark three years prior to the requested date. If the registrant cannot provide actual use of its registered trademark three years prior to the requested date and cannot prove other losses due to the infringing acts, the accused infringer shall not be liable for compensation. In this case, Xinyuan Beverage claimed its exclusive trademark right over the “Super Body in Chinese” mark with reg. no. 10759984, but the actual use of such mark was an altered-font version of the “Super Body in Chinese” mark “.” Such altered-font was another registered trademark of Xinyuan Beverage. Thus, Xinyuan beverage’s evidence cannot be seen as actual use of its registered trademark. Xinyuan Beverage also used the simplified Song font style “Super Body Energy in Chinese” in the form of a transparent buoy in the center of its product bottle, but the font size of the four characters “Super Body Energy in Chinese” was exactly the same, and the word “Super Body in Chinese” was not prominently used. This method of use cannot be regarded as the use of the registered trademark involved. Therefore, the evidence submitted by Xinyuan Beverage cannot prove that it has actually used the trademark involved in the previous three years. Yanjing Beverage and Yanjing Beer did not have to bear the liability of compensating for their economic losses. However, since the acts of Yanjing Beverage and Yanjing Beer violated the trademark rights involved in the case, they should still compensate Xinyuan Beverage for the reasonable expenses paid to stop the infringement such as notarization, entrusted lawyers, etc. The court determined that Yanjing Beverage and Yanjing Beer should compensate Xinyuan Beverage for reasonable expenses of RMB40,000 (USD5,810) to stop the infringement.

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

Weekly China Trademark News Updates

March 28, 2023

1. Several new regulations on applying for color protection in the Madrid Agreement came into effect on February 1, 2023

On February 1, 2023, the amendments to the “Rules for the Implementation of the Madrid Agreement Concerning the International Registration of Marks” and the “Administrative Regulations for the Implementation of the Madrid Agreement Concerning the International Registration of Marks” came into effect. The following content concerning the application for color protection is worthy of attention:

From February 1, 2023, color should be protected as a distinctive feature of a trademark in international registrations, and an applicant only needs to provide a representation in color of the trademark. Previously, if a basic trademark was represented in black and white, and the applicant wanted to protect the color in the international application, the applicant had to submit not only the black and white representation, but also the color representation corresponding to the black and white representation.

If there is a request for color protection in the basic trademark application, the applicant can still make this request in the international application. If the basic trademark application does not request color protection, but the international application requests color protection, then color protection in the basic trademark application must be requested, and the color protection in the international application must be consistent. If the basic trademark application protects the color or intends to protect the color, even if there is no corresponding color protection request, the applicant can still claim that the color is the distinctive feature of the trademark in the international application. In this case, the original intellectual property office shall certify the request.

There are other issues in this amendments that need attention: from February 1, 2023, when expressing the form of a trademark, the expression method is no longer “reproduction” (pattern), but “representation” (expression). Graphical representation is no longer required in international applications, and applicants may file applications for sound trademarks, combination trademarks or other types of multimedia trademarks presented in digital form, provided that the basic trademark application adopts the same representation format. For the format, refer to the World Intellectual Property Organization (“WIPO”) standards ST.67, ST.68 and ST.69, when a trademark is designated for protection in a Madrid Agreement member state, it is still subject to the trademark legislation of that country, and the member states can still request a pictorial representation in accordance with their respective domestic laws. If the provisional refusal is based on an earlier trademark, the corresponding national office can directly provide the expression of the earlier trademark in the notification or explain how to obtain the expression of the earlier trademark.

2. “Youku in Chinese” and two other “Youku” trademarks were recognized as well-known marks and given cross-class protection

Cited Mark 1	Cited Mark 2

Recently, the Ningbo Intermediate Court concluded a trademark infringement and unfair competition lawsuit between Youku Network Technology (Beijing) Co., Ltd. (“Youku Network”), Youku Information Technology (Beijing) Co., Ltd. (“Youku Information”) (collectively as “Youku”), and Taizhou Youde Technology Co., Ltd. (“Taizhou Youde”). The court found that the defendant’s acts constituted trademark infringement and unfair competition, and shall compensate economic losses and reasonable expenses of RMB400,000 (USD58,122).

