Weekly China Brand Protection News

June 5, 2024

1. Selling goods during webcasting infringed the “BELLE in Chinese” trademark. The court applied punitive damages and ordered RMB 22 million in compensation

Fuyang Co., Ltd. (“Fuyang”) is the owner of the “BELLE” mark with reg. no. 1815147, the “BELLE in Chinese” mark with reg. no. 3086374, and the “BELLE” mark with reg. no. 37518850 (collectively as “Cited Marks”). The Cited Marks are all approved for “shoes” related goods in Class 25.  Xinbaili Shoes (Shenzhen) Co., Ltd. (“Xinbaili”) and Lirong Shoes (Shenzhen) Co., Ltd. (“Lirong”) are legally authorized by Fuyang to file a lawsuit in their own name for infringement of the Cited Marks and unfair competition, and to pursue relevant infringement liabilities.

Xinbaili and Lirong found through investigation that in February 2021, a Wenzhou e-commerce company (“Wenzhou Company”) used the “BELLE” and “BELLE in Chinese” marks on their Douyin account named “Australian Belle Official Flagship Store” without authorization. In July 2021, Liu obtained the “” mark with reg. no. 5925271 that was approved for use on goods such as “shoes” in Class 25. From April 15, 2021 to May 26, 2022, Liu registered several individual business names, including “Wezhou City Lucheng District Huibu Shoes” and used them to register and operate multiple accounts on Douyin, including “Australian Belle Official Flagship Store” and “Abao’s Strictly Selected Women’s Shoes.” Liu sold shoes bearing “” and “AOZHOUBELLE” on these accounts.  Xinbaili and Lirong sued Wenzhou Company and Liu to the Wenzhou Intermediate Court based on trademark infringement and unfair competition with a request to order the Wenzhou Company, Liu to immediately stop infringement and eliminate any impacts, Liu to compensate their loss of RMB 44.8 million (USD 6.19 million), punitive damages of RMB 89.6 million (USD 12.37 million), and reasonable expenses of RMB 189,960 (USD 26,233).

The Wenzhou Intermediate Court held that: Wenzhou Company and Liu used the logo similar to the Cited Marks without authorization, which constituted trademark infringement. In view of the fact that the alleged infringement constituted trademark infringement, it is no longer necessary to repeat the analysis on whether the same behavior constituted unfair competition. Regarding Liu’s claim that he was the owner of the “” mark and that it was legitimate to use the alleged infringing logo because the said mark was a combination of “Australia Belle in Chinese” and “AOZHOUBAILI”. However, “AOZHOUBAILI” was replaced with “AOZHOUBELLE” in actual use, it showed that Liu had a strong subjective intention to infringe, which was difficult to be justified. Therefore, the court did not accept this defense. Because the online store in question had stopped selling the alleged infringing goods, the plaintiff’s request to stop the infringement was not supported. The request for Wenzhou Company and Liu to eliminate the impact and Liu to compensate for the loss in the form of one-time punitive damages was supported. In summary, the Wenzhou Intermediate Court ruled that Liu should compensate for economic losses (including reasonable expenses) of RMB 22.1 million, the Wenzhou Company and Liu should publish a statement to eliminate any impact.

Liu appealed to the Zhejiang High Court, but the appeal was dismissed and the lower court’s judgement was affirmed.

2. Bad faith filing of “Bently Lu Zhi in Chinese” should not be approved for registration

Plaintiff Bin Li He Zong (Xiamen) Supply Chain Management Co., Ltd. (“Bin Li”) appealed the CNIPA’s decision to refuse the registration of the “Bently Lu Zhi in Chinese” mark with No. 41562537 designated in Class 33 for wine related goods to the Beijing IP Court. The Beijing IP Court dismissed Bin Li’s appeal.

The issue was whether the application for registration of the disputed trademark violated Article 44(1) of the Trademark Law (trademark obtained through deceit or other unfair means). The Court held that the plaintiff had applied for the registration of 51 trademarks, including several trademarks containing the words “Bentley” and “Bentley in Chinese”, and including marks containing the wing design. “Bentley”, “Bentley in Chinese” and the wing design are marks that enjoy certain degree of fame owned by Bentley Motors Ltd., the third party in the automobile goods. The plaintiff applied for the registration of a number of trademarks that were highly similar to the third party’s Chinese, English and graphic marks, which was obviously in bad faith. The plaintiff squatted the third party’s prior trademark applications with a large number of applications, which has seriously disrupted the order of trademark registration management, damaged the public interest, and these marks should not be approved for registration. Although the disputed mark has not yet been approved for registration, the CNIPA correctly refused the registration by applying Article 44(1).

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