Quarterly China Trademark News Updates

January – March 2021

Starting January 2021, Beijing East IP will be collecting and presenting notable China trademark and anti-unfair competition news and updates every quarter. Our quarterly newsletter will be a selection of notable news from our weekly updates, including cases, laws, regulations, and our on-going trademark articles regarding suggested trademark practices in China.

1. Notable trademark and anti-unfair competition cases

a. Burberry obtained its first preliminary injunction order against Baneberry

Burberry Limited (“Burberry”) registered the following marks on clothing and related goods. Among them, Cited Mark 1 and Cited Mark 2 have been recognized as well-known marks multiple times.

Cited Mark 1	Cited Mark 2	Cited Mark 3	Cited Mark 4
BURBERRY

Xinboli Trading (Shanghai) Co., Ltd. (“Xinboli”) is the licensee of the following marks.

Licensed Mark 1	Licensed Mark 2
BANEBERRY

Xinboli have been using the Licensed Mark 1 and Licensed Mark 2 (“Licensed Marks”) and similar marks to Burberry’s Cited Mark 3 and Cited Mark 4 on goods that Burberry carried, including clothing styles, designs, hangtags, purses, and bags, as well as the respective goods’ shape. What is more, Xinboli used the royal arms of the United Kingdom (“Royal Arms”) to falsely promote its brand history and sources. Xinboli even opened its own brick and mortar shops or clearance shops in 2019. Xinboli quickly expanded its sales and extended its coverage. At the time Burberry filed for the preliminary injunction at the end of 2020, Xinboli had opened 40 brick and mortar stores in large shopping malls and outlets in first and second tier cities, almost outmatched Burberry’s brick and mortar stores in mainland China. Xinboli also opened its online stores on TMall.com, WeChat, Pingduoduo, and Little Red Book. Xinboli’s actions caused confusion among the relevant public. Burberry sued Xinboli for trademark infringement and unfair competition. After docketing its case, Burberry filed a petition for preliminary injunction against Xinboli.

On January 29, 2021, the Suzhou Intermediate Court held the preliminary injunction hearing. The court ordered Xinboli to immediately stop using the Licensed Marks and immediately stop manufacturing and sell products bearing similar marks to Burberry’s Cited Mark 3 and Cited Mark 4; and immediately stop using the Royal Arms logo on the hangtag of all its products and stop all false promotions.

b. “Louis Vuitton” was recognized as a well-known mark to counter an infringer who abused administrative proceedings to extend its time to attain unjustifiable profits

Louis Vuitton Malletier (“LV”) sued Guangzhou Ruiwang Leather Co., Ltd. (“Ruiwang”) and Rui Wang (together as the “Defendants”) for trademark infringement.

Cited Mark	Disputed Mark

LV filed invalidation request with the CNIPA against the Disputed Mark and the CNIPA invalidated the Disputed Mark during the trial of this trademark infringement case. Ruiwang was unsatisfied with the invalidation decision and appealed to the Beijing IP Court. Considering the Disputed Mark was still valid during the trial, the Defendants argued that this case shall not be docketed because this was not a trademark infringement case but an administrative dispute over trademark registrations.

The court applied Article 11 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Well-Known Mark Protection (“Interpretation”) in its findings and found that Ruiwang violated the well-known mark provisions stated in Article 13 of the Chinese Trademark Law and LV’s well-known trademark was copied and imitated. Ruiwang’s act constituted an infringement of LV’s trademark right. That is, the court recognized the Cited Mark as a well-known to grant additional protections to LV against Ruiwang’s infringing use of the Disputed Mark.

In this case, LV submitted sufficient evidence to prove that before the Disputed Mark’s application date, LV’s Cited Mark had achieved well-known status. The Disputed Mark’s use on handbags and purses were identical in nature to the Cited Mark’s approved goods of bags, backpack, handbags, fur, artificial leather, suitcase, etc. The Disputed Mark were also identical to the LV’s Cited Mark in terms of font style. Both marks’ design and overall appearance were also highly similar. The Disputed Mark constituted as a copy of the Cited Mark. Moreover, LV’s Cited Mark had been used in China for years and had achieved well-known status. Under such circumstances, the Disputed Mark’s use was likely to cause the relevant public to be confused as to the source of goods and associate the Disputed Mark with LV’s well-known mark, dilute LV’s market reputation and damage LV’s interests. The second instance court ruled in favor of LV and ordered a damage of RMB 500,000 (USD 76,800).

c. Fendi won against unauthorized use in an outlet shopping center

On March 4, 2021, the Shanghai High Court held that Shanghai Yilang International Trade Co., Ltd. (“Yilang”) and Capital Outlets (Kunshan) Commercial Development Co., Ltd. (“Capital”) infringed upon Fendi S.R.L.’s (“Fendi”) trademark right and amounted to unfair competition. Yilang and Capital were ordered to pay FENDI RMB 350,000 (USD 54,000) for economic loss and reasonable legal cost.

The court found that Yilang’s independent use of the mark “FENDI” on its signboard was intended to demonstrate itself as the business operator and management of the mark “FENDI,” which fell into the scope of protection of Fendi’s exclusive trademark right in Class 35 in connection with business operation and business management related services. Yilang’s conduct constituted as trademark infringement. Meanwhile, “Fendi,” as a trade name, had obtained certain fame on the market and was known by the public. Yilang’s independent use of the mark “FENDI” on its signboard without authorization constituted as using Fendi’s business name without authorization and amounted to unfair competition. As Yilang’s operation management, Capital shall be held jointly liable for aiding Yilang’s said trademark infringement and unfair competition for using the mark “FENDI” without authorization.

d. Michael Jordan finally got his name back! Qiao Dan Sports renamed to Zhong Qiao Sports

On December 30, 2020, eight years after Michael Jordan, the American professional basketball player, filed a name dispute against Qiao Dan Sports Co., Inc. (“Qiao Dan Sports”) and Shanghai Bai Ren Trade Co., Ltd. The Shanghai Second Intermediate Court ordered Qiao Dan Sports to publish clarifying statements regarding its relationship with Michael Jordan and issue a public apology. Specifically, the court ordered Qiao Dan Sports to stop using the “Qiao Dan in Chinese (“乔丹”)” part of its corporate name and its “Qiao Dan in Chinese (“乔丹”)” trademarks within 30 days of the effective date of this judgement. On January 12, 2021, Qiao Dan Sports was renamed to Zhong Qiao Sports Co., Ltd.

