With over 200 dedicated professionals, Beijing East IP has helped a full spectrum of clients – from startups to Fortune 500 corporations to domestic multinational companies – on their intellectual property issues in China.
Welcome to
Beijing East IP.
Beijing East IP was founded in 2002 by Dr. GAO Lulin and a group of experienced Chinese and international attorneys to provide top quality intellectual property services in China.
China’s new punitive damages system bolsters protection against trademark infringement
Recently, BEIJING EAST IP LTD assisted a Chinese sports equipment company to successfully solve the problem that its products sold on Amazon in Japan were complained by competitors for infringing Japanese design patent, and quickly lifted the delisting punishment.
Recently, Yongyu Zhang and Kaiyuan Song, agents of BEIJING EAST IP LTD., represented Daio Paper Corporation in the case of invalidation of “packaging bag” design patent, and successfully maintained the validity of the design patent.
Weekly China Brand Protection News
March 13, 2024
1. The use of the right holder’s trademark on a mobile map is a trademark use
Recently, the Guang’an Intermediate Court concluded a trademark infringement dispute between Sichuan Jibang Trading Co., Ltd. (“Jibang”) and Yuechi County Yumin Gas Station (“Yumin Gas Station”). The court determined that Yumin Gas Station’s use of the “Zhongchuan Petroleum in Chinese” logo on the mobile map constituted a trademark infringement of “Zhongchuan Petroleum and Design” with reg. no. 21415831 of Jibang. The use should be stopped, and Yumin Gas Station should compensate Jibang for economic losses and reasonable expenses paid to stop the infringement totaled RMB50,000 (USD7,000).
Cited Mark
The court found that: First, Yumin Gas Station used the name “Zhongchuan Petroleum Yumin Agricultural Machinery Gas Station” in the mobile phone map to attract customers through the mobile phone map. Car owners often use mobile phone maps for navigation when driving, and passing vehicles can know where to refuel through the mobile phone map. At the same time, when refueling, car owners often want to have guaranteed oil quality and choose branded gas stations to refuel. The prominent use of the words “Zhongchuan Petroleum in Chinese” in the name plays a role in indicating the source of goods or services. Therefore, the use of “Yumin Gas Station” is a trademark use.
Second, the “Zhongchuan Petroleum in Chinese” used by Yumin Gas Station on the mobile map and the registered trademark of Jibang have the same composition and arrangement order, and can be regarded as the same trademark. Yumin Gas Station did not provide the time when it applied for trademark registration and the time when it used the registered trademark at the beginning of its establishment or earlier than Jibang. It used the “Zhongzhou Petroleum in Chinese” or “Zhongchuan Petroleum in Chinese” logo and had a certain impact, which was not in compliance with the requirements. It did not fulfill the elements of prior use defense. Yumin Gas Station used the same trademark as the registered trademark on the same goods without the permission of the trademark registrant, which infringed the trademark right of Jibang, and it should bear corresponding legal liability.
2. Bosch prevailed in a trademark infringement and unfair competition lawsuit
Recently, the Sichuan High Court concluded a second instance lawsuit for trademark infringement and unfair competition against Robert Bosch Co., Ltd. (“Bosch”), Bosch (China) Investment Co., Ltd. (“Bosch China”), Sichuan Bosch New Ventures Trading Co., Ltd. (“Sichuan Bosch”), Chengdu Yiluxing Petrochemical Co., Ltd. (“Yiluxing”), an individual Zheng, an individual Sun, Chengdu Maxto New Energy Lubricating Materials Co., Ltd. (“Maxto”). The court found that the defendants’ behaviors constituted an infringement of Bosch’s and Bosch China’s trademarks “BOSCH”, the design “” and “Bosch in Chinese.” The court ordered that Sichuan Bosch, Yiluxing, and individuals Zheng and Suns should immediately stop infringement and jointly compensate the plaintiff for economic losses of RMB3 million (USD417,000). As a co-manufacturer of the accused infringing products, Maxto should be jointly and severally liable for RMB 150,000 (USD20, 870).
