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.
East IP is pleased to announce the expansion of its trademark and IP enforcement practices with the arrival of two new teams, including SIPS, a market-leading IP firm based in Hong Kong, founded by Joe Simone, and a team of six partners with 36 professionals led by Jimmy Huang Jingwen, from the Beijing office of a top Chinese law firm.
East IP is pleased to announce the expansion of its trademark and IP enforcement practices with the arrival of two new teams, including SIPS, a market-leading IP firm based in Hong Kong, founded by Joe Simone, and a team of six partners with 36 professionals led by Jimmy Huang Jingwen, from the Beijing office […]
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.
Weekly China Brand Protection News
April 30, 2024
1. The China Supreme Court releases the 2023 Top 10 IP Cases
On April 22, the China Supreme Court released the 2023 Top 10 IP Cases and 50 Typical IP Cases. Among these cases, those involving trademark infringement and unfair competition are as follows:
1. The “Siemens in Chinese” trademark infringement and unfair competition disputes
SIEMENS AKTIENGESELLSCHAFT and Siemens (China) Co., Ltd. (“Siemens”) are the rights holders of the “Siemens in Chinese” and “SIEMENS” trademarks. The two trademarks are registered on washing machines and other goods. After long-term use and vigorous promotion by Siemens, these two trademarks have obtained high reputation. Ningbo Qimou Electric Co., Ltd. (“Qimou”) and others registered the name “Shanghai Siemens Electric Co., Ltd.” overseas and extensively used it as a commercial logo on the washing machine products, packaging, and related promotional activities. Siemens claimed that the acts of Qimou and others infringed on its registered trademark rights and constituted unfair competition. The first instance court found that the alleged infringement by Qimou and others did not constitute trademark infringement, but constituted unfair competition. The court held that Qimou and others should immediately stop the infringement and compensate for economic losses of RMB 100 million (USD 138 million) and reasonable expenses of RMB 163,000 (USD 22,500). Qimou appealed. In the second instance, the China Supreme Court found that Qimou and others knew the popularity of the “Siemens in Chinese” and “SIEMENS” trademarks and deliberately used “Shanghai Siemens Electric Co., Ltd.” on washing machine products, causing confusion among consumers and constituted trademark infringement. The use of this logo on packaging and promotional activities also constituted unfair competition. QImou shall bear liability for compensation. Regarding the amount of compensation, although it was difficult to determine Siemens’ actual losses or Qimou’s infringement profits from the evidence, it was sufficient to determine that Qimou’s infringement profits have clearly exceeded the maximum statutory compensation of RMB 5 million. Given that Qimou refused to provide financial information related to the infringement, which has constituted evidence impediment, the first instance court referenced to media reports that Qimou’s annual sales totaled RMB 1.5 billion (USD 207 million), and based on the relevant facts of the case that the sales ratio of the accused infringing products was one-fifteenth in determining the compensation to be RMB 100 million was not wrong. The China Supreme Court dismissed the appeal and affirmed the original judgment.
2. The “Lafite in Chinese” trademark infringement and unfair competition disputes
Chateau Lafite Rothschild (“Rothschild”) is the right holder of the “LAFITE” trademark and the “CHATEAU LAFITE ROTHSCHILD” trademark (collectively as “Cited Marks”). The Cited Marks are registered on alcoholic beverage goods. The Cited Marks obtained high reputation after long-term use. “LAFITE” and “Lafite in Chinese” have established a solid association. On April 1, 2005, Nanjing Jin Mou Wine Co., Ltd. (“Jin Mou”) filed for the “Lafite Chateau in Chinese” mark on wine and other goods. Since then, Jin Mou and others have used labels such as “Lafite Manor in Chinese” and “LAFEI MANOR” in the process of producing, importing, and selling wine, and promoted them on their websites and transaction documents. On December 23, 2016, the China Supreme Court made a retrial judgment and supported the CNIPA’s canceling of Jin Mou’s “Lafite Chateau in Chinese” trademark. Rothschild then sued seven defendants including Jin Mou to the court. The first instance court found that the seven defendants’ acts constituted trademark infringement and unfair competition, and ordered them to stop infringement and applied punitive damages. Jin Mou and others appealed. In the second instance, the China Supreme Court found that Jin Mou and others had bad faith intention to take advantage of the Cited Marks when applying for registration and using the “Chateau Lafite in Chinese” trademark, and they failed to show good faith and trustworthy interests in using the said mark. Their use of “Chateau Lafite in Chinese,” and “LAFEI MANOR” logo constituted trademark infringement, and exaggerating the historical heritage and popularity of the “Lafite Manor in Chinese” wine in publicity constituted false publication. Jin Mou and others obviously acted in bad faith and the infringement was serious. According to Rothschild’s request, punitive damages were applied against Jin Mou and others, and a total of RMB 79.17 million (USD 10.9 million) compensation in economic losses and reasonable expenses were ordered.