The court found that from the perspective of the relevant public’s awareness of the trademark, Youku continued to use a large volume of “Youku in Chinese,” “youku,” the domain name “youku.com,” and the “Youku”  and “Youku and Youku in Chinese” trademarks on providing video services to the world. Youku has become one of the most famous  websites in China. Both Cited Marks are well-known among the relevant public and shall be recognized as have reached the status of well-known during the period when the alleged infringing acts occurred. The alleged infringing acts include using the words “Youku Education in Chinese” and “UCOOL Youku Education in Chinese” on the WeChat public account it operated, the door of its business premises, the bulletin boards in the store, external display boards, and leaflets. Therefore, without the permission of Youku, the defendant arbitrarily used the font and pronunciation of the main part of the Cited Marks, which constituted as copying the well-known mark or its main part and using it as a trademark on different or similar goods that misleads the public. Such use causes possible damage to the interests of the registrant of the well-known mark and constitutes trademark infringement. At the same time, Youku owns four other “Youku in Chinese” marks that are approved on goods and services that are related to education and training services used by the accused infringing marks in terms of functions, uses, and consumers. These similarities may easily confuse the relevant public. The distinctive part of the “Youku Education in Chinese” and “UCOOL Youku Education in Chinese” marks were identical to the four additional marks owned by Youku in terms of fonts and pronunciation, which was likely to cause the relevant public to misunderstand the source of the goods and believe that its source has a specific connection with the goods involved in the Cited Marks. Accordingly, the defendant’s behavior has infringed Youku’s registered trademarks.

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

Weekly China Trademark News Updates

March 22, 2023

1. Louis Vuitton successfully fend off the “LK & Design” mark

Disputed Mark	Cited Mark 1	Cited Mark 2
Reg. No. 28085116	Reg. No. G1249344	Reg. No. 241081

The Beijing High Court recently concluded an administrative trademark invalidation between the appellant Guangzhou Xiangfei Leather Goods Co., Ltd. (“Xiangfei”) and Louis Vuitton. The court dismissed the appeal and upheld the original judgment.

The issues of this case are: 1. Whether the Disputed Mark and the Cited Marks 1 and 2 constitute similar trademarks used on the same or similar goods as stipulated in Article 30 of the 2013 Trademark Law; 2. Whether the registration of the Disputed Mark violates the first paragraph of Article 44 of the 2013 Trademark Law.

Regarding issue 1: the court found that the approved goods of the Disputed Mark and the approved goods of the Cited Marks for leather, imitation leather and articles made therefrom all fell into class 18. Moreover, the goods’ function, use, manufacturing department, sales channel, target consumers, etc. were identical, which constituted as identical or similar goods. The Disputed Mark is a combination mark consisted of “LK” inside a circle. The Cited Mark 1 consisted of “LV” in a circle. The Cited Mark 2 consisted of only “LV.” The composition elements, methods and overall appearances of the Disputed Mark and the Cited Marks were similar. There were no distinctive differences between the two in terms of their meanings. When viewing them in isolation, the relevant public would easily mistake that the source of the goods of the Disputed Mark and the Cited Marks came from the same source of there were certain associations when paying general attention. Thus, the Disputed Mark constituted as a similar mark approved on identical or similar goods with the Cited Marks’ approved goods. This court affirmed that the Disputed Mark violated Article 30 of the 2013 Trademark Law.

In addition, Xiangfei claimed its rights from its prior registered “Lan Kou in Chinese LANKOU” mark with Reg. No. 15090726 and that the Disputed Mark was individually created by Xiangfei and was an extension of its copyright. The court found that trademark registrants enjoy exclusive trademark rights to each of the individual trademark they own. Trademarks registered in succession do not enjoy extended associations. Additional trademarks filed for defensive purpose on the basis of a registered trademark should not disrupt the established order of trademark registration, and in particular, it should not constitute the same or similar trademark used on the same or similar goods with the trademark that others have previously applied for registration. Whether Xiangfei owned the copyright of the Disputed Mark was not the basis for judging whether the trademark violates Articles 30 and 31 of the 2013 Trademark Law. Accordingly, Xiangfei’s relevant grounds for appeal cannot be established.

Regarding issue 2: the court found that among the dozens of trademarks filed by Xiangfei, not only were there a large number of copy and imitation of Louis Vuitton’s well-known trademarks, but also copy of “GUCCI” and “LANCOME” and other relatively well-known brands. Xiangfe’s application for registration of a large number of trademarks, including the Disputed Trademark, not only violated the principle of good faith, but also disrupted the order of trademark registration, damaged the public interest, and hindered the order of trademark registration management, which constituted as the circumstance of “obtaining registration by other improper means” as stipulated in the first paragraph of Article 44 of the 2013 Trademark Law. The judgment of the first instance court was correct and should be upheld.