The court found Qiao Dan Sports knew of Michael Jordan’s fame but still registered or licensed the “Qiao Dan in Chinese (“乔丹”)” trademark, the “Qiao Dan in Chinese (“乔丹”) and Design (a baseball mannequin)” trademark, and the “Qiao Dan in Chinese (“乔丹”) and 23” trademark. And without authorization from Michael Jordan, Qiao Dan Sports used the “Qiao Dan in Chinese (“乔丹”)” mark that was identical with the Chinese translation of Michael Jordan’s last name in sporting goods industry as the distinctive part of its trade name. Further, Qiao Dan Sports promoted the “Qiao Dan in Chinese (“乔丹”)” brand through various media. These business activities were sufficient to confuse the public to associate Qiao Dan Sports with Michael Jordan. Qiao Dan Sports stepped on Michael Jordan’s influence in the sporting goods industry when entering the market to obtain more market opportunities and monetary interests. Accordingly, Qiao Dan Sports’ use of the “Qiao Dan in Chinese (“乔丹”)” mark shall be deemed as infringing upon Michael Jordan’s name right.

e. Paris Baguette in Chinese (巴黎贝甜) recognized as an unregistered well-known mark

Ai Si Bi Xi Investment Co., Ltd. (ASBX), the operator of the famous bakery “Paris Baguette” or “Paris Baguette in Chinese (巴黎贝甜)” sued Beijing Bali Beitian Enterprise Management Co., Ltd. (“Beijing Beitian”) in the Beijing Intellectual Property Court for infringing its unregistered well-known mark right by registering numerous “Ba Li Bei Tian in Chinese (芭黎贝甜)” marks and promoting the marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” on Beijing Beitian’s website.

Cited Mark	Disputed Mark

The court found that ASBX’s evidence supported its petition to recognize the marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” reached well-known status among relevant consumers as unregistered well-known marks. Beijing Beitian used “Paris Baguette in Chinese (巴黎贝甜)” prominently on its WeChat public account and website caused relevant public associated “Paris Baguette in Chinese (巴黎贝甜)” with Beijing Beitian. Such use was sufficient to mistake the source of services and infringed upon ASBX’s interests on the unregistered well-known marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜).” Meanwhile, ASBX’s unregistered marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” had relative high fame when Beijing Beitian was established. Under such circumstance, Beijing Beitian’s registration and use of the mark “Ba Li Bei Tian in Chinese (芭黎贝甜),” that was highly similar to the unregistered mark “Ba Li Bei Tian in Chinese (巴黎贝甜),” as its trade name was likely to cause confusion among the relevant public and violated the Chinese Anti-unfair Competition Law. The court ordered Beijing Beitian to immediately stop any infringing activities and pay damages and reasonable legal costs of RMB 1.5 million (USD 231,600).

f. Amazon was hammered with RMB 76.4 million (USD 11.8 million) in damages

Beijing Yanhuang Yingdong Technology Development Co., Ltd. (“Yanhuang”) sued Amazon.com, Inc.’s Chinese subsidiary, Amazon Connect Technology Services (Beijing) Co., Ltd. and a Chinese data center and cloud technology provider, Beijing Sinnet Technology Co., Ltd. (“Sinnet”) (together as the “Defendants”) before the Beijing High Court for infringing its registered trademark “AWS.” The court held that the Defendants were jointly liable for trademark infringement. The Defendants shall immediately stop using the “AWS” mark, pay Yanhunag RMB 76.4 million (USD 11.8 million) for economic loss, reasonable legal costs of RMB 260,000 (USD 40,000), and publish a public statement to eliminate any impact caused by its infringements.

Parts of Disputed Marks	Cited Marks

 g. Ferrero received RMB700,000 (USD108,000) in damages for Kinder Surprise Egg packaging decorations infringement

Soremartec SA, Ferrero SpA., and Ferrero Trading (Shanghai) Co., Ltd. (“Ferrero”) sued Chaozhou City Chaoya Distrct Yaliwen Food Factory (“Yaliwen”) for trademark infringement and anti-unfair competition claiming RMB 1 million (USD 154,750) in damages.

Kinder Surprise Egg	Infringing goods

The second instance court held that Yaliwen’s infringing products were similar to Ferrero’s registered trademarks and were used on identical goods, which were likely to cause confusion to the relevant public and infringed upon Ferrero’s trademark rights. The overall appearance of the infringing products was similar to Kinder Surprise Egg’ packaging and decoration, which was likely to cause confusion to the relevant public on the source of goods and amounted to unfair competition.

h. The “Supreme” mark squatter was fined for RMB 8.5 million (USD 1.3 million)

Chapter 4 Corp. (“Chapter 4”), owner of the famous “Supreme” skateboard and streetwear brand, filed an unfair competition lawsuit against Shanghai Jiao She International Trade Co., Ltd. and its retailing partner Zhejiang Outlet Plaza Co., Ltd. (“Defendants”). The Zhejiang Intermediate Court found that Chapter 4’s “Supreme” brand had collaborated with Louis Vuitton, Nike, and Lacoste in China. With other facts found by the CNIPA, the court held that the “Supreme” mark has obtained certain influence and shall be protected under the Anti-unfair Competition Law. Defendants were ordered to immediately stop infringing activities, publish clarifying statements, eliminate negative impacts on the “Supreme” mark, and pay RMB 8.5 million (USD 1.3 million) to Chapter 4 for economic loss and reasonable costs.

i. Wyeth LLC won RMB 30.55 million in punitive damages against infringing trademarks

On December 25, 2020, the Zhejiang Intermediate Court held that Guangzhou Hui Shi Co., Ltd., Zeying CHEN, and Xiaoshen GUANG (together as the “Guangzhou Hui Shi”) jointly infringed upon Wyeth LLC.’s “Hu Shi in Chinese (惠氏)” and “Wyeth” trademark rights. Considering Guangzhou Hui Shi’s obvious subjective bad faith, the court ordered treble punitive damages according to the China Trademark Law along with reasonable costs for RMB 30.55 million (USD 4.7 million).

2. Notable trademark laws, regulations, and news updates

a. The CNIPA published 2020 Annual Trademark Statistics

In 2020, 5.76 million marks were registered from applicants worldwide. Although 2020 was hit by the pandemic, domestic applicants managed to file 7,553 trademark applications under the Madrid Protocol before the CNIPA.With a striking 64.7% year-on-year growth, the CNIPA closed 149,000 trademark oppositions. Among them, 55,079 cases were allowed for registration, 38,988 cases were refused for registration, and 9,176 cases were partially allowed for registration.

358,000 other trademark adjudication cases (including rejection appeals, registration refusal appeals, invalidation actions, non-use cancellation appeals, etc.) were closed, achieving a 7.8% year-on-year growth. Among them, the success rate for refusal appeal was 33.2%, the success rate for invalidation was 70.4%.

