Weekly China Trademark News Updates

September 27, 2022

1. Using “HUAWEI” as a search keyword for products is considered as trademark infringement

Recently, the Shenzhen Futian District Court rendered a first-instance judgment on a trademark infringement dispute between Huawei Technologies Co., Ltd. (“Huawei”) and Shenzhen Mingyu United Technology Co., Ltd. (Mingyu United), and ordered Mingyu United to compensate Huawei for economic losses of RMB500,000 (USD69,000) and reasonable expenses of RMB1,069.8 (USD140).

Huawei obtained the exclusive right to use the registered trademarks “Huawei in Chinese” and “,” and was approved to use them on Class 9 for headphones and other goods. The said trademarks are still valid.

In this case, the accused infringing product is the same kind of product as those under Huawei’s registered trademark. The defendant set “Huawei in Chinese” as a search keyword and used the word “Huawei in Chinese” in its product name. “Huawei in Chinese” constitutes the same trademark as the Huawei’s registered trademark. Mingyu United used a graphic logo as the displayed picture. The graphic logo and Huawei’s registered trademark are both composed of the upper part of petals design and the lower part of English letters. The design parts on both marks are all in the shape of petals, and the overall visual effect is the same; the English letters “IEWAUH” are the same as Huawei’s. The English letters of the registered trademark “HUAWEI” have the same letter composition in reverse order. From an overall point of view, Mingyu United’s graphic logo is similar to Huawei’s registered trademark.

The search keyword “Huawei in Chinese” set by Mingyu United, the word “Huawei in Chinese” and the design logo used on the sales page of the accused infringing product have the function of identifying the source of the product and are trademark uses. Although Mingyu United indicated that the brand was SCOLIB in product details, and that the accused infringing product did not have the word “Huawei in Chinese” or a design logo, it set “Huawei in Chinese” as a search keyword and used “applicable to Huawei” and “original and genuine Huawei headphones,” in the product details, used design logos on the displayed photos, and labeled “Huawei in CHinese” in the product name and model details. These acts obviously showed the bad faith intention of takingadvantage of Huawei’s reputation, and it is very likely for the relevant public to believe that Mingyu United’s headphone is related to Huawei’s or that they have specific connections, which would cause confusion to the relevant public.

In summary, Mingyu United’s behavior of setting “Huawei” as a search keyword, using the word “Huawei in Chiness” in the product name, and using the design logo on the displayed photo infringed Huawei’s exclusive right to use its registered trademark, and should immediately stop the infringement and compensate for losses according to civil liabilities.

2. A company infringed Universal’s trademark by using the “Universal Studios in Chinese” mark without authorization

Universal City Studios LLC (also known as Universal Pictures Co., Ltd.) submitted a request to stop trademark infringement to the Beijing Tongzhou District Market Supervision Bureau (Tongzhou Supervision Bureau), requesting that the party’s use of the words “Universal Studios in Chinese” in the name of the hotel without the authorization of Universal constitutes trademark infringement.

On April 14, 2021, the Tongzhou Supervision Bureau came to a hotel franchise store based on clues provided by the trademark owner. After investigation, the party involved use the words “a hotel in Beijing Tongzhou Universal Studios” on electronic display screens, business cards, check-in receipts, temperature-measuring robots, health treasure QR code cards, hotel operation systems, and WeChat public account mini-programs in the hotel lobby without the authorization of the “Universal Studios in Chinese” trademark owner. The same words were also used on online platforms such as Ctrip, Dianping, Fliggy, Qunar, and eLong. As of the on-site inspection on April 14, 2021, the total operating revenue is RMB5.15 million (USD719,600).

The Tongzhou Supervision Bureau found that the above-mentioned behavior constituted trademark infringement, and ordered the party to stop the infringement immediately. In view of the party’s active cooperation and truthful account of the illegal facts and the initiative to provide evidence materials, immediate rectification was made at the scene, and at the same time considering that Universal Studios has not yet opened, the party’s infringement has limited impact on Universal Studios, the party was given a lighter punishment and imposed of an administrative penalty of RMB100,000 (USD13,900).

3. The CNIPA issued the “Notice on Comprehensively Implementing Online Applications for Rejection Appeal Cases” and “Interim Work Measures to Further Increase Trademark Opposition, Review, and Three-Year Non-use Cancellation Online Applications Filings”

Starting from November 1, 2022, trademark agencies should, in principle, submit electronic applications through the online trademark service system, and no longer submit paper materials.

In order to quickly and significantly increase online trademark opposition, review, three-year non-use cancellation filings. The CNIPA formulated and published Q&As guidelines for opposition, invalidation review, and three-year non-use cancellation, which aims to effectively guide applicants and trademark agencies to better use the online application system, deepen understandings, and improve efficiency.

In the next step, the CNIPA will further speed up the process of fully move trademark applications and responses electronically.

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Weekly China Trademark News Updates

September 20, 2022

1. Unauthorized use of the exact same design as a Royal Oak watch constitutes trademark infringement and unfair competition, and RMB 1 million in damages

Recently, the Shenzhen Intermediate Court has rendered a judgment for Audemars Piguet Holding S.A. (“Audemars Piguet”) against Hengbo Zhang in a trademark infringement and unfair competition dispute. The court found that the defendants’ acts constituted trademark infringement and unfair competition, and ordered the defendants to compensate the plaintiff for economic losses and reasonable expenses of RMB 1 million (USD142,720).

Cited Marks

Audemars Piguet manufactures, promotes, and sells self-branded watches. It launched the “Royal Oak” watch model in 1972. Audemars Piguet registered the “Royal Oak” trademarks (“Cited Marks”) on February 17, 1992 and September 12, 2016, respectively. The said trademarks were approved for use on goods in Class 14 for watches and jewelry. Audemars Piguet claimed that the defendant used a stylized “Royal One” logo (“Disputed Mark”) on a watch. When comparing the two, it can be clearly noticed that the similarity of the designs between the two. At the same time, the defendant’s watch copied the unique design features of the plaintiff’s “Royal Oak” and “Royal Oak Offshore” series of watches, including but not limited to the watches sold by the defendant under the name of “DIDUN DESIGN” that highly replicated the “Royal Oak” “Royal Oak Off Shore” series watch owned by Audemars Piguet.

The court found that the accused infringing goods were watches which were identical to the approved goods under the plaintiff’s Cited Marks. Compared with the Cited Marks, the logo “Royal One” on the accused infringing goods has a similar overall visual effect. In addition, compared with the plaintiff’s “Royal Oak” trademark, the artistic expression, visual effect and conceptual design of the “Royal One” logo on the alleged infringing goods were identical. In summary, the alleged infringing logo was similar to the Cited Marks, which may easily lead consumers into mistakenly believing that the goods sold under the infringer’s trademark originated from the plaintiff or that there was some connection between them, which constituted trademark infringement. Regarding unfair competition, Royal Oak and Royal Oak Offshore watches are well-known in the watch industry. The dial design of Royal Oak watches is very unique, which is different from ordinary watches. The shape has the function of distinguishing the source of the goods. The defendant used the exact same design as the Royal Oak watch without authorization, with the purpose of taking advantage of the goodwill of the Royal Oak watch, causing confusion or misleading of the relevant public. The defendant violated the principle of good faith and constituted an act of unfair competition as stipulated in Article 6(1) of the Anti-Unfair Competition Law.

2. A new round of amendments to the Trademark Law and its implementing regulations intend to clarify the civil liability for damages caused by bad faith squatting

A new round of preparations for the revision of the Trademark Law and its implementing regulations will pay more attention to the protection of rights and public interests, social effects, and balance of rights first, clarify the boundaries of the exercise of rights, solve the problem of insufficient maintenance of public interests, and promote a reasonable balance of rights and obligations. First, by strengthening the construction of integrity in the trademark fields, emphasizing that no deception or other improper means should be used to apply for or obtain trademark registration; study and clarify the liability for providing false materials; strengthen credit supervision and credit punishment. Second, to further regulate bad faith  trademark registrations, and to study effective regulations by increasing the amount of fines, clarifying the civil compensation liability for losses caused to others by bad faith squatting, establishing a system for assigning bad faith squatted trademarks, improving prohibition rules for trademarks containing geographical names, and other measures to curb bad faith trademark registrations. Third, to regulate the exercise of rights, prevent abuse of rights, and clarify the boundaries of the exercise of the exclusive right to use a trademark. It is proposed to stipulate that registered trademarks may be revoked for the improper exercise of the exclusive right to use a trademark. The introduction of a bad faith litigation counter-compensation system is under research. Fourth, to strengthen the social nature of trademark examination and trial work, and plan to set up a discretionary procedure for revocation of preliminary publication. Fifth, to strengthen the supervision and management of the trademark agency industry, clarify the access requirements for the trademark agency industry, and standardize the trademark agency behavior.