2. The Beijing High Court released the Top 10 Judicial IP Protection Cases and the Top 10 Judicial Trademark Authorization and Confirmation Cases in 2023
On April 25, the Beijing High Court released the Top 10 Judicial IP Protection Cases and the Top 10 Judicial Trademark Authorization and Confirmation Cases in 2023. In 2023, Beijing courts applied punitive damages in a total of 26 IP infringement. A significant year-on-year increase.
The trademark infringement and unfair competition disputes involving the “Jegere in Chinese” brand
In the trademark infringement and unfair competition disputes involving “all-round” imitation of “Jagermeister” beer, the defendant imitated the “Jagermeister” mark from liqueur bottle labels, bottle caps, website promotions and other aspects, which was considered an “all-round” brand imitation. In this case, the court applied punitive damages and ordered the defendant to pay RMB 10 million (USD 1.38 million) in compensation.
Mast-Jagermeister SE (“Mast-Jagermeister”) is the owner of registered trademarks such as “Jägermeister in Chinese” and “JÄGERMEISTER.” The Sheng Luo La Liquor Company (“Sheng Luo La”) used logos such as “Jager Haguleisi in Chinese” and Deer Head logos on labels, bottle caps, and official websites of the liquors it produced and sold. The packaging and decoration were the same or similar, and the words “German Master Group Co., Ltd. In Chinese” and other words are used on the website. The defendant applied for the registration of the “Jager Haguleisi in Chinese” trademark on Class 33 on liquors, and after obtaining the registration, he and Sheng Luo La jointly used the “Jager Haguleisi in Chinese” mark on liquor products. Pu Yuan Garden Trading Company is a distributor of Sheng Luo La that sells “Jager Haguleisi in Chinese” liquor on JD.com stores and combines Mast-Jagermeister’s “Jagermeister” liquor with “Jager Haguleisi in Chinese” Liqueur. Mast-Jagermeister claimed that the three defendants had infringed upon its trademark rights and constituted unfair competition, and claimed that punitive damages should be applied.
The first instance court found that Mast-Jagermeister’s “Jagermeister” trademark had been well-known to the relevant public in China on liquor products before the defendant applied to register the “Jager Haguleisi in Chinese” trademark, and constituted a well-known mark. The defendant applied to register a trademark similar to Mast-Jagermeister’s trademark, and the three defendants’ use of the trademark constituted an infringement of Mast-Jagermeister’s well-known trademark rights. The overall appearance similarity between the accused infringing products and Mast-Jagermeister’s products is relatively high, and the accused infringing products were mixed and sold with Mast-Jagermeister’s products, which can easily cause the relevant public mistakenly believe that the said products belong to a series of products or originated from the same source. The defendants’ actions had damaged the goodwill of Mast-Jagermeister’s “Jagermeister” brand. Sheng Luo La’s false publicity has the subjective intention of taking advantage of and free riding Mast-Jagermeister’s reputation. Mast-Jagermeister had issued multiple rights protection statements and sent demand letters to the three defendants. However, after receiving the demand letters, Sheng Luo La and other defendants did not respond in time and continued to infringe. The infringement was serious and punitive damages were applicable. The first instance court held that the three defendants should immediately stop the infringement and eliminate negative impact. Sheng Luo La should compensate Mast-Jagermeister for economic losses of RMB 10 million and the remaining two defendants should be jointly and severally liability for the compensation. Sheng Luo La and Pu Yuan Garden Trading Company appealed. The second instance court dismissed the appeal and affirmed the original judgment.
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Weekly China Brand Protection News
April 23, 2024
1. The Fujian High Court applied punitive damages against infringers of South Korean brand ADLV and awarded RMB 6 million in compensation
Recently, the Fujian High Court concluded a second-instance trademark infringement dispute between Sewoong Global Co., Ltd., (“Sewoong”) and Jingdezhen Dehang Trading Co., Ltd. (“Dehang”), Xiamen Dajun Trading Co., Ltd. (“Dajun”), Feifan Nvlang (Xiamen) Trading Co., Ltd. (“Feifan Nvlang”), an individual Zhou, an individual Lin. The court applied punitive damages based on the obvious serious malicious intent of the infringement by Dajun and Dehang. The court also ordered the infringing products and packaging to be destroyed immediately. The defendants shall be jointly compensating Sewoong for economic losses and reasonable expenses to stop the infringement, totaling RMB 5.925 million (USD814,152)
Cited Marks
The court found that: First, the accused infringing product was the same gods as the approved goods of Sewoong’s “ADLV” mark with reg. no. 28261402, “acmé de la vie” mark with reg. no. 39050794, “acmédelavie” mark with reg. no. 38630247, and “acmédelavie” mark with reg. no. 29065353. The alleged infringing product used identical labels, hang tags, laundry tags, and outer packaging bags, which constitutes infringement. The packaging and hangtag of the accused infringing product use the “www.acmedelavie.com” logo, which includes the main distinctive part of the “acmédelavie” mark with reg. no. 38630247. Therefore, there is basically no visual difference between the two and constitute infringement. The sales carried out by Dehang and Dajun infringed Sewoong’s trademark rights.