The average trademark examination time had been shortened to 4 months.

b. The Supreme People’s Court issued judicial interpretations regarding intellectual property punitive damages and typical cases for guidance

On March 3, 2021, the Supreme People’s Court (“SPC”) issued the Interpretation of The Supreme People’s Court on the Application of Punitive Damages in Adjudicating Infringement of Civil Intellectual Property Infringement Cases (“Interpretation”). The Interpretation stipulated the scope of the application of punitive damages, defined the terms “intentional infringement” and “serious circumstances,” and provided methods for calculating base and reasonable multiples of punitive damages. The Interpretation is aimed at guiding lower courts on application of punitive damages aimed at punishing serious intellectual property infringement conducts.

To better guide the lower courts in applying the Interpretation, the SPC released the Typical Cases of Punitive Damages in Intellectual Property Infringement to ensure proper implementation of the Interpretation.

c. China National Intellectual Property Administration initiates special action against bad faith filings

On March 15, 2021, the CNIPA issued the Special Action Plan for Cracking Down on Malicious Preemptive Trademark Registration (“Action Plan”) , and it specifically aims to crack down on trademark squatting, seeking unjustified interests, disrupting trademark registration management order, and actions causing significant adverse social impact. Some of the noticeable focal points in the Action Plan for foreign trademark owners are to crack down on “squatting relatively famous public figure’s name, famous works or character name” and “squatting relatively famous or inherently distinctive trademark or other commercial marks, damage other’s prior rights.”

3. Suggested Trademark Practices Series – Well-Known Mark Recognitions in China

Securing well-known mark (WKM) recognitions in China can help brand owners to block bad faith trademark filings from registration and invalidate or cancel trademarks registered in bad faith. Securing WKM recognitions in China can also help in trademark infringements and unfair competitions lawsuits because WKM recognitions can be used as legal basis for granting protection on dissimilar goods. In this series, we will share our insights on how to secure WKM recognitions in China. In Part I, we shared WKM recognitions benefits, principles, and evidence collection. In Part II and III, we shared cases with insightful analysis on how the courts apply well-known mark recognitions to various facts. 

1. Well-Known Mark Recognition in China Part I
2. Well-Known Mark Recognition in China Part II
3. Well-Known Mark Recognition in China Part III
4. Well-Known Mark Recognition in China Part IV

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

Well-Known Mark Recognitions in China – Part IV

by Yan Zhang, Feifei Bian & Austin Chang

In Part III of this series, we selected our representative cases to further illustrate how the courts apply well-known mark recognition and extend the scope of protection for a well-known mark. In Part IV, the finale of our well-known mark recognition in China, we would like to share with you our insights on how to collect evidence for well-known mark recognition for goods and service in the software and internet industry. Collecting evidence for intangible items is already demanding. Collecting evidence for intangible items for well-known recognition is even more challenging but possible.

1. “PHOTOSHOP” v. “photoshop”

Beijing Liantuochuangxiang Technology Development Co., Ltd. (“Liantuo”) applied for the “photoshop” mark (“Disputed Mark”) with App. No. 9329485 in Class 3 for “lipstick; nail polish; cosmetics; cosmetic pens; eyebrow cosmetics; perfume; eyebrow pencil; rouge; eye shadow cream; dyed lash oil” on April 12, 2011.

Disputed Mark	Cited Mark

Adobe owns a prior registration for the “PHOTOSHOP” mark (“Cited Mark”) with App. No. 573256 in Class 9 for “computer program.”

Adobe filed an opposition against the Disputed Mark on April 20, 2012 before the CNIPA. The CNIPA rendered a decision allowing the Disputed Mark to be registered. Unsatisfied, Adobe appealed but the CNIPA affirmed the Disputed Mark’s registration. Adobe filed an administrative appeal against the CNIPA before the Beijing First Intermediate Court. The court rejected Adobe’s appeal against the CNIPA. Adobe appealed to the Beijing High Court which, finally, ruled in favor of Adobe and ordered the CNIPA to reissue its decision.

In this case, the Beijing High Court found that Adobe submitted sufficient evidence in proving the Cited Mark enjoyed high fame through long-term and extensive promotion and use. For example, thousands of media reports from the People’s Daily, Guanming Daily, China Computer News, Computer World, etc. were submitted as evidence proving the Cited Mark enjoyed high fame. Adobe also submitted the various awards “PHOTOSHOP” received, such as “Computer World’s Annual Product Award” and “Milestone Product of China Information Industry 20 Years Award.” Adobe provided records of its annual certificate examination for “National Computer Application Technical Certificate for Photoshop 6.0” since 2001, as well as the number of “PHOTOSHOP” downloads from the Internet. Given the above, the court held that Adobe’s evidence met the criteria to recognize the “PHOTOSHOP” mark as a well-known mark.

Considering that the Cited Mark had strong inherent distinctiveness and the Disputed Mark was identical to the Cited Mark, the court found that the Disputed Mark was a copy of the Cited Mark. Although the Disputed Mark’s designated goods for “lipstick” had certain variance with the Cited Mark’s approved goods for “computer program,” the relevant consumers for the two marks would still overlap. After comprehensively considering the above analysis, namely, the Cited Mark had inherent distinctiveness, enjoyed high fame, the two marks were identical, the court concluded that the Disputed Mark’s designated goods for “lipstick” was likely to weaken the close association between the Cited Mark and its approved goods for “computer program,” dilute the Cited Mark’s distinctiveness, and damage Adobe’s interests.

2. “Mei Tu Xiu Xiu and MEITUXIUXIU” v. “Mei Tu Xiu Xiu”

An individual Rongxiong BEI applied for the “Mei Tu Xiu Xiu and MEITUXIUXIU” mark (“Disputed Mark”) on April 19, 2013 with App. No. 12454059 in Class 3 for “detergent; grinding paste; rose oil; toothpaste; dried petal and perfume mixture (perfume); animal cosmetics; air fragrance; cosmetics; shampoo; shoe polish,” and the Disputed Mark was approved for registration on September 28, 2014.

Disputed Mark	Cited Mark

Xiamen Meitu Technology Co. (“Meitu”) applied for the “Mei Tu Xiu Xiu” mark (“Cited Mark”) on December 8, 2008 with App. No. 7099841 in Class 9 for “optical disk; information processor (central processing unit); computer software (recorded); electronic dictionary; recorded computer program (program); computer; computer program (downloadable software); network communication equipment; electronic sound device with books; magnetic data medium,” and was approved for registration on October 14, 2010.