Continue to strengthen the obligation to use trademarks, make up for its shortcomings on the basis of adhering to the existing registration system, and focus on solving the problem of “emphasizing registration and neglecting use.” First, improving the concept of trademark use and highlight the basic status of use. Second, on the basis of retaining the non-use cancellation system, study the feasibility of introducing a trademark use commitment and active submission of use during its registration. Third, adding regulations on revocation of trademarks ex officio. If the trademark registrant fails to fulfill the promise of use, fails to submit a description of the use according to law, or improperly exercises the exclusive right to use the trademark, the registered trademark can be revoked ex officio.

3. Alibaba Technology (Beijing) Co., Ltd. was fined for representing Eileen Gu’s trademark

On September 6, 2022, the Beijing Market Supervision Bureau issued an administrative penalty decision of Jingshi Jian Punishment [2022] No. 181 against Alibaba Technology (Beijing) Co., Ltd. to represent the trademarks “Gu Ailing in Chinese” and “EILEEN GU.” The penalty decision held that Alibaba represented the two applicants for a total of 4 trademarks in the “Gu Ailing in Chinese” and “EILEEN GU” trademarks in June 2019 and February 2020, which violated the provisions of Paragraph 3 Article 19, and Article 32 of the Trademark Law. A warning and a fine of RMB 80,000 (USD11,400) was issued.

The provisions of Paragraph 3, Article 19 and Article 32 of the Trademark Law stipulates that it is illegal when agency knowingly or should have known that its client filed trademarks that infringes others’ prior rights, but still accepts the entrustment. The Beijing Market Supervision Bureau believes that as a public figure and Olympic champion, Eileen Gu’s name itself has a certain influence and attraction and has an “endorsement” effect. If her name is registered as a trademark without authorization, this will not only infringe Eileen Gu’s name right, but will also infringe on the prior rights and interests of others, and easily affect their good public image. Therefore, anyone’s registration of “Gu Ailing in Chinese” and “EILEENGU” should abide by relevant laws and regulations. As a trademark registration agency, the party concerned knew or should have known about the content, but still accepted to act as the applicants’ entrusted agency to register and apply for the “Gu Ailing in Chinese” and “EILEEN GU” trademarks, which damaged Eileen Gu’s prior rights and caused adverse social impact.

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Weekly China Trademark News Updates

September 14, 2022

1. The “Compliance Evaluation Guidelines for Digital Collections” – Digital collections can only be circulated for the purpose of use

On September 4th, at the 2022 World Frontier Technology Conference – Metaverse in the Digital Economy Forum of the Service Trade Fair, the ” Compliance Evaluation Guidelines for Digital Collections ” (Group Standards) (“Guidelines”) were officially released. The “Guidelines” regulates the definition, compliant issuance, and circulation of digital collections for the first time, and clearly states that digital collections are limited to the purpose of use, and cannot be listed or privately illegally traded for speculation, money laundering, tokenization, financialization, securitization, or other circulations.

The “Guidelines” pointed out that digital collections issued in China generally refer to a limited-release virtual cultural goods, including digital pictures, music, videos, 3D models, etc., which are recorded through blockchain technology of their distribution, purchase, and use histories. Such record on blockchain make it unique, non-copyable, tamperproof, and permanent proof. These goods are also known as “digital artworks” and “virtual digital goods.” As digital publications, digital collections can be distributed and circulated compliantly according to two product types: digital copyright and digital publication.

The relevant provisions stipulate that China implements a licensing system for publishing activities of electronic publications; without permission, no entity or individual may engage in publishing activities of electronic publications. This also means that no entity or individual may publish digital collections without permission.

2. 5 million RMB in damages! The Beijing IP Court found that the “red-soled shoes” constituted a goods name, packaging, and decoration with certain influence

Recently, the Beijing Intellectual Property Court rendered a decision for the plaintiff Christian Louboutin Co., Ltd. (“Louboutin”), Lanbuting Shanghai Trading Co., Ltd. (“Lanbuting”) and against the defendant Guangdong Wanlima Industrial Co., Ltd. (“Wanlima”) in a first-instance judgment of an unfair competition dispute involving “red-soled shoes.” Wanlima was ordered to stop infringement, compensate economic losses of RMB 5 million (USD718,000) and reasonable expenses of RMB 445,000 (USD63,900), and ruled that the retailer would not be liable for indemnify the damages but is responsible for RMB 5,000 (USD718) in reasonable expenses.

The Beijing IP Court found that: First, the name of the goods that the plaintiffs Louboutin and Lanbuting requested for protection in accordance with Article 6(1) of the Anti-Unfair Competition Law was the name “red-soled shoes.” A decoration that has a certain influence is the red decoration used on the outer sole of women’s high-heeled shoes. The key to judging whether the parties have a direct interest in this case is to determine whether the interests contained in the trade name of the “red-soled shoes” involved in the case and the decoration of the red soles have the basis for substantive law protection for the parties. The evidence submitted by the two plaintiffs in this case can prove that the decoration and product name involved have established a stable correspondence with Louboutin among consumers, and it can be determined that the rights and interests of the decoration and product name involved belong to Louboutin. However, the evidence in the case can only prove that Lanbuting is an authorized agent of Louboutin, and cannot prove that the decoration and product names involved have established a stable corresponding relationship with Louboutin, and thus it cannot be proved that Lanbuting has a direct interest in this case.

Second, Louboutin submitted relevant evidence to show that it has actually sold footwear products in mainland China since 2011, with sales more than RMB900 million (USD129 million). Louboutin has been promoting “red-soled shoes” products since 2003 in mainland China. Many well-known media have reported Louboutin’s products nation-wide. Based on the above evidence, it was sufficient to prove that its “red-soled shoes” product and red sole decoration have a high market reputation and have established stable relationship with the relevant public and have the distinctive feature of distinguishing the source of the goods. Therefore, Louboutin’s “red-soled shoes” product name and the red sole decoration are product name and decoration with “certain influence” as referred to in Article 6(1) of the Anti-Unfair Competition Law. Wanlima used the same or similar logos with the brand name and red sole decoration of the “red-sole shoes,” which had certain influence with Louboutin, without authorization. Such use was enough to cause misunderstanding that Wanlima had some specific connection with Louboutin, and its behavior violated the provisions of Article 6(1) of the Anti-Unfair Competition Law and constituted unfair competition.

Since the determination of whether Lanbuting has an interest in this case is inseparable from the determination of the rights and interests of the “red-soled shoes” trade name and red sole decoration involved, and considering the principles of litigation economy and efficiency, the Beijing IP Court dismissed Lanbuting’s lawsuit, ordered Wanlima to stop the infringement, and compensated Louboutin for economic losses of RMB 5 million (USD718,000)  and reasonable expenses of RMB 445,000 (USD63,900), and held that the retailer to be responsible for reasonable expenses of RMB 5,000 (USD718).

3. Cisco successfully invalidated the “CSCO” mark

The appellant Beijing Heathco Clinical Oncology Research Foundation (“Heathco Foundation”) and the appellee, the CNIPA, and the third party in the original trial, Cisco Technology Corporation (“Cisco”) were involved in an administrative dispute over a trademark invalidation request. The Beijing High Court recently rejected the appeal and affirmed the first instance decision.