Cited Marks
The court found that: First, Sun and Zheng, as natural persons, implemented the use of “Bosch Xinchuang”, “” and “Bosch Zhenyu” by establishing Sichuan Bosch, Yiluxing, Yongxing Business Department, and Yuanji Business Department. The act of using the accused infringing marks and producing and selling the accused infringing products has combined to form an intrinsically linked joint infringement. Maxto, together with Sun and Zheng, Yiluxing, and Sichuan Boschs jointly produced and sold some of the accused infringing products. The above acts all have the function of identifying the source of goods and are trademark uses.
Second, compared the allegedly infringing mark “” with the cited mark “,” both are circular graphic with the same structure. Only the direction of the graphic within the circle is different. They constituted similar. “Bosch Xinchuang in Chinese” and “Bosch Zhenyu in Chinese” are similar to the trademark “Bosch.” The Cited marks has formed a corresponding relationship with “Bosch in Chinese” through its use and promotion in China. Therefore, the use of “Bosch Xinchuang in Chinese” and “Bosch Zhenyu in Chinese” will also cause confusion among the relevant public about the source of the goods.
Third, the goods approved for use by the plaintiff’s trademark and the accused infringing products are both in motor vehicles and are related in terms of consumer targets, sales channels, etc. The relevant public generally believes that they have a specific connection and could easily cause confusion. They constitute similar goods. The defendants’ behaviors constitute trademark infringement.
In addition, the word trademarks “Bosch in Chinese” and “BOSCH” have a high reputation in their fields through the long-term operation of Bosch and Bosch China. Bosch Xinchuang was registered in 2016. As a competitor in the same field, it registered “Bosch in Chinese” as part of its corporate name and used it in its business activities. Its registration was enough to confuse the relevant public and to lead the public to mistakenly believe that the allegedly infringing products it produced and sold originated from Bosch or Bosch China, or believe that there was a specific connection with Bosch or Bosch China. Their acts constitutes unfair competition.
Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China |
Weekly China Brand Protection News
March 7, 2024
1. Parallel imports that do not cause confusion or damage to goodwill do not constitute infringement
The Chongqing First Intermediate Court recently made a decision regarding a dispute over trademark infringement between the plaintiff Guangzhou Aotiwa Biotechnology Co., Ltd. (“Aotiwa”) and the defendant Chongqing Beigou Network Technology Co., Ltd. (“Beigou”). The court found that the Beigou did not infringe and dismissed Aotiwa’s lawsuit.
Aotiwa registered the “” mark with reg. no. 25792637 in Class 5, the “Niuruiyou in Chinese” mark with reg. no. 25797592 in Class 5, the “” mark with reg. no. 61116472 in Class 29, the “Niuruiyou in Chinese” mark with reg. no. 61114540 in Class 29. Aotiwa discovered that Beigou was selling lactoferrin products with the ” Niuruiyou in Chinese” and “NEURIO” through the Taobao store “Zhengyige Overseas Direct Mail Store” and believed that Beigou was importing and selling without authorization and sued based on its registered trademarks for RMB 10 million in compensation and RMB 500,000 in reasonable costs in stopping the infringement. Beigou challenged Aotiwa’s right to sue and argued that both the accused infringing goods and the goods of Aotiwa and its subsidiary “Niurui Trading Company” were imported from SUNNYA in Australia. Beigou claimed that its products did not cause confusion and its selling of these products did not constitute infringement.