Meitu filed an invalidation against the Disputed Mark with the CNIPA on July 24, 2015. Upon adjudication, the CNIPA held that the Disputed Mark shall be invalidated. BEI appealed to the Beijing IP Court. The Beijing IP Court rejected BEI’s appeal. BEI then appealed to the Beijing High Court. The Beijing High Court affirmed the CNIPA’s decision and ruled in favor of Meitu. BEI, still unsatisfied, petitioned to the Supreme People’s Court for retrial but the petition was rejected.

In its decision, the Beijing High Court found that prior to the Disputed Mark’s application date, the Cited Mark had occupied a rather large market share and covered wide range of regions for sales through long-term, extensive, and continued promotion and use on its approved goods for “computer software (recorded), recorded computer program (program), computer, etc.” The Cited Mark constituted as a well-known mark because it had been known to the relevant public and enjoyed high fame.

The court reasoned the Cited Mark consisted of four Chinese characters “Mei Tu Xiu Xiu” that did not have particular meaning and had inherent distinctiveness. The Disputed Mark was a copy and imitation of the Cited Mark because the Disputed Mark’s distinctive part was identical with the Cited Mark. Although the two marks designated goods in difference classes, the relevant consumers and target consumers overlapped. Considering the Cited Mark was a well-known mark and that the Disputed Mark’s distinctive part was identical to the Cited Mark, the relevant consumers were likely to be confused regarding the relationship between the two marks when purchasing the Disputed Mark’s designated goods. Such confusion would weaken the Cited Mark’s distinctiveness, unfairly exploit the Cited Mark’s market reputation, and damage the Cited Mark and Meitu’s interests.

3. Beijing East IP analysis and comments

As you may have reckoned, the photoshop and Mei Tu Xiu Xiu cases shared some similarity in that the courts recognized both cited marks as well-known marks on computer program related goods and gave cross-class protection against lipsticks and cosmetic related goods. The two focal points in these two cases are: 1) evidence collection for obtaining well-known mark recognition in connection with software application related goods, and 2) the association between disputed mark’s designated goods or services and cited mark’s approved goods or services.

a. Evidence collection for obtaining well-known mark recognition mark designating software related goods

It is important to note not to apply Article 14 of the Chinese Trademark Law verbatim when collecting evidence for well-known mark recognition. Instead, consider utilizing relevant public’s understanding and recognitions on the marks and the goods involved. In the photoshop case, we supplemented large amount of evidence in the second instance trial to prove that the cited mark had reached well-known status prior to the disputed mark’s application date, including media reports, awards, rankings, sales records, Chinese brochures, China subsidiaries information, China and worldwide judicial and administrative adjudications, to name a few. Since Photoshop is a software, we particularly emphasized Photoshop’s versions, downloads, and user numbers, as well as other facts reflecting that Photoshop is now included in national certificate examinations, included as part of national computer examination, and used as teaching materials. We argued that Photoshop can be considered as well-known because it is included in the national computer application certificate examination and numerous people had taken such exam. Compared to foreign entities, domestic entities such as Meitu tend to have the up hand in collecting evidence originated from China. However, it is more challenging for internet companies than traditional companies collecting evidence for well-known mark recognitions considering the evidence are often intangible. When collecting evidence for Meitu’s cited mark, we collected large amount of use evidence, number of users, product sales records, promotional and advertisement records, and awards received to prove that the cited mark satisfied the well-known mark recognition threshold. For example, for use evidence, evidence of earliest use and software product update records were presented. For product sales records, revenue, profit, tax, sales agreements, collaborators, and regions that products bearing the cited mark covered were presented. Other evidence such as commercial and promotional agreements, fees, media reports, and the actual awards received were submitted as evidence proving the cited mark has reached well-known status. The second instance court found that although Meitu’s profit between 2010 and 2013 was relatively low, profit was merely one of the many factors in determining the cited mark’s well-known status and fame. When determining whether a mark reached well-known status, the focus should be laid on the distinctiveness and well-known status of the cited mark on the approved goods, as well as the internet industry’s operation features, namely, software development and market promotion related investment would likely exceed profit at the beginning.

b. The association between disputed mark’s designated goods or services and cited mark’s approved goods or services

Often, it is difficult to prove the association between disputed mark’s designated goods or services and cited mark’s approved goods or services, especially when these goods or services are in different classes. For example, in the photoshop case, we submitted online media reporting that the approved goods, software, for Adobe’s “PHOTOSHOP” mark can provide various beautify functions and use visual aids during trial to detail how the relevant public use cosmetics prior to taking photos, and subsequently edit photos using the PHOTOSHOP software for beautify purposes to create better photos or pictures presentations. We argued that the disputed mark’s designated goods for “cosmetics” and the cited mark’s approved goods for “software” all carried the functions of beautify human’s faces or images. Thus, the target consumers overlapped and are closely related. Combining the above evidence with the “PHOTOSHOP” mark’s distinctiveness and fame, we further argued that the disputed mark’s registration and use would weaken the one-to-one and unique association between Photoshop and Adobe, dilute the distinctiveness of the well-known “PHOTOSHOP” mark, and damage Adobe’s interests.

Thank you for tuning in to our well-known mark recognition series. If you have any questions, please feel free to contact us.

Next, we will share our experience and insights regarding bad faith trademark registration and how to counter trademark squatting. We selected this topic because China’s first-to-file system can be difficult to navigate for foreign stakeholders who may not always have the need to apply for trademarks in China when they first start their businesses outside of China.

Follow us and stay tuned!

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

Well-Known Mark Recognitions in China – Part III

by Yan Zhang, Feifei Bian & Austin Chang

In Part II of this series, we shared our representative cases on how to apply the concept of anti-dilution for the protection of a well-known trademark in administrative trademark litigations. In Part III, we selected our representative cases to further illustrate how the courts apply well-known mark recognition and extend the scope of protection for a well-known mark.

1. RITZ-CARLTON v. “LI SI KA ER DUN in Chinese”

Chengdu Zhi Zhi Real Estate Development Co., Ltd. (“Zhi Zhi”) applied for the “LI SI KA ER DUN in Chinese (丽思卡尔顿)” mark (“Disputed Mark”) with App. No. 5336988 in Class 36 for “commercial housing sales services; insurance; capital investment; art valuation; real estate agency; agency; guarantee; raise charitable funds; entrusted management; pawn shop” on May 9, 2006. The Disputed Mark was approved for registration on October 14, 2009.

Disputed Mark	Cited Mark 1	Cited Mark 2

Ritz-Carlton owns prior registrations for the “RITZ-CARLTON” mark (“Cited Mark 1”)  and the “LI SI KA ER DUN in Chinese (丽思卡尔顿)” mark (“Cited Mark 2”) in Class 42 (Class 43) for “hotels; restaurants; barbeque restaurants; tea rooms; etc.”