Disputed Mark	Cited Mark 1	Cited Mark 2	Cited Mark 3	Cited Mark 4	Cited Mark 5

Regarding the first issue in this case, whether the CNIPA deprived the co-owners of the Disputed Mark the opportunity to make a statement and reply during the administrative review of the invalidation, which damaged the procedural rights and interests of the co-owners of the Disputed Mark and constituted a procedural violation. The Beijing High Court found that the Heathco Foundation did not raise any objection to the procedure made by the accused ruling in the original litigation, so this court tried it on the basis of the principle of comprehensive review. The Disputed Mark was jointly owned by the Heathco Foundation, the China Society of Clinical Oncology Co., Ltd., and the Clinical Oncology Collaborative Professional Committee of the China Anti-Cancer Association. According to the “Reply to the Invalidation of the “CSCO and Design” mark with reg. no. No. 12359367 submitted by the Heathco Foundation to the CNIPA at the administrative stage, it can be seen that the co-owners of the Disputed Mark designated the Heathco Foundation as the representative, so it was legal for the CNIPA to deliver the relevant documents regarding the notification of invalidation of the Disputed Mark to the Heathco Foundation, which did not deprive the co-owners of the Disputed Mark the opportunity to make a statement and reply, and was not a procedural violation.

Regarding the second issue in this case, whether the Disputed Mark and the Cited Marks constitute similar trademarks of identical or similar services. The court found that “education” and other services approved and used by the Disputed Mark and the “educational information” and other services approved and used by the Cited Marks 1 to 5 fall into the same class according to the “Classification of Similar Goods and Services issued by the CNIPA.” There were many overlaps in terms of content, methods, and target consumers. The Disputed Mark consisted of the letters “CSCO” and a design, and its distinctive identification part was the letters “CSCO.” The Cited Mark 1 to 3 consist of the letters “CISCO.” The Cited Mark 4 consists of the letters “CISCO” and a design, and its distinctive identification part is the letters “CISCO.” The Cited Mark 5 consists of the letters “CISCOSYSTEMS” and a design, and its distinctive identification part is the letters “CISCOSYSTEMS.” There was only one word difference between the distinctive parts of the Disputed Mark and the Cited Marks 1 to 3 and the Cited Marks 4 and 5. The Disputed Mark and the Cited Marks 1 to 5 were similar in terms of text composition, pronunciation, and overall visual effect. When the Disputed Mark and the Cited Marks 1 to 5 were used in the same service in “education” or other similar services, it would be easy for the relevant public to believe that the service originates from the same subject or that there is a specific connection between the origin entities, which would result in confusion and misidentification. Although the Heathco Foundation has submitted some evidence of its use of the Disputed Mark, it was not enough to prove that the Disputed Mark can be distinguished from the Cited Marks 1 to 5 through use. Therefore, the Disputed Mark and the Cited Marks 1 to 5 constituted similar trademarks used on identical or similar services under Article 30 of the 2013 Trademark Law. The original judgment was correct and affirmed.

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Weekly China Trademark News Updates

September 7, 2022

1. Trademark rejection appeal cases will move fully online

On September 5, 2022, the CNIPA issued a notice that in order to further improve the digitization and greenify of trademark reviews, the CNIPA will fully move all rejection appeal cases online. Starting from November 1, 2022, trademark agencies should, in principle, submit electronic applications through the online trademark service system for rejection appeal and should not submit anything in paper.

2. MISS TOUR WORLD vs. MISS WORLD

Miss World LTD (“Miss World”) manages the international competition of Miss World Tourism based on its trademarks such as “Miss World in Chinese” (Reg. Nos. 3796247, 12346489), “MISS WORLD” (IRN. 816100, Reg. No. 12346493)” and filed an invalidation against the “Miss World Travel in Chinese and Figure” mark (“Disputed Mark”).

Disputed Mark	Cited Marks

The Beijing Intellectual Property Court and the Beijing Higher People’s Court found that the services other than animal taming approved for the Disputed Mark were the same as the approved services of Cited Marks 1 to 4 in organizing education or entertainment competitions, book publishing, and providing models for artists, or other similar services. The evidence provided by Miss World for the “Miss World in Chinese” and “MISS WORLD” marks proved that it has organized and held the first Miss World beauty contest since 1951 and has been held in many countries prior to the Disputed Mark’s application date. A total of 64 events have been held, and many events have been held in China, and some Chinese attendees have won the championship. Since 2001, a number of Chinese media have promoted and reported on the Miss World contest and used the “Miss World in Chinese” and “MISS WORLD” marks, which has resulted in a corresponding relationship between “Miss World in Chinese” and “MISS WORLD.” “Miss World in Chinese” and “MISS WORLD” were also known to the relevant public in China. The Disputed Mark consists of “Miss Tour World in Chinese and MISS TOUR WORLD” and design, of which the text “Miss Tour World in Chinese and MISS TOUR WORLD” was its main identification part. The Cited Marks “Miss World in Chinese” and “MISS WORLD” were completely included in the Disputed Mark and they were also similar in pronunciation, words composition and other aspects, which constituted similar marks. If the Disputed Mark coexists with the Cited Marks on the approved services other than the “animal taming” service, it would be easy for the relevant public to confuse and misidentify the source of the service. Most of the evidence submitted by Miss Tour World Company were formed from 2009 and later, which was not sufficient to prove that the Disputed Mark has enjoyed certain fame before the date of application of the Cited Marks, so that it can be distinguished from Cited Marks. At the same time, the evidence submitted by Miss World can prove that before the Disputed Mark’s application date, the trade names “MISS WORLD” and “Miss World in Chinese” used on the “Organizing Beauty Pageant” service have already enjoyed certain fame, and the main identification part of the Disputed Mark completely includes Miss World’s prior used trade name. The services approved and used by the Disputed Mark were closely related to the “organizing beauty pageant” service provided by Miss World in terms of service content and objects, and should be identified as the same or similar services. Therefore, the registration of the Disputed Mark constituted the situation under Article 32 of the 2013 Trademark Law where “a trademark application shall not damage the existing prior rights of others.”

3. A “Playlist in Chinese” trademark was ruled as a deceitful trademark

The “Playlist in Chinese” mark with reg. no. 11934833 (“Disputed Mark”) owned by Hangzhou NetEase Cloud Music Technology Co., Ltd. (“NetEase”) was approved for registration on August 14, 2015, and was approved for use in “electronic publications (downloadable); computer programs (downloadable software); computer software (already downloaded)” recording); computer game software; mobile phones; network communication equipment; cartoons; recorded computer programs (programs); cameras (photography)” and other goods. Huijia Asia Co., Ltd. (“Huijia”) filed an invalidation against the Disputed Mark. The Beijing High Court found that the Disputed Mark can be understood as a collection of songs summarizing the names of song works, performers and other information according to different needs and preferences. Data processing activities such as information data collection, selection, sorting, etc., whose application involve entertainment, education, and other activities. Using such a mark on the said data processing activities or entertainment, education-related products would be easy to confuse relevant consumers that such a mark was describing the said data processing activities, which made it difficult to identify such a mark to distinguish the source of the goods. The courts held that the Disputed Mark lacked the distinctive characteristics that a trademark should have, which constitutes the situation in the second item of Article 11, Paragraph 1 of the 2013 Trademark Law. When the above-mentioned products were not related to music or song-related information data processing activities, music or song-related entertainment and educational activities, the “Playlist in Chinese” mark was likely to cause the relevant public to misunderstand the characteristics of the said goods and constituted the circumstances in the provisions of Article 10, Paragraph 1, Item 7 of the 2013 Trademark Law. The understanding of the meaning of a symbol should be based on the general cognitive habits and abilities of the relevant public. NetEase’s claim that the “Playlist in Chinese” mark had a special meaning is unfounded, and the evidence provided by NetEase was insufficient to prove that the Disputed Mark has been used to obtain recognition as a trademark. The distinctive features of the Disputed Mark were not enough to prove that it has established a unique correspondence with it, and the court did not support the relevant claims of NetEase. Accordingly, the Beijing High Court reversed the first-instance judgment made by the Beijing Intellectual Property Court and held that the trademark should be invalidated.

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Weekly China Trademark News Updates

September 2, 2022

1. China’s trademark filings show negative growth for the first time in 15 years

From January to June 2022, the CNIPA received a total of 3.9 million trademark applications, a year-on-year decrease of 18.75%. Among them, there were 2.6 million on goods, a year-on-year decrease of 18.95%, and 1.3 million on services, a year-on-year decrease of 18.36%.