2. The “Brks” mark was found similar to “BROOKS”

Disputed Mark	Cited Marks
Reg. No. 21013704	Reg. No. 262644        Reg. No. 7057423        Reg. No. 7069726                          Reg. No. 7069727        Reg. No. 18163412

The Beijing High Court recently concluded an administration trademark invalidation dispute between the appellant Putian Jianbu Industry and Trade Co., Ltd. (“Jianbu”), the appellee CNIPA, and the third party in the original trial, Brooks Sports Inc. (“Brooks”). The court rejected the appeal and upheld the original judgment.

Regarding to issue 1: since Cited Marks 2 and 3 have been canceled on all approved goods, they no longer constituted a prior right obstacle to the Disputed Mark’s application. Goods such as “clothing; shoes” designated by the Disputed Mark and “clothing; shoes (things worn on the feet); shoes” and other goods approved and used by the Cited Mark 1, 4, and 5 fell into identical or similar class according to the CNIPA Classification. The two were relatively similar in terms of functional use, production department, sales channel, consumer objects, etc., so the designated use of the goods under the Disputed Mark and the approved use of the Cited Mark 1, 4, and 5 constituted as identical or similar goods. The first instance court found that there was no obvious inappropriateness in finding that the two constituted the same goods. The Disputed Mark was composed of the letters “Brks”; the Cited Mark 1 was composed of the letters “BROOKS”; the Cited Marks 4 and 5 were composed of the letters “BROOKS” and design, and the letter “BROOKS” is one of the distinctive identification parts. Simultaneous use of the Disputed Mark and the distinguishing part of the Cited Marks on similar goods may cause confusion and misidentification by consumers, which violates the provisions of Article 30 and Article 31 of the 2013 Trademark Law, and the first instance court was correct.

Regarding issue 2: according to the evidence on file, Jianbu applied for several trademarks similar to the Disputed Mark for goods in Class 25 and services in Class 35. These marks included “Jordan,” “Nike,” “Converse,” “Delhui,” and other trademarks that are identical or similar to other people’s prior trademarks. Such registrations have obviously exceeded the normal production and operation needs, and Jianbu failed to submit evidence to prove that it has made commercial use of the above trademarks or has a genuine intention to use them. Taking the above factors into consideration, Jianbu’s misconduct occupied public resources and disrupted the normal order of trademark registration. The original judgment and the sued ruling found that the Disputed Mark’s application fell under the circumstance of “obtaining registration by other improper means” as stipulated in Article 44, Paragraph 1 of the 2013 Trademark Law should be affirmed.

3. The “Pampers & Design” mark was recognized as a well-known mark for cross-class protection

Disputed Mark	Cited Mark 1	Cited Mark 2
Reg. No. 20494723	Reg. No. 1564432	Reg. No. 11214847

The Beijing High Court recently concluded an administrative trademark invalidation between the appellant Fujian Guaiqiao Maternal and Baby Products Co., Ltd. (“Fujian Guaiqiao”), the appellee CNIPA and the third party in the original trial, Procter & Gamble Co., Ltd. (“P&G”). The court dismissed the appeal and upheld the original judgment.

The issues of this case are: 1. whether the approved use of the goods of the Disputed Mark such as “sanitary napkins, disinfectant wipes, baby diapers, incontinent diapers, sanitary pads, incontinent absorbent pants, baby diapers, and sanitary underwear” violates Article 30 of the 2013 Trademark Law; 2, whether the approved use of the Disputed Mark on “medical nutritional products and pesticides” violates the provisions of Article 13, Paragraph 3 of the 2013 Trademark Law.