Ritz-Carlton filed a dispute cancellation against the Disputed Mark on March 28, 2010 before the CNIPA (then the Trademark Review and Adjudication Board). The CNIPA issued a decision that maintained the Disputed Mark’s validity on August 29, 2011. Unsatisfied, Ritz-Carlton appealed to the Beijing First Intermediate Court.

On December 20, 2012, the Beijing First Intermediate Court reversed the CNIPA’s decision. Zhi Zhi was unsatisfied and appealed to the Beijing High Court. On July 31, 2013, the Beijing High Court, as the second instance court, issued the final decision that affirmed the Beijing First Intermediate Court’s decision against Zhi Zhi.

In this case, the Beijing High Court found that the Disputed Mark consisted of “LI SI KA ER DUN in Chinese (丽思卡尔顿)” and before the Disputed Mark’s application date, media and the Internet had widely adapted and used “LI SI KA ER DUN in Chinese (丽思卡尔顿)” to refer to RITZ-CARLTON. Ritz-Carlton submitted sufficient evidence during the administrative and judicial proceedings to prove that they had received great businesses in the hotel industry, received numerous awards, and attracted high levels of media’s attention before the Disputed Mark’s application date. Namely, before the Disputed Mark’s application date, “LI SI KA ER DUN in Chinese (丽思卡尔顿)” could often be seen on various newspapers and the Internet, and such constant media reports subjectively expanded the societal influence of the “LI SI KA ER DUN in Chinese (丽思卡尔顿)” brand, allowed Ritz-Carlton to enjoy high fame among the relevant public in China. Thus, the Disputed Mark constituted as a translation of “RITZ-CARLTON.” Consider the “RITZ-CARLTON” mark obtained relative high fame on hotel related services through uses and promotions, and the Disputed Mark’s approved services for “sales services for commercial real estate and real estate agency” were related to the hotel services, the Disputed Mark’s registration was likely to cause confusion to the public and damage Ritz-Carlton’s interests. The Beijing First Intermediate Court correctly recognized the “RITZ-CARLTON” mark as a well-known mark, based on the evidence submitted, to protect Ritz-Carlton’s trademark rights according to Article 13(2) of the 2001 Chinese Trademark Law (“TM Law”)  (Article 13(3) of the 2019 TM Law).

2. “YAHOO!” v. “YahaoSoft”

Beijing Jing San Pu Business Trading Co., Ltd. (“Jing San Pu”) applied for the “YaohaoSoft” mark (“Disputed Mark”) with App. No. 3610948 in Class 42 for “intellectual property supervision; computer leasing; computer programming; computer software coding; computer software maintenance; creation and maintenance of websites for others; hosting computer stations (websites); computer hardware consulting” on June 30, 2003. The Disputed Mark was published for opposition on May 28, 2005.

Disputed Mark	Cited Mark

Yahoo! owns prior registrations for the “YAHOO!” mark (“Cited Mark”) in Class 42 for “computer service; namely: to query and retrieve the information used on the computer network.”

Yahoo! filed an opposition against the Disputed Mark with the CNIPA on December 1, 2009 and the CNIPA refused the Disputed Mark for registration. Jing San Pu appealed to the Beijing First Intermediate Court. Yahoo! attended the hearing as a third-party attendee. The Beijing First Intermediate Court affirmed the CNIPA’s decision.

In its decision, the Beijing First Intermediate court found that except intellectual property supervision, all other services such as computer leasing, computer programming, etc. were similar to the Cited Mark’s approved services “computer service; namely: to query and retrieve the information used on the computer network.” The “Soft” of the “YahaoSoft” can be understood meaning “software” when used on computer related services, which had weak distinctiveness, and the “Yahao” part was the distinctive part of the Disputed Mark. When compared the Disputed Mark’s distinctive part “Yahao” with the Cited Mark “YAHOO!,” it was obvious that the font and pronunciation were similar. If both marks were to co-exist on identical or similar services, it was likely to cause relevant consumer to be confused or mistaken on the source of services. Thus, the Disputed Mark constituted a similar mark with the Cited Mark according to Article 28 of the 2001 TM Law (Article 30 of the 2019 TM Law).

Yahoo! submitted sufficient evidence during the administrative proceeding to prove that Yahoo! had been using its English trade name “YAHOO!” for computer network related services prior to the Disputed Mark’s application date. Yahoo!’s trade name had attracted market reputation from the relevant public through use. There were strong associations between the computer network related services provided by Yahoo! and the Disputed Mark’s designated services of computer leasing, computer software coding, etc. Accordingly, when the Disputed Mark was registered on the said designated services, the relevant public was likely to be confused as to the source of services and Yahoo’s prior trade name right would be damaged according to Article 31 of the 2001 TM Law (Article 32 of the 2019 TM Law).

The evidence Yahoo! submitted during the administrative proceeding proved it had attracted market reputation before the Disputed Mark’s application date on computer related services, namely, to query and retrieve the information used on the computer network. Combined with the fact that the Disputed Mark’s main distinguishable part was similar to the Cited Mark in font and pronunciation, which constituted as the Cited Mark’s imitation. Although the intellectual property supervision services designated under the Disputed Mark was not similar to the computer services designated under the Cited Mark, given that the Cited Mark had reached well-known status, the Disputed Mark’s use on the said services would likely to cause the relevant public to mistaken that the Disputed Mark had certain association with the Cited Mark, and potentially damage the Cited Mark owner’s interests according to Article 13(2)of the 2001 TM Law (Article 13(3) of the 2019 TM Law).

3. Beijing East IP analysis and comments

In Part I of this series we mentioned that a mark can be recognized as well-known based on the principles of case-by-case recognition and need-based recognition. The main issue presented in the two cases is when and how to apply well-known mark recognition in each case.

First, in the RITZ-CARLTON case, Ritz-Carlton based its grounds on Article 10(1)(viii), Article 13(2), Article 31, and Article 41(1) of the 2001 TM Law. The court found that the Disputed Mark’s registration does not fall into the conditions described in Article 10(1)(viii), Article 31, Article 41(1). The court only applied Article 13(2) in finding that Zhi Zhi’s trademark registration in Class 36 would damage Ritz-Carlton’s well-known mark in Class 42 (Class 43). Here, although Ritz-Carlton based its grounds on four different articles, the court held that the articles other than Article 13(2) did not apply, and that it was necessary to recognize the cited mark as a well-known mark to protect Ritz-Carlton’s trademark rights.