The data shows that the most popular classes are Class 35 for advertising sales, Class 30 for food, Class 9 for electronic equipment,a Class 29 for meat, Class 43 for catering, Class 25 for clothing, shoes, and hats, and Class 33 for wine, Class 5 for pharmaceuticals, Class 41 for education and entertainment and Class 42 for technology services., a year-on-year decrease of 9.88% to 33.45%.

2. The Beijing IP Court issued a report on “Transitional Guiding Period” for Online Case Filing

With the normalization of epidemic prevention and control, in order to fully implement key tasks such as optimizing business environment, help the right owners to enforce their rights, and build a more complete litigation and trial platform, the Beijing Intellectual Property Court issued, on July 25, 2022, the “Announcement on Comprehensive Implementation of Online Filing of Administrative Cases for Patent and Trademark Right Granting and Verification.” From September 1, 2022, online filing will be fully implemented in administrative cases of patent and trademark right granting and verification in which an agent is entrusted to participate in the litigation. In the nearly one month since the release of the Announcement, there were 4,974 first-instance cases directly filed online to the Beijing IP Court, accounted for 66% of the total first-instance cases.

3. The Beijing High Court reversed the CNIPA’s ruling and the first-instance judgment, finding that the coexistence of “Zimeitang” and “Shiseido in Chinese” will not cause confusion and misidentification

Shiseido Co., Ltd. (“Shiseido”) cited the “Shiseido in Chinese” trademarks on October 14, 2019 to invalidate the “ZIMEITANG in Chinese ” mark with reg. no. 28197986 registered and used by Beijing Zimeitang Co., Ltd. (“Zimeitang”) on cosmetic goods in Class 3. The CNIPA found that the two parties’ marks were similar and in favor of Shiseido.

Disputed Mark	Cited Mark 1	Cited Mark 2

Zimeitang appealed the unfavorable decision with the Beijing IP Court. Both parties submitted a large amount of evidence to prove the fame and use of their respective trademarks during the CNIPA review and the court trial proceedings. The Beijing IP Court found that the evidence provided by Shiseido proved that the Cited Marks had a high reputation among Chinese consumers in cosmetics and other goods before the Disputed Mark’s application date, especially that the Cited Marks were recognized as famous marks on “cosmetic” goods to the public by the original Trademark Office in as early as April 2009. The Disputed Mark was similar to the Cited Marks in terms of font, pronunciation, etc. Although Zimeitang has provided a large amount of use evidence to prove that the Disputed Mark has been used for many years and has formed a corresponding relationship with it, given that the Cited Marks were registered earlier and has a high reputation, it would be difficult for the relevant public to distinguish the two when paying general attention, so the CNIPA decision should be affirmed.

Zimeitang appealed the first-instance judgment to the Beijing High Court. In the second-instance procedure, it further submitted evidence to prove the use and popularity of its trademark.

The Beijing High Court found that the Disputed Mark was composed of the Chinese characters “ZI MEI TANG,” while the Cited Mark 1 and 2 are composed of the Chinese characters “Shiseido in traditional Chinese” and ” Shiseido in simplified Chinese” respectively. Although all trademarks contain the character “Tang in Chinese,” based on common market habits, the character “Tang”, which could mean hall,  is often used as a suffix for trademarks or trade names. It does not play a role in distinguishing and identifying, so it does not constitute a distinctive identification part of the above-mentioned trademarks. The distinctive characters “Zimei in Chinese” of the Disputed Mark were completely different from the characters “Zisheng in traditional Chinese and “Zisheng in simplified Chinese” in the Cited Marks 1 and 2, and their meanings were also significantly different. The difference was obvious in the overall comparison, and the relevant consumers can distinguish them. Although Shiseido’s Cited Marks have a high reputation, the evidence provided by Zimeitang can also prove that the Disputed Mark has been used on a certain scale and has obtained a certain popularity and influence. The coexistence of the Disputed Mark and the Cited Marks on the approved goods would not cause confusion and misunderstanding, so the registration of the Disputed Mark did not violate Article 30 of the Trademark Law2013. The CNIPA decision and original judgment were incorrect and the Beijing High Court shall correct them. Since the new evidence provided by Zimeitang in the lawsuit was not the basis for the ruling of CNIPA decision, the CNIPA was not at fault and Zimeitang was still responsible for the court fees.

4. Frescobaldi finally removed a similar mark after the court determined that tea drinks, sweets (candy), etc. were similar to wine

Marchesi Frescobaldi Societa Agricola S.R.L. (“Frescobaldi”) filed successively an opposition, an invalidation, first instance and second instance administrative lawsuits to remove the “Frescobaldi” trademark in Class 30 for “tea-based beverages; confectionery [candy]; chocolate; pastries; bread; biscuits; rice-based snack food” from the registry.

Disputed Mark	Cited Marks 1 and 2	Cited Marks 3 – 6
Class 30:  Tea-based beverages; Confectionery [candy]; Chocolate; Pastries; Bread; Biscuits; Rice-based snack food	Class 29: Oil, extra virgin olive oil. Class 33: Wines, sparkling wines, liqueurs	Class 29: Edible fats; Fruit, preserved; Vegetables, preserved, etc. Class 33: Wine; Alcoholic beverages, except beer; etc. Class 43: Bar and restaurant services

Both CNIPA’s invalidation decision and the Beijing IP Court’s first instance decision found that the Disputed Mark did not violate Article 30 or Article 44(1) of the Chinese Trademark Law. Frescobaldi appealed to the Beijing High Court.

The Beijing High Court found that according to the facts proved by the evidence on record, Frescobaldi’s FRESCOBALDI winery has a long history, and the “FRESCOBALDI” wine produced by it has been sold and promoted in mainland China through Chinese distributors since 2006. In terms of wine products, for the relevant Chinese public, “Hua Si Die in Chinese” and “FRESCOBALDI” have formed a commercial correspondence through long-term use. The registrant of the Disputed Mark, as a relevant public in China, deliberately applied for the registration of the “Frescobaldi” trademark, which was identical to the Cited Marks 1 and 2 and has a corresponding relationship with the Cited Marks 3 to 6. Although the Disputed Mark was used sparingly, it was not enough to eliminate the subjective bad faith of its application for registration.

In this case, Frescobaldi did not submit evidence of the use of the Cited Marks for goods in Class 29. Considered that tea drinks, sweets (candy) and other goods approved and used by the Disputed Mark were significantly different from goods in Class 29, so these marks’ coexistence in the market was not enough to create a likelihood of confusion. However, the evidence in the case can prove that Frescobaldi’s “FRESCOBALDI” wine has gained a certain reputation in the Chinese market after being promoted and used. Tea beverages, sweets (candy) and other goods designated by the Disputed Mark and the Cited Marks’ approved goods for wine and other goods in Class 33 were commonly used in foods in daily life, and the two were similar in function, use, sales channels, consumer groups, etc. According to the circumstances of this case, these goods could be categorized as similar goods. The Cited Marks “Hua Si Die in Chinese” and “FRESCOBALDI” were highly distinctive, and the Disputed Mark was identical or corresponded with Cited Marks and should be judged as similar marks. If the Disputed Mark and the Cited Marks were used on the above-mentioned goods, it would be easy for the relevant public to confuse and misunderstand the source of the goods. Therefore, the Disputed Mark constituted as a similar mark used on identical or similar goods, and the CNIPA decision and the first instance court judgment were incorrect and this court has corrected them.

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Weekly China Trademark News Updates

August 23, 2022

1. The “Honeysuckle in Chinese” trademark infringement case reversed: the original meaning of a mark in the public domain cannot be exclusively owned by an entity or an individual

On June 24, 2022, the Zhongshan Intermediate Court of Guangdong reversed a first instance judgment and found that the use of the “Honeysuckle in Chinese” logo on the toilet fragrance products produced by the defendant Jiangxi Chuangmei Industrial Co., Ltd. (“Chuangmei”) did not constitute an infringement of the exclusive trademark right of the plaintiff Shanghai Bili Cosmetics Co., Ltd. (“Bili”).

Bili is the owner of the “Honeysuckle in Chinese” trademark with reg. no. 603857. The toilet fragrance produced by Chuangmei was marked with the words “Honeysuckle in Chinese” in a large font horizontally on its label, and the words “Cong Meichen” were marked above the words “Honeysuckle in Chinese” in a smaller font size. Bili sued Chuangmei for trademark infringement and required Chuangmei to immediately stop the production and sale of the infringing goods.

