Weekly China Trademark News Updates

November 29, 2022

1. CNIPA released the Understanding and Application of the Standards for Determining General Trademark Violations

From November 8 to November 18, the CNIPA successively released nine articles of “Understanding and Application of the Standards for Determining General Trademark Violations,” (“Understanding and Application”) which explained in detail the 35 articles of the “Standards for DeterminingGeneral Trademark Violations,” (“Standards”) and answered in a timely manner the understanding and application problems encountered during the implementation of the Standards.

In “Understanding and Application,” the CNIPA explained the Standards with 15 explanatory cases, including the former Shanghai Municipal Administration for Industry and Commerce (“AIC”)’s investigation and punishment of a company in Shanghai for unauthorized use of the name and emblem of the United Nations, the former Nanjing Municipal AIC’s investigation and dealing with a Jiangsu company’s unauthorized use of the British flag, Shanghai Songjiang District Market Supervision Administration’s investigation and handling of a Shanghai company’s bad faith trademark registration case, the “Call a Duck & Design” trademark refusal appeal case, and several counterfeit registered trademarks cases, trademark infringements, voluntary changes to registered trademarks. This is to help law enforcement officers to better understand the enforcement standards for general trademark violations.

Among them, regarding the reference basis for “departments in charge of trademark law enforcement to investigate and deal with bad faith trademark registration” stipulated in Article 33 of the “Standards,” the “Understanding and Application” pointed out: “It should be noted that, with respect to violations of illegal use of trademarks stipulated in Article 10 of the Chinese Trademark Law that may be investigated and dealt with by the department in charge of trademark law enforcement, the investigation and handling of bad faith trademark registration generally requires relevant effective decisions or rulings from the CNIPA as evidence. At the same time, the effective decision or ruling is not a sufficient element for finalizing a case, and a judgment needs to be made in light of the specific circumstances of the case.”

Understanding and Application is conducive to promoting the implementation of the “Standards,” and then realizes the purpose of the “Standards” to “strengthen trademark management, strengthen trademark law enforcement business guidance, and unify law enforcement standards.”

2. Reversing First Instance Judgment, Beijing High Court Identified “Budweiser in Chinese” as Well-Known Trademark and Provided Cross-Class Protection

Recently, the Beijing High Court recognized “Budweiser in Chinese” as a well-known mark and granted cross-class protection as the basis to invalidate the Disputed Mark “Budweiser Mooncake in Chinese.” The lower court and the CNIPA’s decisions were vacated.

The Disputed Mark was filed by a food company on February 25, 2014 and allowed on August 14, 2015. Before its fifth registration anniversary date, Budweiser filed an invalidation petition on August 4, 2020.

On July 22, 2021, the CNIPA found that the Disputed Mark did not violate either Article 13(3) of the Chinese Trademark Law or Article 32 for “damaging other’s existing prior rights,” and maintained the Disputed Mark.

Budweiser appealed to the Beijing IP Court. The court found that: first, the evidence submitted was insufficient to prove that before the Disputed Mark’s application date, the Cited Mark had been widely known in mainland China on beer related goods and reached the degree of fame required to be recognized as a well-known mark. Second, the Disputed Mark’s approved goods for mooncake were obviously different from the Cited Mark’s approved goods for beer in terms of function, use, consumer, sales channels, etc. Further considering the Disputed Mark’s owner has obtained registration of the “Budweiser in Chinese POWER & Design” mark since 1996 for goods in class 30 and coexisted with “Budweiser in Chinese” mark from 2002 to 2019 on mooncake goods, the Disputed Mark would not confuse the relevant public and did not damage Budweiser’s interests. Thus, the Disputed Mark did not violate Article 13(3) of the Chinese Trademark Law.

Regarding Article 32, the court found that Budweiser’s evidence can barely prove that there was any use of the Cited Mark on mooncake related goods prior to the Disputed Mark’s application date, thus, it cannot prove that the “Budweiser in Chinese” trade name obtained certain fame and was known to the public prior to the Disputed Mark’s application date on mooncake related good. The court did not support Budweiser’s prior trade name right claim.

Budweiser appealed to the Beijing High Court. The second instance court found that the Cited Mark had reached the degree of well-known on beer related goods before the Disputed Mark’s application date. The distinctive part of the Disputed Mark is identical with the Cited Mark which has constituted copy and imitation of a well-known mark. The Disputed Mark’s approved goods for mooncake related goods and the Cited Mark’s well-known goods beer are all daily food and beverages in daily life, consumers for both goods highly overlapped. The relevant public are likely to confuse that the source of the two marks are identical or the two are highly associated, which would mislead the relevant public and damage Budweiser’s well-known mark and interests. Although the food company provided relevant award certificates and promotional reports on its “Budweiser in Chinese” mooncake, such evidence was insufficient to prove the registration and use of the Disputed Mark would not confuse the relevant public. Thus, the Disputed Mark violated Article 13(3) of the Trademark Law and shall be invalidated.