Regarding issue 1: regarding similarity of goods, in view of Fujian Guaiqiao did not dispute the similarly between the approved goods of the Disputed Mark for “sanitary napkins, disinfectant paper towels, baby diapers, sanitary pads, incontinence absorbent pants, baby diapers, sanitary underwear” and those approved under the Cited Marks 1 and 2 as identical or similar goods, the court now affirmed such findings. The “incontinence diaper” goods approved for use under the Disputed Mark and the approved goods under the Cited Marks 1 and 2 fell into Part 1 of subclass 0506 in the CNIPA Classification. The functional use, manufacturing department, sales channels, and other aspects are highly overlapped and constituted similar goods. In terms of trademark similarity, the Disputed Mark is a word mark composed of foreign language “Pannters.” The Cited Marks 1 and 2 were both graphic-text trademarks composed of foreign language “Pampers” and a heart-shaped pattern, among which “Pampers” was a distinctive identification part of the marks. The Disputed Mark “Pannters” and the distinctive part “Pampers” of the Cited Marks 1 and 2 were similar in letter composition, arrangement, and pronunciation, and the overall visual effects of the Disputed Mark and the Cited Marks 1 and 2 were also relatively similar. If used on identical or similar goods, it was easy for the relevant public to believe that the goods used on the said marks came from the same entity subject or that there was a specific connection between the two, resulting in confusion and misunderstanding. The evidence submitted by Fujian Guaiqiao was not sufficient to prove that before the filing date of the Cited Marks 1 and 2, the Disputed Mark had gained a certain reputation and enabled the relevant public to distinguish it from the Cited Marks 1 and 2. Therefore, the Disputed Mark was identical or similar to the Cited Marks 1 and 2 for “sanitary napkins, disinfectant paper towels, baby diapers, sanitary pads, incontinent absorbent pants, baby diapers, sanitary underwear, incontinent diapers.” The registration of a similar mark on identical or similar goods violated the provisions of Article 30 of the 2013 Trademark Law and should be invalidated.

Regarding issue 2: evidence such as sales data, sales invoices, advertisements, media reports, and protected records submitted by P&G in this case can prove that before the filing date of the Disputed Mark, through P&G’s long-term, extensive and continuous publicity and use, the goods “baby diaper” under the Cited Mark 2 has been widely known to the relevant public in China and has reached a well-known level. The Disputed Mark was similar to the text of the distinctive part of the Cited Mark 2, which constituted an imitation. Although the “medical nutritional products and pesticides” goods approved for use under the Disputed Mark and the “baby diapers” goods for which the Cited Marks were well-known fell into different Class in the CNIPA Classification, but the relevant public overlapped. In the case that the Cited Mark 2 has reached the level of well-known on the goods of “baby diapers” and the Disputed Mark constituted an imitation of the Cited Mark 2, use of the “medical nutrition, pesticides” goods under the Cited Mark was likely to cause the relevant public to mistakenly believe that the Disputed Mark has a considerable degree of connection with the Cited Mark 2 and thereby weakening or diluting the distinctiveness of the Cited Mark 2 or improperly using its market reputation, resulting in damage to P&G’s right to the already well-known Cited Mark 2. Therefore, the registration of the Disputed Mark on “medical nutritional supplements and pesticides” violated the provisions of Article 13, Paragraph 3 of the 2013 Trademark Law, and should be invalidated. Guaiqiao’s other relevant grounds for appeal were untenable and the court did not support it.

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

Weekly China Trademark News Updates

March 15, 2023

1. The CNIPA issued the “Guidelines for Handling Administrative Intellectual Property Service Matters”

On March 10, 2023, the CNIPA issued the “Guidelines for Handling Administrative Intellectual Property Service Matters” that materialized the basis, application documents, and conditions when handling patents, trademarks, and geographic indications, etc. The purpose of the Guidelines aims at providing non-discriminatory administrative services in accepting applications, handling using identical standards, and realizing the convenience, speed, fairness, inclusiveness, high quality and efficiency of administrative services.

2. Hermes won RMB 2 million in damages – using “Hermes in Chinese” as a real estate name constitutes of trademarks infringement and unfair competition

Hermes International (“Hermes”) sued Shandong Hugang Jianye Real Estate Development Co., Ltd. (“Hugang Jianye”) for trademark infringement and unfair competition. The first instance court found that Hermes’ trademark “Hermes in Chinese” with reg. no. 1636601 and “” mark with reg. no. 1708652 are approved in Class 18 for “leather, leather bags, travel bags, harnesses” and so on.