The second instance court found that the “Honeysuckle in Chinese” mark with reg. no. 603857 involved in this case directly represented the main raw materials of the goods and other characteristics, and the trademark owner could not monopolize the original meanings of the trademark signs that belonged to the public domain. When Chuangmei used the word “Honeysuckle Toilet Fragrance in Chinese” on the accused infringing toilet fragrance, it also marked its own registered trademark of “Cong Meichen” above the word “Honeysuckle in Chinese.” “Honeysuckle” usually refers to the name of a plant, which has the effect of clearing away heat and detoxification, toilet fragrance is a generic trade name, and the main ingredient of the alleged infringing toilet fragrance is honeysuckle extract. Under this circumstance, Chuangmei’s use of the words “Honeysuckle toilet fragrance” on the alleged infringing product was not used as a trademark of its own products, and the use was only to illustrate or describe the characteristics of its own products. In the user guide or product description, Chuangmei did not directly use the “Honeysuckle in Chinese” mark with reg. no. 603857, nor did it prominently use the word “Honeysuckle in Chinese.” The existing evidence was not enough to prove that Chuangmei maliciously used the “Honeysuckle in Chinese” trademark owned by Bili. The use of the word “Honeysuckle Toilet Fragrance in Chinese” on the toilet fragrance products produced by it was not a trademark use of other people’s descriptive trademark in order to describe the use of its own products, which was a legitimate use of trademarks. Chuangmei’s actions did not constitute an infringement of the exclusive right of Bili’s registered trademark.

2. Wuhan Yihuiyin Technology Co., Ltd. v. Guangzhou Yinuo Catering Management Co., Ltd., Qiao Wenlong, Yin Liangliang regarding trademark infringements and unfair competition disputes

On May 20, 2022, the Guangzhou Intellectual Property Court rendered a second instance judgment over trademark infringement and unfair competition disputes between Wuhan Yihuiyin Technology Co., Ltd. (Yihuiyin) and Guangzhou Yinuo Catering Management Co., Ltd. (Yinuo), Qiao Wenlong and Yin Liangliang, and ordered the defendants to compensate the plaintiff for economic losses and reasonable expenses totaling RMB 1 million (USD146,000).

The first instance court found that the “Yihetang” and “” logos used by Yinuo in the franchise contracts and authorized franchisees in store decoration and operation were identical to Yihuiyin’s prior trademarks “Yihetang” and “” in terms of goods and services and trademark composition. The use of the accused infringing goods can easily cause confusion and misunderstanding, which constituted trademark infringement. Meanwhile, the evidence submitted by Yihuiyin can prove that the overall design of its milk tea cup decoration, store signboard, store decoration, and clerk clothing constitutes “decoration with certain influence.” The decoration elements of the stores and goods used by the stores operated by the franchisees of Yinuo were basically identical to those of Yihuiyin. Yinuo’s actions caused confusion to the source of services and constitute unfair competition.

The second instance court found that: taking into account that the defendant, Yinuo, had malicious intentions of taking advantage, and aggressively launched business to attracting investment and franchising without a valid trademark registration. Such actions constituted as infringement from the source and the scale of its infringements were large, caused severe damages, the second instance court increased the amount of compensation from the RMB300,000 (USD43,824) to RMB1 million (USD146,000).

3. CNIPA working group joined platform-based trademark agency to carry out “counseling” supervision

In recent years, while the platform-based trademark agencies have brought technological innovation and facilitated trademark services, there have also been irregular operations. The CNIPA selected some platform-based trademark agencies as samples and provided guidance to effectively regulate agency service behavior.

In the governance of platform-type trademark agencies, the CNIPA has improved the supervision efficiency through all-round “counseling” inspection and supervision. In view of the business model and main risks of platform-based trademark agencies, guide them to establish and improve working mechanisms such as bad faith application screening, bad faith application notification, conflict of interest review, and online application de-duplication verification.

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Weekly China Trademark News Updates

August 17, 2022

1. Tsingtao Beer prevailed against counterfeit beer in an administrative litigation

The Shandong High Court rendered the second instance administrative judgement against the appellant, Pingdu City Yue Yong Yue You Condiments Wholesale (“Yue Yong Yue You”) and in favor of the Qingdao Administration for Market Regulation (“Qingdao AMR”) and the third party in the original trial, Tsingtao Brewery Co., Ltd. (“Tsingtao Brewery”).

On May 18, 2021, the Qingdao AMR conducted a law enforcement inspection on Yue Yong Yue You and found that its operation of “Qingqi brand special beer” constituted unauthorized use of others’ identical or similar logos with packaging and decoration that had certain influences, which amounted to unfair competition and in violation of Article 6 Paragraph 1 of the Anti-Unfair Competition Law that stipulates “business operators shall not carry out the following confusing acts: (1) unauthorized use of others’ identical or similar product names, packaging, decoration, etc. that have certain influences.” An administrative penalty decision was made on August 31, 2021, and Yue Yong Yue You was ordered to correct its illegal acts and imposed a fine of RMB 537,750 (USD79,223).

The first instance court found that the packaging of Qingqi brand special beer used by Yue Yong Yue You was similar to the outer packaging of Tsingtao Beer’s “500ml Classic Canned Tsingtao Beer,” except for the internal patterns, words, and trademarks in the middle of the runway figure, and that the content of the text on the side of the can was slightly different. The overall color matching of the can and the design arrangement of specific details were similar to the design characteristics of Tsingtao Beer products. Combined with the attributes of the product as a fast-moving consumer product, it was easy to cause confusion among the relevant public. Yue Yong Yue You admitted that they sold the infringing products and their acts constituted unfair competition. The Qingdao AMR’s said decision was not incorrect.

The Second Instance Court affirmed the first instance judgment and clarified that the “operator” as the subject of “confusion” stipulated in the Anti-Unfair Competition Law includes both the manufacturers engaged in the manufacture of goods and the sellers or service provider who engaged in the goods business. Meanwhile, it was clarified that when a business operator knows or should know that the products sold are counterfeit products with a unique name, packaging and decoration of a well-known product, the “confusion” acts implemented by such business operator shall be punished according to law.

2. Xiaomi prevailed in a trademark infringement and unfair competition dispute against an individual

On June 23, 2022, the Shanghai Intellectual Property Court rendered a first instance judgement against Zhou Qiujun and Shanghai Xunmeng Information Technology Co., Ltd. (“Xunmeng”) in favor of Xiaomi Technology Co. Ltd. (“Xiaomi Technology”) and Xiaomi Communication Technology Co., Ltd. (“Xiaomi Communication”) in a trademark infringement and unfair competition dispute. Zhou was ordered to compensate the plaintiffs for economic losses and reasonable expenses totaling RMB 500,000 (USD73,661).

After hearing, the court held that the “Xiaomi” mark owned by Xiaomi Technology has continued to be used since its approval for registration. The plaintiff and its affiliates invested a lot of money to promote the Xiaomi brand and won many honors, and the cited trademark can be recognized as a well-known mark because it was known to the relevant public in China as of 2020. When Zhou sold the four alleged infringing products, namely bathroom ceiling heater, heater fan, flat lamp, and cool bar in his store, logos such as “Xiaomi,” “Xiaomi Home Bathroom Ceiling Heater,” “Xiaomi Home Heater Fan,” “Xiaomi Home Flat Lamp,” and “Xiaomi Home Cooling Bar” were prominently used on the product name, product photo, product detail page, product body, outer packaging, and instruction manual. Such use of the “Xiaomi” logo constituted as copying and imitating the plaintiffs’ “Xiaomi” well-known mark on  dissimilar goods, and unfairly misappropriated the “Xiaomi” mark’s market goodwill, misled the relevant public, damaged other’s legitimate interest and constituted trademark infringement.

Defendant Zhou Qiujun showed in his store video that it was a “Xiaomi | Life Appliances Specialty Store,” which would mislead the relevant public into believing that the products sold by the store were from the plaintiffs or had an association with the plaintiff, which had the intention to take advantage of the plaintiffs’ business reputation and reputation of its goods to enhance competition. Such acts violated the good faith principle and constituted unfair competition.