In the YAHOO! case, Yahoo! based its grounds on Article 13(2), Article 28, and Article 31 of the 2001 TM Law. The court applied Article 28 in finding that the Disputed Mark constituted as a similar mark to the Cited Mark when used on similar services. The court also applied Article 31 in finding that the Disputed Mark’s registration on services similar to those services approved under the Cited Mark would damage Yahoo!’s prior trade name right. Here, since the court had applied Article 28 and Article 31 in protecting Yahoo!’s rights against the designated services on computer related services under the Disputed Mark, the court did not apply Article 13(2) for cross-class protection regarding the computer related services. The court’s application of laws clearly demonstrated that when the interest party’s rights can be protected by certain articles raised in its argument, the court will not apply the article regarding well-known mark recognition.

Second, although well-known mark recognition provides cross-class protection, such protection only extends to the relevant goods or services covered by the level of the mark’s well-known status, that is, the cross-class protection does not extend to all 45 classes. In the RITZ-CARLTON case, the court recognized the “RITZ-CARLTON” mark was well-known in hotels services. The Disputed Mark’s approved goods on commercial housing sales services and real estate agency services were related to hotels services. Based on this finding, the court concluded that the Disputed Mark’s registration on the said services would be likely to cause confusion to the relevant public and damage Ritz-Carlton’s interests. The court, however, did not grant protection against other services (insurance; capital investment; art valuation; agency; guarantee; raise charitable funds; entrusted management; pawn shop) under the Disputed Mark. In the YAHOO! case, the court granted cross-class protection on the intellectual property supervision service based on Yahoo!’s arguments that, in the Internet industry, intellectual property supervision was closely related to Yahoo!’s well-known search engine related services and serves similar consumers.

Finally, the evidence we submitted on behalf of our clients during the administrative litigation proceedings was key in obtaining the well-known mark recognition. Generally, courts do not always admit new evidence in administrative litigation. In the RITZ-CARLTON case, the CNIPA and the courts have different views as to whether the “RITZ-CARLTON” mark could be recognized as a well-known mark. The difference lies in the admissibility of the large amount of new evidence submitted during the court proceeding. We collected and submitted copies of various evidence found through the National Library, the Shanghai Library, the China Tourism News, the People’s Daily, Xinhua Net, CNKI and other media as corroborative evidence. Meanwhile, we further submitted the notarized documents as corroborative evidence to satisfy the formality requirement. The courts affirmed that the new evidence is to strengthen the evidence submitted during the CNIPA proceeding, in which Ritz-Carlton submitted substantial evidence to support its arguments. If not admitted, Ritz-Carlton’s rights would be severely damaged. Especially under the circumstance that when comprehensively consider all evidence submitted, the cited mark can be recognized as a well-known mark, not admitting the supplemental evidence would be unjustified.

As you may have guessed, evidence collection is an important phase in obtaining well-known mark recognition. Next, we will share different cases to further elaborate how to best collect evidence for a well-known mark.

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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

Well-Known Mark Recognitions in China – Part II

by Yan Zhang, Feifei Bian & Austin Chang

Previously, we shared our insights on how to secure well-known mark recognitions in China and its benefits. In the next few articles, we will be sharing cases with analysis on how the courts apply well-known mark recognitions to various facts.

1. “Cisco in Chinese” v. “SIKE and SI KE in Chinese”

Foshan City Shunde District Lunjiao Junze Electrical Appliance Factory (“Lunjiao”) applied for the Disputed Mark No. 13618667 on November 27, 2013 and was approved for registration on November 28, 2016 in Class 11 for “electric cooker; electric kettle; electric water heater; electric yogurt maker; electric pressure cooker (pressure cooker); gas stove; gas water heater.” Cisco applied for the Cited Mark No. 3999024 on April 6, 2004 and was approved for registration on September 7, 2006 in Class 9 for “network communication equipment; telephone; etc.”

Disputed Mark	Cited Mark

Cisco filed an invalidation request on February 27, 2017 before the CNIPA. The CNIPA affirmed the Disputed Mark’s validity. Cisco appealed the decision to the Beijing IP Court. On May 24, 2019, the Beijing IP Court reversed the CNIPA’s decision and ordered the CNIPA to re-render its decision based on the Beijing IP Court’s decision.

In its decision, the Beijing IP Court found that the evidence submitted by Cisco is sufficient to prove the well-known mark status of “CISCO in Chinese (思科)” on “network communication equipment” in Class 9 prior to the application date of the Disputed Mark. Further, the Beijing IP Court found that the Disputed Mark’s specific composition combining “SIKE” and “SI KE in Chinese (思科)” copied and imitated Cisco’s well-known mark. The Disputed Mark’s approved goods for “electric cooker; electric water heater; etc.” were common household consumer goods that were likely to attract relevant consumers who were attracted to the Cited Mark’s approved goods. Meanwhile, Lunjiao failed to provide reasonable explanations regarding the idea that shaped the Disputed Mark’s creation. Cisco’s evidence also showed that in addition to the Disputed Mark, Lunjiao applied for six other trademarks, one identical to the Disputed Mark and five “3M” marks, which inevitably suggested the likelihood of Lunjiao’s bad faith intention in free riding other’s goodwill. Similarly, the Disputed Mark’s relevant consumers were likely to associate Cisco’s well-known mark “Cisco in Chinese (思科)” upon seeing the identical Chinese characters used in the Disputed Mark. The Disputed Mark may also dilute the well-established corresponding relationship between Cisco and its well-known mark “Cisco in Chinese (思科),” impaire the distinctiveness of Cisco’s well-known mark, and damage Cisco’s well-known trademark rights.

2. “McFlurry in Chinese” v. “MAI XUAN FENG in Chinese”

China Top Foods Co., Limited (“Top Foods”) applied for the Disputed Mark No. 12049136 on January 15, 2013 and was approved for registration on November 28, 2015 in Class 35 for “advertisement promotion; advertising design; commercial management of franchising; marketing for others; personnel management consulting; business enterprise migration; compiling information into computer databases; accounting; vending machine rental; seeking sponsorship.” McDonald’s applied for the Cited Mark 1 No. 1646857 in Class 29 for “meat products; pork products” and Cited Mark 2 No. 8666342 in Class 30 for “ice cream, etc.” prior to the Disputed Mark’s application date.

Disputed Mark	Cited Mark 1	Cited Mark 2

McDonald’s filed an invalidation request on August 19, 2016 before the CNIPA. The CNIPA affirmed the Disputed Mark’s validity. McDonald’s appealed the decision to the Beijing IP Court. On August 1, 2019 the Beijing IP Court reversed the CNIPA’s decision and ordered the CNIPA to re-render its decision based on the Beijing IP Court’s decision.