The court found that Aotiwa and Niurui Trading Company signed a “Trademark Exclusive Use Agreement” in 2017, agreeing that Aotiwa would authorize Niurui Trading Company to exclusively use its NEURIO-related trademarks registered in China from August 1, 2017 to July 30, 2027. SUNNYA is the owner of the “Niuruiyou in Chinese” mark and the “NEURIO” series marks in Australia and New Zealand. SUNNYA and Niurui Trading Company signed the “Product Agency Agreement” and “Agency Supplementary Agreement” successively in 2019, stipulating that Niurui Trading Company will be the general agent and import company of SUNNYA’s Neurio products in China and be responsible for the sales in China. For sales and promotion in China, the cooperation period is from March 29, 2019 to March 28, 2024. It was also found that SUNNYA filed an application for invalidation of the above-mentioned marks on April 24, 2023.
Based on the pleadings of both parties, the court commented on the key issues in dispute in the case as follows:
1. Whether Aotiwa is a qualified plaintiff in this case. In this case, the registered marks with reg. nos. 25792637, 25797592, 61116472, and 61114540 are still valid. As the exclusive owner of the said marks, Aotiwa has obtained the right to sue for trademark infringement. Although Aotiwa authorized NEURIO-related trademarks registered in China to be used exclusively by Niurui Trading Company in China, Niurui Trading Company did not file a lawsuit against the infringement. Aotiwa as the owner of the registered trademark has the right to sue.
2. Whether Beigou infringes upon Aotiwa’s registered trademark. First, the accused infringing goods falls into the approved use scope of the Aotiwa’s registered trademarks. The accused infringing logo constituted identical marks with Aotiwa’s. However, according to the traceability results of scanning codes, the accused infringing products were genuine. Second, SUNNYA is the overseas trademark owner of the “NEURIO” trademarks. The accused infringing goods sold by Beigou were authorized by SUNNYA. The accused infringing goods were purchased through cross-border e-commerce by Beigou from SUNNYA. The source of its goods was the same as that of Aotiwa. The acquisition method was legal. The evidence on record was sufficient to prove that the source of Beigou’s goods was legal. Third, the evidence in the case proves that Beigou has reviewed the source and authorization status of the goods, which had fulfilled its reasonable duty of care and has no subjective intention to infringe. Therefore, the accused infringing products were genuine goods obtained through parallel imports. Beigou’s store also clearly stated that the products had an official authorization letter from SUNNYA. The manufacturer, traceability code, and other information on the goods were also clearly stated. These goods will not cause consumers to confuse the source of the goods, nor will it impair the identification function of the trademark. The existing evidence was not sufficient to prove that the alleged infringement has affected Aotiwa’s trademark’s function of ensuring product quality or has the consequences of abusing or diluting the goodwill of Aotiwa’s registered trademarks. Aotiwa’s evidence was insufficient to prove Beigou’s infringement. Accordingly, Aotiwa’s claims cannot be established.
2. An AI company generated Ultraman pictures were found liable of copyright infringement – the world’s first AIGC platform copyright infringement case
The Guangzhou Internet Court recently decided a first instance decision involving the plaintiff Shanghai Xinchuanghua Cultural Development Co., Ltd. (“Xinchuanghua”) and the defendant an AI Company regarding internet infringement (which has been changed to a copyright infringement dispute). The court ordered the AI company to compensate Xinchuanghua for economic losses of RMB 10,000 (USD1,400) (including reasonable expenses). This is the world’s first effective judgment recognizing an AIGC platform infringes the copyright of others.
Tsuburaya Production Co., Ltd., the copyright owner of the “Ultraman” series of works, signed a “Certificate of Licensing” with Xinchuanghua, and exclusively authorize the copyright of the Ultraman series images to Xinchuanghua and granting Xinchuanghua the right to defend its rights. The defendant operates the Tab (pseudonym) website, which has AI conversation and AI-generated drawing functions. Xinchuanghua found that when the Tab website was asked to generate Ultraman-related pictures (such as inputting “generate an Ultraman Dyna”), Tab could generate Ultraman pictures that were substantially similar to the plaintiff’s Ultraman image. Tab’s AI painting function needs to be recharged to use. Xinchuanghua believed that the defendant’s action had caused serious damage to it, so it sued the defendant to stop the infringement and claimed compensation of RMB 300,000.