3. China’s first “100,000 Why” trademark protection case finally prevailed in its final trial

In June 2017, Shanghai Century Publishing Co., Ltd. Children’s Publishing House registered the trademark of “100,000 Why 100,000 WHYS and Design,” and the approved goods were books, printed publications, etc. in class 16. On January 27, 2019, the trademark was assigned to Shanghai Children’s Publishing House Co., Ltd. (“Children’s Publishing Company”).

The Children’s Publishing Company found that the cover of the book “100,000 Whys” in the Jiangqiao Wanda Store of the Xinhua Bookstore of Sichuan Tiandi Publishing House Co., Ltd. marked “100,000 Whys” and “Golden Classic for Chinese Children” in a relatively small font, and there are a total of 15 books (sets) on Jingdong Tiandi Publishing House, Tiandi Publishing House official website, Dangdang Tiandi Publishing House, Tmall Tiandi Publishing House flagship store, etc. marked with the description “100,000 Wy is a classic reading for generations… This book is an upgraded version of 100,000 Whys.” At the beginning of 2020, Children’s Publishing Company initiated the first lawsuit against Tiandi Publishing House and Shanghai Xinhua Media Chain Co., Ltd. Xinhua Bookstore Jiangqiao Wanda Store in Shanghai Putuo District Court. The Shanghai Putuo District Court rendered a first-instance judgment ordering the defendant Tiandi Publishing House and others to immediately stop trademark infringement and unfair competition, and compensate the plaintiff for economic losses and reasonable costs of RMB600,000 (USD88,393). The Shanghai Intellectual Property Court then rejected the appeal and upheld the original judgment.

The Shanghai Intellectual Property Court held that “100,000 Whys” itself has an inherent meaning, but it was not equivalent to the generic name of the relevant goods. Question-and-answer popular science books included the “100,000 Whys” series of books involved in this case, but “100,000 Whys” were not yet the same as question-and-answer books. The prominent use of “100,000 Whys” on the cover of relevant books by Tiandi Publishing House was not a fair use to explain the content of the book, but constituted as trademark use to identify the source of the book, and objectively plays the function and role of identifying the source of the book. It was easy to cause confusion and misunderstanding to book buyers about the source of books or the relationship between Tiandi Publishing House and Children’s Publishing House.

Among the 14 books involved in the case by Tiandi Publishing House, 9 of them were first published in June 2017, before the Children’s Publishing House obtained the trademark registration, but at this time, the Children’s Publishing House’s “100,000 Whys” series has obtained a high reputation and goodwill in the field of children’s popular science books after long-term use and publicity. It was widely known by the public, and has the attributes of identifying the source of a series of books. Therefore, it was not inappropriate for the first instance court to determine that it should be protected as the unique name of a fmous good.

Tiandi Publishing House used the expression “100,000 Whys is a classic reading that has influenced generations… This book is an upgraded version of 100,000 Whys” without justifiable reasons, which would easily lead readers into believing that Tiandi Publishing House’s book was an upgrade of Children’s Publishing House’s “100,000 Why” series of books, which constituted false advertising.

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Weekly China Trademark News Updates

August 9, 2022

1. Dual-track system compensation of RMB 1.86 million against a trademark infringer for infringing the “JUKI” mark

The Shanghai Intellectual Property Court recently made a final judgment on the trademark infringement dispute between Juki Corporation. (“Juki”) and Zhejiang Jukai Sewing Technology Co., Ltd. (“Jukai”), finding that Jukai’s acts constituted trademark infringement and shall compensate Juki for economic losses of RMB 1.86 million (USD275,270).

Cited Marks

Juki registered the “JUKI” marks (“Cited Marks”) on May 30, 1981, September 12, 2003, and December 29, 2005, respectively. The Cited Marks were approved in Class 7 for “machines for sewing, pedal drives for sewing machines, sewing machines” and other goods. Jukai marked the “JUKAI” logo on the allegedly infringing sewing machines and product packaging for sell in the “Huiyou Sewing Equipment Store” in Wuhu City, Anhui Province. Jukai highlighted the use of “JUKAI” and “JUKAI and Shield Logo” on sewing machines, brochures and business cards in an exhibition in Shanghai. Jukai prominently marks the “Jukai in Chinese and JUKAI” logo on the industrial sewing machines and cargo packing boxes declared by at the Beilun Customs for export to Morocco and at the Ningbo Customs for export to India.” Jukai also extensively used the “JUKAI” logo on www.cn-jukai.com and its webpages. Jukai prominently positions “JUKAI” in the company introduction and promotional videos on its WeChat official account and uses “JUKAI” as its avatar.

The first instance court held that Jukai infringed Juki’s trademark. Jukai was unsatisfied with the judgement and appealed to the Shanghai IP Court. The Shanghai IP Court affirmed that Jukai infringed Juki’s trademark. The Shanghai IP Court found that the “JUKAI” logo was similar to Juki’s three registered trademarks. Juki’s Cited Marks enjoy high reputation, and Jukai, as a competitor in the same industry, should’ve knew about it, but it still used the “JUKAI” and “Jukai in Chinese and JUKAI” logos. Jukai also uses the same model number, product layouts, logo location, and labeling method that were highly similar to Juki’s products, which showed its subjective intention of infringement. Regarding the “dual-track system of compensation,” first, taking into account the subjective intention of Jukai, the scale and circumstances of infringement, and the specific sales situation that can be identified, punitive damages shall be applied to the part of export orders for which the specific sales situation can be identified. Second, consider Jukai’s domestic manufacturing and sales, combined with factors such as intentional infringement and seriousness of its infringement, statutory compensation shall be applied for sales activities that cannot be identified.

2. Dorco Co., Ltd. obtained RMB 8 million in compensation as stipulated in its agreement with the defendants

The Zhejiang High Court recently rendered a trademark infringement judgement and ordered RMB 8 million (USD 1.18 million) in economic losses and reasonable expenses for Dorco Co., Ltd. (“Dorco”) and against Jiangxi Xirui Blade Manufacturing Co., Ltd. (“Jiangxi Xirui”), Shanghai Xirui Blade Co., Ltd. (“Shanghai Xirui”), Zhangjiagang City Jinfeng Town Hexing Sandeli Hardware Tools Factory (“Hexing Sandeli”), Shaoxing Beisujie Commodity Co., Ltd. (“Beisujie”) and Shaoxing Jijie E-Commerce Co., Ltd. (“Jijie”).

Cited Marks

Dorco registered the “DORCO” marks (“Cited Marks”) on September 20, 1991 and May 14, 2010, respectively. The Cited Marks were approved in Class 8 for “razors, razor blades, and knives with handles” and have obtained a certain reputation in the domestic market. Shanghai Xirui registered the “DOREO” mark on March 21, 2015. The “DOREO” mark was approved in Class 8 for “planing blades, sharp tools (hand tools)” and other goods. On October 15, 2019, Dorco signed a settlement agreement on Jiangxi Xirui’s mass production of counterfeit goods that infringed Dorco’s registered trademarks. The agreement stipulated that if Jiangxi Xirui and its related parties would repetitively infringe Derco’s trademark right, the compensation shall be ten times the value of the genuine goods unconditionally. After investigation by Dorco, Dorco found that Jiangxi Xirui disregarded the said stipulations in the settlement agreement and continued to carry out its infringing acts intermittently. Moreover, the said counterfeit goods were sold by Hexing Sandeli, Beisujie, and Jijie through Alibaba or AliExpress. Jiangxi Xirui did not object to its act of manufacturing and selling the accused infringing goods, and admitted that the accused infringing products sold by Hexing Sandeli and Beisujie were purchased from them. During the period from August 3, 2020 to April 12, 2021, under the supervision of a notary public, Dorco inspected and sealed the packages of the allegedly infringing products for 15 shops of Hexing Sandeli Factory and Beisujie on the Alibaba, Aliexpres, Taobao, and Pinduoduo.

The court found that the existing evidence provided by Dorco was not enough to prove that the products it manufactured and sold had a certain influence, so the defendant’s acts did not amount to unfair competition. The accused infringing razor blade was the same product as the razor blade goods approved for use by Dorco’s said Cited Marks. Moreover, the conspicuous positions on the inner and outer packaging of the accused infringing goods bear the “DORCO” logo and words. The court comprehensively determined that Jiangxi Xirui and Shanghai Xirui used the accused infringing logo and sold the accused infringing goods, which constituted trademark infringement. In addition, both Hexing Sandeli and Beisujie recognized that they had sold the alleged infringing goods, and their infringements also constituted trademark infringements.