Regarding trademark infringement, Hugang Jianye promoted “Hermes in Chinese Themed Apartments” on its “Huganghui” WeChat public account since January 2019. According to the evidence submitted by Hermes, the court comprehensively considered relevant public’s understanding to the Cited Marks, the time, duration, and geographical area of the actual use and promotional duration of the Cited Marks, and the Cited Marks’ multiple recognitions as a well-known mark prior to Hugang Jianye began using the Disputed Marks. The court found that Hermes has been continuously using its Cited Marks for 20 years and have extensively, broadly, and massively used, promoted, and marketed its Cited Marks. Hermes’ Cited Marks enjoy very high reputation and influence and are well-known to the public, which shall be recognized as well-known marks in Class 18 for leather bags, travel bags, and other goods. During its real estate construction and sales, Hugang Jianye used “Hermes in Chinese Themed Apartments” as its real estate’s name to promote and for sales. It highlighted the use “Hermes in Chinese” and “HERMES” in its building protective net, billboards on exterior walls, peripheral shielding boards. Hugang Jianye prominently used “HERMES” and “” on the large electronic screen outside of its sales center and exhibition stand. In the “Hermes in Chinese Themed Apartment” promotional pages, floor plans, and model room decoration, the “Hermes in Chinese”, “HERMES,” and “” logos were prominently used. Promotional articles, videos, and photos about “Hermes in Chinese Themed Apartments” were published on the WeChat public account of Hugang Jianye where the Cited Marks were prominently used. Hugang Jianye named the real estate as “Hermes in Chinese Themed Apartments” and prominently used the above-mentioned accused logo in commercial activities such as the construction, sales, exhibition and advertising of commercial housing, which played a role in identifying the source of goods, which fell under the provisions of the Trademark Law as trademark use. Through comparison, the “Hermes in Chinese” logo that was prominently used by Hugang Jianye was identical with Hermes’ Cited Mark. And the logo used by Hugang Jianye was also identical to Hermes’ Cited Mark. The “HERMES” logo used by Hugang Jianye was similar to the English letters in Hermes’ “” mark, which constituted as s similar mark. Consider Hermes’ Cited Marks have reached well-known status, relevant public can readily associated with Hermes’ and its brands upon hearing or seeing its Cited Marks. Thus, Hugang Jianye’s use of the Disputed Mark during construction, promotion, and sales for its real estate business activities was sufficient to confuse the relevant public that the disputed real estate came from Hermes or mistaken that Hugang Jianye has special connection or licensing relationship with Hermes. Moreover, Hugang Jianye directly used “Hermes in Chinese” as its apartment name for extensive promotion can be seen as to have subjective bad faith in taking advantage of other’s well-known mark and goodwill, which will diminish the distinctiveness of Hermes’ well-known mark, and unfairly exploited Hermes’ well-known marks’ market reputation, obtain unjustified interests, and damage Hermes’ legitimate interests. The court found that Hugang Jianye’s copy and imitation of Hermes’ well-known marks in different goods constituted as trademark infringement.

Regarding unfair competition, first, Hugang Jianye knew it did not have any license or connection with Hermes but deliberately emphasized the similarity or continuation relationship between its “Hermes apartment” and “Hermes” brand in terms of craftsmanship and design concepts. It also stated that the furniture and decoration in the apartment use Hermes brand and style products, and its behavior may mislead consumers into thinking that there is a connection between the two. Second, Hugang Jianye deliberately used words such as “French in Chinese,” “imported,” and “century-old luxury brand” in its publicity, and described the apartment involved as a luxury, thereby further deepening its connection with Hermes. Its intention to take advantage of Hermes’ popularity was extremely obvious. Third, combined with Hugang Jianye’s publicity and promotion of the project involved as “Hermes in Chinese Themed Apartment,” a large number of “Hermes” logos were used, and Hermes brand products, decorations and other behaviors were placed in the sales center and model rooms, these actions showed that it had the intention to mislead the relevant public. Therefore, Hugang Jianye’s publicity behavior is to promote products in ambiguous language or other misleading ways, which may easily cause confusion and misidentification of the relevant public. It was a misleading commercial publicity and constitutes unfair competition. Hugang Jianye used the Hermes classic orange design and classic logos such as the big “H” and horse design in the decoration of the apartment model room, and placed many Hermes products, which was enough to make the relevant public further mistakenly believe that the accused “Hermes Apartment” did come from Hermes or there was a specific relationship. The use of the above-mentioned logos or elemental products and decoration by Hugang Jianye was a comprehensive imitation of the trademark and brand of Hermes. Compared with simply using Heremes’ Cited Marks, Hugang Jianye’s use was more likely to cause confusion and misidentification to the relevant public, which further proves that its intention to cling to Hermes and the popularity of its trademark. Therefore, Hugang Jianye’s actions constituted as unfair competition that was enough to cause confusion.

Accordingly, the first instance court ordered Hugang Jianye to compensate Hermes economic loss and reasonable legal costs of RMB2 million (USD289,943). The second instance court later affirmed the first instance ruling.

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

Weekly China Trademark News Updates

March 7, 2023

1. The CNIPA commented on the Draft Amendment of the China Trademark Law at February routine press briefing

On February 22, the CNIPA held its routine press briefing where the CNIPA commented the following six points on the Draft Amendment of the China Trademark Law.