In its decision, the Beijing IP Court found that the Cited Mark 1 and Cited Mark 2 (“Cited Marks”) could be recognized as well-known marks based on the evidence McDonald’s submitted. The evidence showed that prior to the Disputed Mark’s application date, McDonald’s carried out long-term, extensive, and numerous promotions for the Cited Marks “McFlurry in Chinese (麦旋风)” on milk products, ice cream, etc. in mainland China. The Chinese characters used in the Disputed Mark were identical to the Cited Mark 2. The only undiscernible difference between the Disputed Mark and the Cited Mark 1 was that the Disputed Mark used traditional Chinese and the Cited Mark 1 used simplified Chinese. Based on foregoing reasons, the Disputed Mark copied the Cited Marks. Moreover, because the Cited Marks had strong distinctiveness with high fame, even if the approved services “advertisement promotion, etc.” under the Disputed Mark were unrelated to the approved goods “milk” and “ice cream” under the Cited Marks, the relevant consumer would inevitably associate McDonald’s and its well-known marks upon seeing the Disputed Mark. Such association would damage the well-established correspondence between McDonald’s and the Cited Marks, decrease the distinctiveness of McDonald’s well-known mark, and damage McDonald’s interests.

3. Beijing East IP analysis and comments

The standard applied for well-known mark protection can be found in Article 9(2) of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving Well-Known Trademark Protection (“SPC Interpretation”) which states that associations that are capable of confusing the relevant public to believe that the accused trademark has a considerable degree of association with a well-known mark, thereby weakening the distinctiveness of that well-known mark, derogating the market reputation of that well-known mark, or improperly using the market reputation of that well-known mark. This standard shall be consistently applied across administrative and civil trademark litigations. The SPC Interpretation established that, instead of likelihood of confusion, courts shall focus on impairing a well-known mark’s distinctiveness, harming a well-known mark’s reputation, or improperly using a well-known mark’s market reputation when finding damage for a well-known mark. Such approach is aimed at protecting a well-known mark’s distinctiveness from impairment and preventing harm from the one-to-one association established between a well-known mark and its particular goods and services.

In judicial practice, when determining the scope of protection for a well-known mark, courts should comprehensively consider the well-known mark’s distinctiveness, fame, similarity between the marks, actual use of the approved goods, degree of overlapped relevant consumers and their attentions, and the subjective state of mind of the disputed mark’s applicant.

The Cisco and the McFlurry cases reflect how well-known mark protection extends the scope of protection in administrative trademark litigations to not only eliminate potential likelihood of confusion but also prevent well-known mark from dilution.

In this Cisco case, the disputed mark’s approved goods “electric stove; electric water heater, etc.” are common consumer goods that face a wide range of relevant public, which overlaps with the targeted consumer of Cisco’s approved goods “network communication equipment.” Considering Cisco’s cited mark “CISCO in Chinese (思科)” has strong distinctiveness and has established a close association with Cisco through long-term promotion and use. In recognizing Cisco’s cited mark as a well-known mark and granting cross-class protection, the court considered whether the disputed mark would break the one-to-one association and the well-established connection between Cisco’s famous network communication equipment and its cited mark, and whether the disputed mark would impair the cited mark’s distinctiveness. Similarly, in the McFlurry case, although the approved goods “advertisement promotion” for the disputed mark are not necessarily related to the approved goods “milk” and “ice cream” for the cited mark, the court applied the dilution principle when recognizing McDonald’s cited marks as well-known because of its relative high fame and granted the cited marks with additional protections. In other words, the scope of protection of a well-known mark shall match its degree of fame, namely, potentially expand its scope of protection.

Moreover, the subjective state of mind of the disputed mark’s applicant is also an important factor. In the Cisco case, Lunjiao failed to provide reasonable sources of its idea in creating the disputed mark. Together with the five “3M” marks Lunjiao applied, its bad faith in free riding other’s fame can hardly be ignored. In the McFlurry case, Top Foods applied “M MACCAS” marks in many Classes and its only shareholder applied for “Man Ji in Chinese (满记) (A famous desserts shop from Hong Kong),” “HILTON,” “Xin Zhou Kan in Chinese (新周刊) (A famous magazine in China), etc.” These trademark filings suggest bad faith in copying and imitating other’s highly famous trademarks.

Finally, when considering whether a mark shall be recognized as well-known, judicial and administrative authorities usually refer to Article 14 of the Trademark Law. Additionally, financial statistics are proven to be important supporting evidence for well-known mark recognition such as sales numbers, tax, audit report, etc. Foreign entities, however, may have difficulties in providing such information as supporting evidence. In helping our clients tackle such a challenge, we devote crucial time and efforts to find evidence from all angles and connect each piece of evidence found into a complete evidence chain. In building such evidence chain, we strive to find essential data and locate critical evidence five years prior to the disputed mark’s application date. Under the circumstances that the clients were unable to provide its sales number and market share data in China directly to us, we parsed through targeted online and offline media that reported the sales number and market share data in China, combining with rankings from authoritative magazines such as Fortune and Businessweek, published annual reports, and awards received to persuade the courts to recognize the well-known mark.

Next, we will continue to share different cases to showcase how well-known mark protection is done in China.

Follow us and stay tuned!

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

Securing well-known mark (WKM) recognitions in China can give a broader protection to brand owners in both administrative and judicial disputes.

Top 10 Trademark Agencies in Administrative Litigation 

On January 8, 2021, Zhichanli Network Technology Co., Ltd., China’s top intellectual property media platform, published the Top 10 China Intellectual Property Agencies Rankings. Beijing East IP was ranked in the Top 10 Trademark Agencies in Administrative Litigation for the following two cases. 

Case 1 – Lonely Planet is not so lonely

In February 2018, the well-known travel guides publisher Lonely Planet filed several invalidation actions against the marks “Gu Du Xing Qiu in Chinese (孤独星球)” and “Lonely Planet and Gu Du Xing Xing in Chinese (孤独行星)” in Classes 35, 41, and 42 filed by Guangxi Periodical Media Group Co., Ltd. (GPMG). The China National Intellectual Property Administration (“CNIPA”) upheld the Disputed Mark’s validity, however, through Beijing East IP’s representation, the Beijing Intellectual Property (“IP”) Court and the Beijing High Court overruled the CNIPA’s decisions and ruled in favor of Lonely Planet.

Lonely Planet’s Marks

Disputed Marks

In its decision for Class 41, the Beijing IP Court first examined whether the Disputed Marks violated Article 30 of the Trademark Law of China that allows the CNIPA to reject a trademark application identical with or similar to others’ prior trademark in respect of identical or similar goods. The Beijing IP Court concluded that the Disputed Marks were remarkably similar to Lonely Planet’s Marks. Although the Disputed Mark has approved services in Class 41 for “publication of books; publication of electronic books and journals on-line; providing on-line electronic publications (not downloadable),” the court found these services were closely related to the goods “books; printed publications; magazines [periodicals]” approved for Lonely Planet’s prior marks in Class 16.