3. The Beijing High Court: Massive squatting of well-known trademarks constitutes other illegal means of registration

The Beijing High Court recently made a judgment that rejected the appeal petition filed by Dongfang Mingri (Jinjiang) Import and Export Co., Ltd. (“Dongfang Mingri”) and upheld the first-instance judgment. The Disputed Mark “Bin Li Kai Le Zhuang Yuan in Chinese” was declared as invalid according to Paragraph 1 Article 44 of the Trademark Law.

Disputed Mark

The first-instance judgment of the Beijing Intellectual Property Court found that: Dongfang Mingri and its affiliated companies have registered more than 200 trademarks in various classes, including “B and Design, “BENTLEY,” “Bentley in Chinese,” and “Penfolds in Chinese” and other trademarks that were identical or similar to other name brands. They have also registered trademarks of famous wine brands or sports celebrities in many classes. Said filings have obvious subjective intentions of copying and plagiarizing others’ well-known trademarks, improperly occupying public resources, violating the principles of public order and good customs, and detrimental to the market environment of fair competition. After the second-instance trial, the second instance court further found that based on the first-instance judgment, Dongfang Mingri did not provide a reasonable explanation for the design sources of the more than 200 trademarks it applied for registration under its name. Although it submitted agency contracts and sales invoices, the number of these contracts and invoices were limited, and were not only for the Disputed Mark. It was difficult to determine that Dongfang Mingri has actual intention to use the Disputed Mark and continued to use it. The application of Dongfang Mingri has obviously exceeded the normal production and operation needs, disrupted the order of trademark registration management, improperly occupied public resources, and harmed public interests.

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Weekly China Trademark News Updates

August 3, 2022

1. Vans is awarded for RMB 2.71 million based on bad faith infringements and treble damages

The Wenzhou Intermediate Court of Zhejiang recently made a second instance trademark infringement judgment between appellant Ruian Guangzu Shoe Factory (“Guangzu”), Zou Zhengbin, appellee Vans Inc., and defendants Ningbo Lehao Electronic Commerce Co., Ltd., Suzhou Baiyiju Apparel Co., Ltd. and Yongxiu County Chuangxing Beauty Co., Ltd. The court rejected the petition to appeal and affirmed the lower court’s judgment.

Disputed Mark	Cited Mark
	Reg. No. 8606383

First, regarding whether the accused infringing goods infringed the exclusive rights of Vans’ registered trademark with reg. no. 8606383, the accused infringing goods were the same as the footwear goods approved for use by the Cited Mark. The logo used was similar to the overall structure and line shape of the Cited Mark, with only slight differences at the end of the line on the right side, which was likely to cause confusion among the relevant public and constitute trademark infringement. Although Guangzu and Zou Zhengbin claimed that the alleged infringing logo would not cause confusion among the relevant public regarding the source of the goods, the court did not support such claim because they did not provide sufficient evidence.

Second, regarding the liability of Guangzu, Vans conducted notarized purchases of the alleged infringing goods on Tmall store and all were marked with the accused infringing logo on the side of the shoes, and all labled that the manufacturer was Guangzu. The shoes and shoe uppers displayed in the 29 product links in 14 Tmall stores all attached the same accused infringing logo as those products purchased during the notarized purchase. The product’s features from the 14 Tmall stores and those from the notarized purchase were highly similar, the legal representative of the business entity was also the same. The first instance did not err in calculating the sales volume of the Tmall product links as the sales volume of Guangzu. The product display pictures and product details in the above links were all shoes with the alleged infringing logo. Guangzu and Zou Zhengbin claimed that some shoes were sold without the accused infringing logo and should be deducted from the sales amount, but such claim was not supported because they did not provide sufficient evidence to support their claim. Manufacturers and retailers should bear corresponding responsibilities for their respective infringements. Guangzu and Zou Zhengbin’s claim that there was repeated compensation in the first instance lacked supporting evidence and the court did not support their claim. As for the determination of the sales price of Guangzu’s alleged infringing products, the sales price in the administrative penalty was only the selling price of the batch of goods seized by the administrative department, and cannot be used to determine the price of the alleged infringing goods sold on the accused Tmall store. The accused Tmall store was the main body of online sales. The first instance determined its sales price based on the average selling price of the accused infringing goods found on Guangzu’s 1688 e-commerce platform store was not improper and this court upheld such finding. Guangzu was the manufacturer and seller of the alleged infringing goods, and had received two administrative penalties for infringing the Cited Mark. After the second administrative penalty, it continued to infringe using other entities under its control with obvious subjective bad faith. The first instance had factual and legal basis for using the sales amount deducting the base price as the calculation method of its profit and awarded treble punitive damages. This court upheld the first instance decision.

Third, regarding reasonable expenses, Vans paid notarization fees for the rights protection in this case, and hired attorneys. It was not inappropriate to determine the reasonable rights protection fee of RMB20,000 (USD3,000) in the first instance. Vans sued Guangzu and investor Zou Zhengbin to bear joint compensation liability. The first instance judgment that Zou Zhengbin should bear supplementary compensation liability for the debts was to reduce Zou Zhengbin’s responsibility and did not overstep the scope of Vans’ claims.

2. Obtaining trademarks without good faith and initiates infringement lawsuits constitute abuse of rights

The Beijing Intellectual Property Court recently rejected a second instance appeal petition for a trademark infringement case between appellant Ma and appellee Shenzhen Chow Tai Fook Online Media Co., Ltd. (“Shenzhen Chow Tai Fook”), and the first instance defendant Beijing Jingdong SanbailuShidu Electronic Commerce Co., Ltd. The Beijing IP Court affirmed the lower court decision.

The court found that:

1. Shenzhen Chow Tai Fook’s use of “Jiao Ren in Chinese” on the disputed products was justified

 First, as far as the entity relationship is concerned, Shenzhen Chow Tai Fook is one of the subsidiaries of Chow Tai Fook Jewelry Group. The alleged infringing goods sold by Shenzhen Chow Tai Fook were the “Chow Tai Fook” brand “Jiao Ren in Chinese” series of diamond jewelry, which originates Chow Tai Fook Jewelry Group. Shenzhen Chow Tai Fook, as an affiliated entity, had the basis as an affiliated entity in the promotion and use of the “Jiao Ren in Chinese” series of diamond jewelry.

Secondly, in terms of the popularity of the cited mark, Shenzhen Chow Tai Fook provided evidence that the “Chow Tai Fook Jiao Ren Series” was used before the application date of Ma’s mark “” with reg. no. no. 6703145 and had obtained certain popularity.

Third, as far as the scope of use is concerned, “within the original scope of use” stipulated in Article 59, paragraph 3 of the Trademark Law should not be strictly applied to only the original scale of business and the original scope of goods circulation, but should be comprehensively determined by the popularity, usage, and nature of goods or services a prior user using the corresponding logo. According to the facts affirmed in this case, Ma named Chow Tai Fook Gold (Shenzhen) Company as a defendant in 2018 by claiming that Chow Tai Fook Gold (Shenzhen) Company launched the “Jiao Ren in Chinese” series diamond ring and pendant on its website on June 12, 2018. The People’s Court of Yantian District, Shenzhen, Guangdong Province issued a civil judgment affirming Chow Tai Fook Gold (Shenzhen) Company had actually used “Jiao Ren in Chinese” as the name of the series of products before Ma applied for the disputed trademark, and had prior rights, so Ma’s claim was rejected. After investigation, the judgment has come into force. Given that the disputed goods in this case sold by Shenzhen Chow Tai Fook were diamond jewelry, and the evidence in the case was sufficient to prove that the “Chow Tai Fook Jiao Ren Series” diamond jewelry has been used before the application date of Ma’s trademark with reg. no. 6703145, and it had obtained a certain reputation. In combination of the above facts, this court found that the promotion and use of the “Jiao Ren” series of diamond jewelry by Shenzhen Chow Tai Fook had the basis as a related entity, and its goods circulation came from prior users, so it can be determined that the goods sold by Shenzhen Chow Tai Fook still belong to Chow Tai Fook, and falls within the original scope of use of the “Jiao Ren in Chinese” series of diamond jewelry.