First, complying with the development requirements of the new era, which includes adding the new chapter “Conditions for Trademark Registration” to clarify registration requirements, strengthen trademark use, brand building, public services, etc.

Second, further maintaining social fairness and justice and the fair competition market order by means of, among others, clarifying the circumstances of bad faith trademark applications and legal responsibilities, introducing compulsory transfer of trademarks and public interest litigation systems, systematically regulating trademark squatting, stipulating the principle of prohibiting the abuse of rights, adding the system of counter-compensation for bad faith litigation, and defining the boundaries of trademark rights.

Third, optimizing the procedures for trademark authorization and confirmation so as to regulate repeated and cyclical registration of the same trademark that has existed for a long time, solve the problems of repeated cases, idling procedures, and low efficiency that have plagued practice for a long time, effectively protect the interests of right holders and consumers, and promote overall improvement of the quality and efficiency of trademark examination and trial.

Fourth, continuing to strengthen the obligation to use trademarks, with hopes to provide guidance to trademark registration to return to the system origin of “registration for use,” clear up idle trademarks, and solve the difficulties in obtaining trademark registration for market players.

Fifth, strengthening the protection of legal prior rights and well-known trademarks and to resolutely crack down on trademark infringement and unfair competition behaviors such as taking advantage of goodwill of famous brands, taking advantage of fame of famous brands, free-riding on famous brands’ popularity, and infringing on other people’s prior rights.

Sixth, enhancing the ability of collaborative governance in the field of trademarks via improving administrative law enforcement measures and increasing penalties for trademark violations, setting out access requirements for trademark agencies to improve service levels, strengthening the connection between administrative and judicial procedures, strengthening credit supervision and credit punishment, and purify the market environment.

2. Country Home invalidated squatter mark based on copyright

Country Home Product Inc. (“CHP”) tried to register its logo “” on lawn mowers and trimmers, etc. in China in April 2018, but was rejected due to a prior mark “” (“Disputed Mark”) registered by a Chinese national in August 2014.

CHP first filed a non-use cancellation against the Disputed Mark and later filed an invalidation on the last day of the five-year time limit. The validity of the Disputed Mark was sustained in the non-use cancellation. The CNIPA, however, found in the invalidation action that the Disputed Mark damage CHP’s prior copyright and invalidated it. The owner of the Disputed Mark appealed the case to the Beijing IP Court.

CHP participated actively  in the administrative lawsuit as a third-party. CHP provided additional evidence including its official website introductions and Chinese translation thereof, screenshots of promotional materials of CHP’s artwork on Facebook, use evidence submitted before the USPTO when CHP renewed its US registration of “DR” mark, promotional advertisements, media report, and other materials to prove its prior rights. CHP also provided the corporate information of a company owned by the Disputed Mark’s owner to prove that the Disputed Mark owner resided in the same industry as CHP and had access to CHP’s logo.

The Beijing IP Court found that CHP’s “DR” artwork constituted as a protectable artwork under the China Copyright Law. CHP has the prior copyright of its artwork. The Disputed Mark was nearly identical with CHP’s prior copyrighted artwork and the two are substantially similar. Under such circumstance, the Disputed Mark damaged CHP’s prior copyright and violated “other’s existing prior right” as stipulated in Article 32 of the China Trademark Law2013.

The Disputed Mark owner was not satisfied with the Beijing IP Court’s decision and further appealed to the Beijing High Court. The Beijing High Court rendered the final decision for this case on February 28, 2023.

The Beijing High Court found that: first, the artwork claimed by CHP consisted of DR in silver with an orange-red ball-shaped background, with the words “PROFESSIONAL POWER FOR HOME OWNERS” surrounding the said design in a sliver circle. Such design can be seen as original and has constituted as an artwork under the Copyright Law.

Second, product manual, trademark certificates, trademark use and other evidence submitted by CHP can be used to prove that prior to the application date of the Disputed Mark, CHP had completed its artwork. CHP therefore enjoys prior copyright to its artwork.

Third, the Disputed Mark and CHP’s prior created artwork were nearly identical in terms of composition, English letters combination, etc. with slight differences in color.

Forth, the Disputed Mark’s owner resided in the same industry with CHP and therefore should’ve known about CHP’s prior artwork. However, the Disputed Mark’s owner did not pay reasonable attention to avoid conflict, but intended to register the Disputed Mark that was nearly identical with CHP’s prior artwork with designated goods such as “agricultural machinery, harvesting machinery, and cutting machines” that overlapped with the business scope of CHP. Such behaviors can hardly be justified.