Second, Dajun and Dehang comprehensively counterfeited the Cited Marks and obtained huge sales volume and sales. Sewoong filed 25 complaints with e-commerce platform, however, Dajun and Dehang provided false materials and statements to the platform to escape review and continue to sell infringing products. After Sewoong filed this lawsuit, although the flagship store involved stopped selling infringing products, the customer service of the flagship store still diverted customers to the WeChat platform to continue for purchase. Dajun admitted that the infringing products involved in the case were provided to Dehang, but it refused to provide the source of the goods without justifiable reasons. It should be identified as the manufacturer of the infringing products involved in the case. In summary, Dajun and Dehang’s infringement was obvious and intentional, and the infringement was serious, so punitive damages should be applied.
2. Squatters of “ReFa” mark was ordered to immediately stop filing similar marks for registration
Recently, the Ningbo Yinzhou District Court concluded a trademark infringement and anti-unfair competition dispute between MTG Co., Ltd. (“MTG”), a Zhejiang electrical appliance company, a Ningbo electrical appliance company, a Ningbo holding company, a Ningbo network technology company, and a Ningbo electronic technology company (“defendants”). The court found that the defendants’ actions constituted trademark infringement and unfair competition. The infringement of the plaintiff’s exclusive rights to registered trademarks with reg. nos. G1149527, 36415538, and 47113710 should be immediately stopped, and the defendants should jointly and severally compensate the plaintiff for economic losses and reasonable expenses incurred to stop the infringement, totaling RMB650,000 (USD 89,693).
Cited Marks
The court found that: First, the defendants used the “Refa in Chinese”, “refa” and “Refa” logos on the product name of its hair dryer products, product details page, store home page promotion picture, top and bottom of the home page, and on the packaging box and handbag. The “Refa in Chinese” logo is used in the manual, fuselage, etc., which is a trademark use. The “Refa in Chinese” logo is the same as MTG’s trademark, and the goods used constitute identical goods. Such uses infringed MTG’s trademark right. The “refa” and “Refa” logos have the same English composition as MTG’s Cited Mark. The only differences are letter size and composition, which are enough to cause confusion and misunderstanding among the relevant public about the source of the goods. These marks constitute similar. The defendants’ production and sale of the product infringes MTG’s trademark right.
Second, the defendants used the word “ReFa” in the product names and brand marks of the two products, and the “ReFa” logo on the display box, manual, charging cable packaging paper, body, etc. The sonic facial cleansing product constitutes identical goods with the approved goods of MTG’s prior mark with reg. no. G1149527. The rotating facial cleansing product constitutes similar goods to the approved goods in terms of functional use, consumer objects, etc. The “ReFa” logo is identical with MTG’s Cited Mark. “ReFa” shares identical letters and composition with the Cited Mark. The only differences are the letter size and composition, which are enough to cause confusion and misunderstanding among the relevant public about the source of the goods. The marks constitute similar. Therefore, the use of the said logo, production and selling of the accused infringing products infringed upon MTG’s trademark right.
Third, MTG’s cited mark with reg. no. G1149527 applied for extension of protection in China on March 2, 2013. In 2013, MTG started promoting the ReFa brand and selling products. Both “ReFa in Chinese” and “ReFa” have high originality. The defendants first began to file for “REFA” and “Refa in Chinese” marks in August 2014, and began to file a large number of these marks in 2017. When the defendants applied for the “REFA” and “Refa in Chinese” marks after the MTG’s products entered the Chinese market and when MTG’s brand had a certain fame and influence in China’s household beauty equipment industry. Such marks were highly similar to the Cited Marks in terms of Chinese and English composition, and the defendants also failed to provide a reasonable explanation for its intention to register these marks and the source of the design creation. It can be concluded that the defendants had the intention to imitate MTG’s Cited Marks. Judging from the classes and quantity of the marks filed by the defendants, the numbers were obviously beyond the needs of normal business operations. It can be concluded that the defendant has the intention to hoard trademarks and engage in unfair competition with the goodwill of MTG’s brand. The said defendants’ actions of constituted 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 |
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.