The issues of the case are:
1. Whether the defendant infringed the Xinchuanghua’s right of reproduction, adaptation and information network dissemination
The court held that the Ultraman works involved in the case enjoy a high reputation and can be accessed, queried and downloaded on major video websites. In the absence of contrary evidence by the defendant, there is a possibility that the defendant has access to the Ultraman works involved in the case. The pictures involved in the case provided by Xinchuanghua and generated by the Tab website partially or completely reproduced the original expression of the artistic image of “Ultraman” Therefore, the defendant copied the Ultraman work involved in the case without authorization, infringing Xinchuanghua’s right to copy. In addition, some of the generated pictures involved in the case formed new features while retaining the original expression of the “Ultraman Tiga Composite” work. The defendant’s action constituted an adaptation of the Ultraman work involved in the case, which infringed Xinchuanghu’s right to adaptation of Ultraman.
Considering that this case is a new situation of infringement in the context of the development of generative artificial intelligence, and the court has supported Xinchuanghua’s claim of infringement of reproduction rights and adaptation rights, the same alleged infringement has been included in the control scope of reproduction rights and adaptation rights, Xinchuanghua’s claim that the defendant infringed the right to disseminate information through information networks will not be examined.
2. What civil liability should the defendant bear?
On the issue of stopping the infringement. The court held that the defendant, as a service provider, had infringed Xinchuanghua’s copyright in the Ultraman works, and should bear the responsibility to stop the infringement, that is, to stop generating infringing pictures. The defendant should take measures to prevent its service from continuing to generate pictures that are substantially similar to the Ultraman works involved in the case. The prevention measures should be such that users normally use prompt words related to Ultraman will not generate pictures that are substantially similar to the Ultraman works involved in the case. As for Xinchuanghua’s request that the defendant delete the Ultraman materials involved in the case from the training data, the defendant did not actually conduct model training, so the request is not supported.
On the issue of compensation for losses. The court held that the Tab website operated by the defendant did not establish a relevant complaint and reporting mechanism, lacked potential risk warnings to users, and did not clearly mark the products it provided. Therefore, the defendant, as an AIGC service provider, failed to fulfill its reasonable duty of care and has subjective fault, should bear the corresponding liability for compensation. After comprehensive consideration of factors such as the high market popularity of the Ultraman works involved in the case, the defendant’s active adoption of technical preventive measures after responding to the lawsuit, which had a certain effect, the limited scope of the infringement, and the reasonable necessity of Xinchuanghua’s cost to protect its rights, the court used its discretion and ordered the defendant to compensate Xinchuanghua for economic losses of RMB 10,000 (including reasonable expenses).
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 |
Appointed Translators: Jason WANG / Austin CHANG, Beijing East IP Law Firm Author: Baoqing ZANG, Trademark Review and Adjudication Board (TRAB) Original Chinese text: China Industry and Commerce Newspaper June 21, 2016
Securing well-known mark (WKM) recognitions in China can give a broader protection to brand owners in both administrative and judicial disputes.
China has three types of patents, i.e., invention, utility model, and design. The utility model patent does not have the counterpart in some other jurisdictions such as the USA, so some essential aspects of the utility model patent will be introduced below for better understanding of it.
On December 20, 2017, in the Patent Reexamination Board of SIPO (PRB) v. Beijing Winsunny Harmony Science & Technology Co., Ltd. ((2016)最高法行再41号), the Supreme Court held that a Markush claim, when drawn to a class of chemical compounds, should be interpreted as a set of Markush elements rather than a set of independent specific compounds. The present case is a petition for retrial filed by the PRB, requesting the Supreme Court to review the second-instance decision made by the Beijing High People’s Court (“High Court”). In reversing the PRB’s decision in the invalidation proceedings instituted by Beijing Winsunny Harmony Science & Technology Co., Ltd. (“Winsunny”), the High Court recognized a Markush claim as claiming a set of parallel technical solutions.