Accordingly, the registration of the Disputed Mark constituted as copying other’s work without authorization, damaged CHP’s prior copyright, violated Article 32 of the 2013 Trademark Law. The CNIPA and the Beijing IP Court’s decisions were affirmed.

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

Weekly China Trademark News Updates

March 1, 2023

1. CFA Institute successfully invalidated the “CVA” mark

Recently, the Beijing High Court concluded an administrative dispute concerning the invalidation of the “CVA” mark (“Disputed Mark”) owned by Huaping (Beijing) International Management Consulting Co., Ltd. (“Huaping”). The court upheld the first-instance judgment, that is, the application for registration of the Disputed Mark violated Article 30 and 31 of the 2014 Trademark Law and that the Disputed Mark shall be invalidated.

Disputed Mark	Cited Marks

Huaping applied for the Disputed Mark on December 25, 2017 and was approved for poster, book, printed publication, brochure, periodical, magazine (journal), printed matter, brochure, leaflet, and certificate in class 16.

CFA Institute filed invalidation based on its prior rights.

The second instance court found that the Disputed Mark consisted of “CVA” word marks. The Cited Marks consisted of either the “CFA” mark or other “CFA”-formative word mark or design mark. Consider “CFA” is not a fixed combination of words, it has no direct or certain connection with the approved goods. Thus, “CFA” is the distinctive part of the Cited Marks. There is only one letter difference between the Disputed Mark and the distinctive parts of the Cited Marks. Regardless of their overall comparison or comparison of the distinctive parts, the Disputed Mark and the Cited Marks were relatively similar in terms of composition, pronunciation, and overall appearance, which constitute similar marks. If the Disputed Mark and the Cited Marks were used on identical or similar goods, the relevant public may easily confuse and misidentify the source of the goods when paying general attention. Thus, the Disputed Mark and the Cited Marks constitute as similar marks on identical or similar goods. The evidence submitted by Huaping was not sufficient to prove that the Disputed Mark can be distinguished from the Cited Marks through use. In addition, the CNIPA review adopts the principle of case-by-case review, which can be affected by various conditions such as formation time, formation environment, and evidence on file. Application, examination, and approval of other marks were not necessarily related to this case, and cannot be used as the basis to decide the outcome of this case. This court affirmed the CNIPA and the first instance judgment that correctly decided the application of the Disputed Mark violated Article 30 and 31 of the 2014 China Trademark Law.

2. Awarded RMB1.1 million in damages! The Zhejiang High Court: Determine the amount of damages based on the compensation standard agreed in the settlement agreement

The Zhejiang High Court recently concluded  second instance anti-unfair competition dispute between Shenzhen Xiaoerduo Power Co., Ltd. (“Xiaoerduo”), Wenzhou Cricket Electronic Technology Co., Ltd. (“Cricket“), Quanyi Electric Co., Ltd. (“Quanyi”), Wenzhou Cricket Electronics Co., Ltd. Yueqing Branch of Science and Technology Co., Ltd. (“Wenzhou Cricket”), and Zhejiang Quanyi Electric Co., Ltd. Yueqing Branch (“Zhejiang Quanyi”). The court rejected the appeal petition and affirmed the first instance decision that ordered Cricket to immediately stop infringement and compensate Xiaoerduo for economic loss of RMB1.1 million (USD158,540).

The second instance found the following:

