Weekly China Trademark News Updates

March 1, 2021

1. Criminal intellectual property offense can now be sentenced up to 10 years in jail

The eleventh amendment of the China Criminal Law will come into force on March 1, 2021. Among the amendments regarding intellectual property protections, service trademarks protections were freshly added, crack down on copyright infringement were strengthened, the types of criminal penalty for trade secret infringement were supplemented, and the maximum intellectual property sentence were increased to 10 years in prison across the board.

2. New Balance could not invalidate “Xin Bai Lun in Chinese”

The Beijing High Court affirmed the first instance court decision to maintain the “Xin Bai Lun in Chinese” mark with Reg. No. 4100879 in Class 35 (“Disputed Mark”) owned by Guangzhou Xin Bai Lun Enterprise Management Co., Ltd. (“Xin Bai Lun”). In its decision, the court reasoned that the cited marks owned by New Balance, namely, “New BALANCE” (“Cited Mark 1”) with Reg. No. 175153 and “NEW BALANCE” (“Cited Mark 2”) with Reg. No. 748744 were English marks, and there were obvious differences in the Chinese meaning, compositions, pronunciations, and overall appearances between the Cited Marks and the Disputed Mark. Thus, New Balance’s claims that “New Balance” had established association with “Xin Bai Lun in Chinese” and the Disputed Mark constituted as a similar mark used on identical or similar goods could not be supported.

Disputed Mark

Cited Mark 1	Cited Mark 2

New Balance’s other claims against Xin Bai Lun were also not supported by the court including prior trade name right, prior specific name right of famous goods, prior non-registered trademark right, other provisions stipulated in Article 31 and 41 of the 2001 China Trademark Law.

The case number is (2020) Jing Xing Zhong No. 6686.

3. JEEP stroke out “JEEPIN and Ji Pin Hui in Chinese”

The Beijing High Court held that the mark “JEEPIN and Ji Pin Hui in Chinese (集品会)” with app. No. 12130235 in Class 25 (“Disputed Mark”) filed by Fujian Ji Pin Decoration Design Engineering Co., Ltd. (“Ji Pin”) was a similar mark used on identical or similar goods to the prior marks owned by FCA US LLC.

Disputed Mark

Cited Mark 1-4	Cited Mark 5	Cited Mark 6

The court reasoned that the Disputed Mark was a combination mark of English “JEEPIN” and Chinese “Ji Pin Hui in Chinese” filed in Class 25 for clothing related goods. The first five cited marks owned by FCA US LLC all consists of “JEEP” or “Jeep” in Class 25 for clothing related goods. Compared to the first five cited marks, the Disputed Mark constituted similar marks in composition, meaning, and overall appearance. The sixth cited mark “JEEP in Chinese (吉普)” in Class 25 for clothing relate goods had established one-to-one corresponding association with “JEEP.” Thus, the Disputed Mark constituted as similar mark with the sixth cited mark. Moreover, FCA US LLC submitted sufficient evidence to prove that its “JEEP” trademarks had obtained high fame through widespread promotions and uses. The court concluded that when the Disputed Mark and the cited marks one to six used on similar goods were likely to cause consumers who paid general attention to be confused in believing that the source of goods was identical or that the providers were specifically affiliated.

The case number is (2020) Jing Xing Zhong No. 4647.

4. Rockwool International won against the “ROCKWELL” mark

The Shanghai IP Court vacated the appeal filed by Shandong Xin Rui Yu New Thermal Insulation Material Co., Ltd. (“Xin Rui Yu”) against Rockwool International A/S (“Rockwool”) and affirmed the first instance decision in favor of Rockwool that ordered Xin Rui Yu to immediately stop all infringing conducts and pay RMB 1.95 million (USD 300,000) to Rockwool for economic loss and reasonable legal costs.

The court concluded that Xin Rui Yu’s use of the “ROCKWELL” and “Luo Ke Wei in Chinese (洛克威)” marks and registration of “www.cnrockwel.com” domain name infringed upon Rockwool’s exclusive registered “ROCKWELL” trademark right. The court reasoned that Xin Rui Yu intentionally changed its corporate name to “Luo Ke Wei in Chinese (洛克威)” and used “ROCKWELL,” highly similar to “ROOKWOOL,” as its trade name. Using mark similar to Rockwool’s corporate name as its corporate name and trade name was likely to cause confusion to the public and amounted to unfair competition. Moreover, Rockwool submitted sufficient evidence in support of its claims during the first instance. In contrast, Xin Rui Yu failed to submit contracts executed during operation, account books, etc. as requested by the court without justified reasons, which constituted as obstruction to produce evidence. Accordingly, the first instance court’s findings based on Rockwool’s claims and evidence were appropriate.

The case number is (2020) Hu 72 Ming Zhong No. 372.

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