The Beijing IP Court then examined whether the Disputed Mark violated Article 32 of the Trademark Law of China that states a trademark application shall not create any prejudice to the prior right of others, nor use unfair means to preemptively register the trademark of some reputation others have used. The court reasoned that Lonely Planet’s evidence proved that Lonely Planet enjoyed prior trade name right in travel guide related book and publishing services. The “Lonely Planet” trademark also constituted as an unregistered prior used mark that has obtained certain influence in the book and publishing services. Moreover, GPMG and Lonely Planet were both publishing companies, GPMG knew or should have known Lonely Planet’s trade name and prior used “Lonely Planet” trademarks. GPMG’s applications for the Disputed Marks can hardly be seen as good faith filings. The Disputed Mark shall be invalidated under Article 32 of the Trademark Law of China for infringing Lonely Planet’s prior trade name right and registering Lonely Planet’s prior used trademark that has obtain certain influence with unfair means.

On appeal, the Beijing High Court affirmed the Beijing IP Court’s above rulings. Additionally, the Beijing High Court found that the Disputed Mark’s approved services highly overlapped with television programing production services that Lonely Planet previously used with the “Lonely Planet” trademark. Likewise, the Beijing High Court found that Lonely Planet’s trade name has obtained certain fame before the Disputed Mark’s application date on television programing product services.

Takeaway:

1. Where a prior used mark’s owner who claimed that another trademark applicant preemptively filed a trademark application for its prior used mark that has obtained certain influence, if the prior used mark can be proven to have obtained certain influence and that other trademark applicant knew or should have known about the prior used mark, it can be presumed that the trademark application was filed preemptively using unfair means. The court may recognize a prior used mark has obtained certain influence if the prior used mark’s owner proves that its prior used mark has been continuously used for a time period, within a region, has sales volume, or advertisements and promotions.

2. Analyzing services actually offered, including the specific content, purpose, delivery method, time of use, and relevant public who may use the services are important when persuading the judge on the similarity of services between the two marks. Similarly, categorizing services into several subgroups to emphasize the similarity of the goods and services from different angles as well as the actual use of a trade name and a trademark can help to increase the chance of success.

3. When proving fame and prior use of the involved trademark or trade name, evidence of third-party resources can be key. For example, when trying to prove prior use and fame in TV program producing, authoritative or state-owned media report and TV programs on video websites prior to the disputed mark’s application date are good evidence to prove the fame and prior use of the involved trademark or trade name.

Case 2 – E-VO-LON or Yi Wo Long?

In April 2015, Beijing East IP represented Freudenberg to file invalidation actions against two “Yi Wo Long in Chinese (依沃珑)” trademarks (“Disputed Marks”) owned by Nanjing Pippin Textile Technology Co., Ltd. (“Pippin”) before the Trademark Review and Adjudication Board (“TRAB”) and harvested favorable outcome for Freudenberg. Pippin, on the other end, was unsatisfied with the decisions and appealed to the Beijing Intellectual Property Court, which ruled in favor of Freudenberg as well. Pippin further appealed to the Beijing High Court and later filed petitions to the Supreme People’s Court (“SPC”), but all judgments were in favor of Freudenberg.

	EVOLON
Disputed Marks	Freudenberg‘s Mark

The SPC reasoned that the Disputed Marks’ pronunciation was similar to the Cited Mark and Freudenberg submitted sufficient evidence during the proceedings before the TRAB and the lower courts to prove that “Yi Wo Long in Chinese” and “EVOLON” have established one-to-one corresponding association through Freudenberg’s promotion and use. The goods, although fell into different subclasses, were identical or similar in terms of function and use, manufacturing department, sales channel, and target consumers, thus constituted similar. The SPC also reasoned that Freudenberg’s evidence proved that the Cited Mark had obtained relatively high fame prior to the Disputed Marks’ application dates. The co-existence of the Disputed Marks and the Cited Mark was likely to cause confusion among the relevant public. Accordingly, the lower courts correctly held that the Disputed Marks and the Cited Mark were similar marks.

Takeaway:

1. Generally, similarity between word marks can be determined based on the composition, overall appearance, pronunciation, meaning, etc. But if two marks are in different languages, the constituent elements and the visual impression are readily distinct. Hence, similarities shall be found from the meaning and the pronunciation. For example, if the two marks involves are coined words, that is, words without defined meaning for the consumers to comprehend the goods or services offered, pronunciation of the two marks, use and fame, and one-to-one correspondence between the two marks can be used to argue similarities between the two marks. Third-party evidence found on the internet, journal articles, online media coverages, promotional materials from the relevant public, or the interested parties can be used to support the similarity claim.

2. Goods similarity can be easily found when goods fall into the same subclass according to the Classification of Similar Goods and Services issued by the CNIPA based on the Nice Agreement (“CNIPA Classification”), but when goods fall into different subclasses or different subgroups, the inherent interrelation between goods in terms of function and use, manufacturing department, sales channel, and target consumers can be convincing similarity arguments. Additionally, when trying to prove the relationship between raw materials and the final products, evidence collected from academic views, public cognition, and actual product pictures can be supportive.

In addition to goods similarity, awareness of the rightsholder’s fame and reputation, the other party’s bad faith and activities that may confuse the relevant public are convincing evidence to persuade the court that although two marks are in different languages, they may still be considered similar.

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

“The revisions generally serve the proclaimed purposes of placing greater importance on and strengthening IP protection, optimizing enforcement of patent rights, increasing deterrence to infringement, and promoting patent utilization and commercialization of inventions.”

Ms. Hui Shi, senior associate of Beijing East IP Law Firm, was invited by our German clients to share some key issues on IP protection in China through an online lecture.

On the November 24, 2020, Chris LIU, lawyer from Beijing East IP Law Firm was invited by the Embassy of Israeli in China to give a presentation for Israeli enterprises on China’s intellectual property protection. Chris, with her rich practical experience to vividly demonstrated the signification, application, protection and operation of IPR in an illustrated manner, and gave a simple and profound explanation of the intellectual property protection system in China.

Beijing Higher People’s Court, on December 15, 2020, issued a second-instance judgment on the invalidation of a utility model patent named “micromotor”, rejected all litigation requests of Sunonwealth Electric Machine Industry Co., LTD, and upheld the original judgment. Our patent attorneys Du Lijian, Liu Jun, and Zhang Yongyu acted for the invalidation petitioner Asia Vital Components Co., LTD to participate in the entire process of this case, got the result that all independent claims and some dependent claims invalid in National Intellectual Property Administration (NIPA), and won all administrative litigations in Beijing Intellectual Property Court and Beijing Higher People’s Court.