Xiaoerduo accused Cricket and Quanyi of using the accused infringing logo on the switching power supply, remote controller products and product promotions involved in the case, infringing the exclusive trademark right of its “XED” mark with reg. no. 13561563 and the “XED” mark with reg. no. 15067930. Cricket and Quanyi appealed and claimed their use did not constitute trademark use. In this regard, this court found that the tear-proof sticker marked “ZJXED” is located on the body of the switching power supply, and whether the tear-proof sticker is functional does not affect the function of the label to be used to identify the source of the product. As for whether “XEDYK-32II 3-phase” is a typical low-voltage electrical product model, Cricket and Quanyi did not provide evidence to prove it. Even if it was true, the letter combination of “XEDYK” is obviously not a common model number, even if the suffix “-32III3 phase” was added, it can also be used to identify the source of the marked goods, which constituted trademark use. The allegedly infringing goods were switching power supplies and remote controllers, which were identical or similar to the approved goods under the Cited Marks. Both the Disputed Mark and the Cited Marks consisted of a combination of “XED.” The primary function of the “XED” letter is a combination of the initials of the Chinese pinyin of the “Xiao Er Duo” brand name. The marks were identical in terms of composition, order, and pronunciation. At the same time, considering that the evidence submitted has a certain reputation in the industry, it should be determined that the Disputed Mark was similar to the Cited Marks, which may easily led to confusion among relevant consumers. With regard to the claims of Cricket and Quanyi that the use of the Disputed Mark was an omission in rectification, and there was no subjective intentional and necessary infringement, and, objectively, there was no possibility of confusion. Consider there was already a first-instance lawsuit in previous case between the companies and a settlement agreement was reached in second instance trial, and the time for cessation of infringement and the amount of compensation for further infringement were clearly stipulated, Cricket should have a higher duty of care to avoid subsequent trademark infringement. After the rectification period promised in the settlement agreement, the continued use of the Disputed Mark could hardly be called as good faith, and it was easy to confuse consumers. Therefore, the appeal grounds of Cricket and Quanyi could not be supported. The first instance court did not err in finding that Cricket infringed upon Xiaoerduo’s trademark rights.

The evidence submitted showed that Xiaoerduo has been using “Xiaoerduo in Chinese” as its trade name since February 19, 2008. Through long term and extensive publicity and use, its enterprise name (trade name) has formed a certain fame in the industry and obtained certain market influence. In particular, before Cricket was founded, Xiaoerduo and its related products have already been sold in Zhejiang province, including Wenzhou, where Cricket was located. Cricket and Quanyi claimed that Xiaoerduo has trade name dispute with other third parties which would affect the recognition of its fame. Xiaoerduo, however, provided evidence during the first instance that its trade name was legal and has certain fame. Cricket and Quanyi failed to prove in the contrary. Thus, Cricket and Quanyi’s claim cannot be supported. Cricket also defended by claiming that it has been changing its trade name prior to this case and it was normal to have omissions, and it has no intention to infringe Xiaoerduo. This court found that Cricket knew about the enterprise name and trade name of Xiaoerduo during previous lawsuits and settlements and undertook to change. However, Cricket still used trade names that include “Xiaoerduo” such as “Xiaoerduo Electronic Technology Co. Ltd.,” “Xiaoerduo Electronic Technology Co. Ltd., Leqingfen Company” in its marketing activities. Such use would objectively cause consumer to believe it was Xiaoerduo’s marketing activities. Cricket did not fulfill its duty of care. In particular, Cricket issued invoiced with “Xiaoerduo Electronic Technology Co. Ltd., Leqingfen Company” as its invoice title showed that it was not an omission but an unfair competition aimed at Xiaoerduo.

Regarding whether punitive damages was applicable in this case, the court found that since this case involves trademark infringement and anti-unfair competition disputes, so the nature of the liability involved is infringement damages rather than breach of contract damages. However, the relevant parties’ agreement on the amount of compensation for continued infringement in the settlement agreement of the previous case can be an important consideration for the amount of damages awarded in this case. Xiaoerduo did not require separate calculation of the amount of damages for trademark infringement and unfair competition in its complaint, and the actual losses suffered by Xiaoerduo due to the infringement and the specific benefits obtained by Cricket and Quanyi due to infringement were difficult to determine. According to the relevant provisions of China Trademark Law and China Anti-Unfair Competition Law, it was not inappropriate for the first instance court to apply statutory damages that included trademark infringement and unfair competition to Xiaoerduo. Xiaoerduo’s claim that the damages ordered did not reflect damages of unfair competition in the first instance judgement could not be supported. Comprehensively considering the company name of Xiaoerduo and the popularity of the Cited Marks, Cricket has infringed in both JD.com and Tmall online stores. The behavior of Quanyi in Tmall Store constituted joint infringement with Cricket. The sales volume of the accused infringing goods, unit price, were especially stipulated in the main body and agreed content of the previous lawsuits and the settlement agreement. Xiaoerduo paid reasonable expenses for the rights protection of this case, the first-instance judgment did not err in determining that Cricket should compensate Xiaoerduo RMB1.1 million (USD158,540)., and Quanyi should compensate the joint and several liability of RMB250,000 (USD36,039).

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

Mr. Austin Chang, counsel of Beijing East IP Law Firm, was invited to the Graduate Institute of Intellectual Property at the National Taipei University of Technology to present latest China trademark law updates and practices on February 23, 2023.