Finally, in terms of use, whether the affiliated company of Shenzhen Chow Tai Fook used Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry first, or Shenzhen Chow Tai Fook used Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry in sales, both uses were a combination of “Jiao Ren in Chinese” and “Chow Tai Fook.” According to the evidence provided by Ma for his use of the trademark no. 6703145, it was not enough to determine that the combined use of the trademarks “Jiao Ren in Chinese” and “Chow Tai Fook” would cause the relevant public to mistakenly believe that the goods involved originated from Ma. Therefore, it was not necessary to add distinguishable features on the disputed mark.

2. Ma’s application for registration of the disputed mark violated the principle of good faith

First, in terms of trademark distinctiveness, Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry pictures used the “Jiao Ren in Chinese” logo composed of letters and Chinese characters in many promotions in magazines in 2006, which had a high degree of distinctiveness. When comparing Ma’s trademark with reg. no. 6703145 with the trademark used in Chow Tai Fook’s “Jiao Ren in Chinese” series, both marks used similar combinations of letters and Chinese characters and adopted the same letter arrangement, which could not be seen as incidental.

Second, from the perspective of subjective intentions, the evidence in the case can prove that Chow Tai Fook’s “Jiao Ren in Chinese” series diamond jewelry products were launched in 2006 and were used for a long-term and continuous use with publicity. On May 6, 2008, Ma applied for the disputed mark when Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry products and their logos were already well-known, and Ma should have known, but applied for registration of a trademark similar to the logo used by Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry products, which was subjectively difficult to be seen as to have goodwill.

Third, from the perspective of use after registration, the evidence submitted by Ma can only prove that he has licensed the trademark and cannot prove that he has used or has the intention to use the disputed trademark in the approved classes according to the Trademark Law, which does not conform with the principle of applying for registration of a trademark based on actual needs in the Trademark Law. Ma cannot prove that he registered the disputed mark for the purpose of actual use.

Finally, Ma also applied for and registered other name brands as trademarks. Although Ma denied it, it has been verified that the registrants of these trademarks were Ma, the registrant’s address was the same as Ma’s address recorded for the disputed mark. Therefore, the first instance court did not accept Ma’s rebuttal, and it should be considered that these trademarks were all applied for or registered by Ma. These trademarks span a wide range of classes and belong to different industries. They also included trademarks that were similar in appearance, of the same class or similar to other well-known trademarks, which could not prove that Ma had the intention to use or had the need to apply for these trademarks. As an individual, Ma’s obviously purpose is to hoard these trademarks. Accordingly, the court held that Ma’s application for registration of the disputed mark violated the principle of good faith, and the right basis of which Ma claimed his rights in this case was not legitimate and should not be supported in accordance with the law.

3. Ma’s behavior constitutes abuse of rights

The Civil Judgment (2018) Yue 0308 Min Chu No. 588 found that: Chow Tai Fook Gold (Shenzhen) Company had actually used “Jiao Ren in Chinese” as the name of a series of products before Ma applied for the disputed mark, so Chow Tai Fook Gold (Shenzhen) Company had prior right and Ma’s claim is rejected. Ma again filed a lawsuit against Shenzhen Chow Tai Fook Company for selling Chow Tai Fook’s “Jiao Ren in Chinese” series of diamond jewelry on JD.com for the same reason, and asked the other party to compensate for the losses. As the owner of the registered trademark no. 6703145, Ma’s application for registration of the disputed mark violated the principle of good faith. Under the circumstance that the existing evidence was insufficient to prove that he has the real intention to use and the fact of using the disputed mark, he still filed lawsuits against trademark holder who has the legitimate right to use its marks for compensation. Ma’s actions obviously constituted abuse of rights, and should be stopped and given a negative evaluation in accordance with the law.

Accordingly, Shenzhen Chow Tai Fook’s behavior did not infringe Ma’s trademark right in the case. The first instance court’s decision was affirmed.

3. Michelin in Chinese was recognized as well-known and successfully invalidated “Mei Qi Lin in Chinese”

The Beijing High Court recently rendered a decision to reject the petition to appeal for a trademark invalidation case between the appellant CNIPA and the appellee Michelin Group Corporation (“Michelin”), and the third party in the original trial, Kunming Huaxing Seed Industry Co., Ltd. (“Huaxing Seed Industry”). The court affirmed the lower court’s decision.

Disputed Mark	Cited Mark
Reg. No. 31295320	Reg. No. 6167650

The issue of this case was whether the registration of the disputed mark constituted the situation referred to in Article 13, Paragraph 3 of the 2013 Trademark Law. The Beijing High Court reasoned that the sales audit data, market share and ranking, media publicity reports, advertising expenses, inquiries records of the National Library of China, administrative and judicial protection records and other evidence submitted by Michelin can prove that prior to the disputed mark’s application date, Michelin’s cited mark has been widely known to the relevant public in China on the product of “pneumatic tires for vehicles” through long-term and extensive publicity and use, and constituted a well-known trademark.

The Disputed Mark was a word mark consisted of the Chinese character “Mei Qi Lin in Chinese,” which was similar to the Cited Mark “Mi Qi Lin in Chinese” in terms of text, pronunciation, appearance, etc., and constituted a copy or imitation of the Cited Mark. The Disputed Mark’s approved goods for “plant seeds, fresh vegetables, plants, and fresh fruits” were different than the Cited Mark’s approved goods for “pneumatic tires for vehicles” of which the Cited mark was known for. But both were closely related to daily consumption and there were certain degrees of overlap in its respective consuming public. Under the circumstance that the Disputed Mark constituted as a copy and imitation of the Cited Mark, when the relevant public buys the above-mentioned goods, it is easy to think that the Disputed Mark has a considerable degree of connection with the Cited mark and Michelin, thereby diminish the Cited Mark’s distinctiveness or unfairly use the Cited Mark’s market reputation, which was detrimental to Michelin’s well-known Cited Mark’s interests. Therefore, the registration of the Disputed Mark constituted the circumstance specified in Article 13(3) of the Trademark Law of 2013, and should be declared invalid.

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Weekly China Trademark News Updates

July 27, 2022

1. The CNIPA issued the “Guidelines for Intellectual Property Rights Protection at Exhibitions”

The CNIPA issued the “Guidelines for Intellectual Property Rights Protection in Exhibitions” (the “Guidelines”) on July 20, 2022. The Guidelines consist of four chapters and twenty-two articles, which are applicable to intellectual property rights protection in various online and offline economic and technological exhibitions, trade fairs, expositions, and other activities held within the territory of China. The Guidelines also focus on intellectual property protection prior to, during, and after an exhibition.

2. The Beijing Trademark Association issued the “Research Report on the Protection of Service Trademarks in the Goods Retail Industry”

The Beijing Trademark Association issued the “Research Report on the Protection of Service Trademarks in the Goods Retail Industry” (the “Report”) on July 20, 2022. In order to solve the difficulties encountered during the protection of service marks in the goods retail industry for enterprises in China, the Report focuses on analysis and research of the practice of judicial protection and other aspects, put forward suggestions and opinions on the protection of retail services in China.

3. Traditional Chinese characters with simple designs do not constitute works of art that can be protected under the Chinese Copyright Law

BAU-FOR-MAT KUCHEN GMBH & CO. KG owns the “” mark (“Disputed Mark”) with reg. no. 12077117. Top Daily Chemicals (China) Co., Ltd. (“Top Company”) claims that the Disputed Mark infringes its prior copyright and filed a trademark invalidation against the Disputed Mark. The Beijing High Court found that the “work” involved in the prior copyright claimed by Top Company was a pattern of “Miao Jie in Chinese,” but the font of its “Miao Jie in Chinese” characters was not obviously different than the existing Chinese fonts, which was not enough to reflect a personalized expression. It is not inappropriate for the first-instance judgement to find that it lacked originality and did not constitute a work protected by the Chinese Copyright Law. Top Company’s claimed work only consisted of the two Chinese characters “Miao” and “Jie,” which was too simple to reflect the originality of the work through the meaning of the Chinese characters and did not constitute a written work. Therefore, the Beijing High Court found that Top Company’s invalidation claims could not be supported and affirmed the first instance judgement.

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