3. “HAMPTON WATER” overcome absolute grounds and secured registration via proceedings before the Courts

HMPTN WATER LLC filed the “HAMPTON WATER” mark (“Disputed Mark”) in class 33 for wine related goods on December 26, 2019. On January 26, 2021, the CNIPA found that the “HAMPTON” in the Disputed Mark is a foreign geographical name known to the public and did not have other distinctive meanings and rejected the Disputed Mark for registration. HMPTN appealed to the Beijing IP Court.

The court found that the Disputed Mark consists of “HAMPTON” and “WATER,” and “HAMPTON” is a common last name and even when designated as a geographical name, there are many cities and towns with name of or incorporating “HAMPTON,” which means this word does not point to a single geographic place known to the public. None of the cities and towns with the name of or incorporating “HAMPTON” is more famous than the others to China’s relevant public. Thus, to China relevant public, “HAMPTON” as a last name is more distinctive than as a geographical name. When examining the Disputed Mark as a whole on wine related goods, the main meaning of the Disputed Mark is no longer based on a geographical name. The Disputed Mark would not exclude entities in other cities or towns to use “HAMPTON” as its geographical name. Considering “HAMPTON” does not indicate a single geographical place, nor does the relevant public believe that “HAMPTON” represents the relevant goods’ place of origin, the Disputed Mark is distinctive and can be distinguished as a trademark to be registered and used. The CNIPA’s decision shall be corrected.

The CNIPA appealed to the Beijing High Court. The Beijing High Court affirmed that “HAMPTON” is a common English last name. Even used as a geographical place name, there are many cities and towns around the world use “HAMPTON” or include “HAMPTON” as its name. “HAMPTON” does not indicate only one geographical place. Considering the Disputed Mark also includes “WATER,” the relevant China public are unlikely to associate the Disputed Mark with a foreign geographical place name. Thus, the Disputed Mark does not violate Article 10(2) of the 2019 Trademark Law.

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Weekly China Trademark News Updates

November 22, 2022

1. The Beijing High Court found that “Ultraman in Chinese” constituted a well-known mark and granted cross-class protection

On October 31, 2022, the Beijing High Court made a final judgement for a trademark infringement and unfair competition dispute between Shanghai Xinchuanghua Culture Development Co., Ltd. (“Xinchuanghua”) against Shenzhen Hongyun Technology Co., Ltd. (“Hongyun”) and Beijing 360° E-Commerce Co., Ltd. The court found Hongyun to be liable for trademark infringement and unfair competition.

Hongyun manufactured and sold children’s electric toothbrush labeled with “Ultraman in Chinese” mark without authorization. The infringing product was promoted and introduced as “Ultraman Collaboration,” and the cartoon image of Ultraman appeared in many places on the promotional page, and words such as Ultraman blue, white, and yellow were used in the promotion process, and a three-dimensional image of Ultraman was used on the box of the toothbrush’s brush head. Xinchuanghua claimed that Hongyun’s actions constituted trademark infringement and unfair competition.

The court found that, in addition to providing numerous evidence of the general popularity of “Ultraman in Chinese,” Xinchuanghua provided a public release license for Ultraman’s film and television works for its class 9 “Ultraman in Chinese ” trademark (animation, etc.), proofs of popular broadcasts of works on major video websites, news reports, corresponding stage plays, theme exhibitions and large amount of other evidence. Regarding its class 28 “Ultraman in Chinese” mark (toys), Xinchuanghua also provided large amount of evidence of toy sales rankings of major e-commerce websites, contracts, license fees, and invoices such as Taobao, Tmall, and JD.com. The evidence can prove that through long-term and continuous use in mainland China, the overall brand “Ultraman in Chinese” including Ultraman film and television dramas and the registered trademark involved has already established a relatively high market reputation in China, constituted a well-known mark.

The “Ultraman in Chinese” mark has a high reputation and influence in the field of animation and toys. The infringing product of children’s electric toothbrush and animation products are mostly targeted at children, and the two have a high degree of overlap in terms of sales targets and sales channels, which can easily mislead the relevant public into thinking that the above-mentioned products come from the same entity or an entity that has a specific association. Therefore, Hongyun’s sale of children’s electric toothbrushes violated Xinchuanghua’s exclusive right to use the registered trademark.

Hongyun’s uses of the “Q version Ultraman” image on the product page and on the product’s physical outer packaging bag and uses of the word “Ultraman in Chinese” in the promotional introduction was enough to make relevant consumers mistakenly believe that it was producing and selling the electric toothbrush authorized by Yuangu or Xinchuanghua or their product was an official product of “Ultraman.” Therefore, Hongyun’s actions have the intention of taking an advantage of the goodwill of “Ultraman,” which constitutes unfair competition.

2. The Beijing High Court recognized the “PUMA” mark as a well-known mark and granted cross-class protection

On October 31, 2022, the Beijing High Court made a final judgment on an administrative dispute over an invalidation action, affirming that the “PUMA” mark constituted a well-known mark and granted cross-class protection.

Puma Europe (“Puma”) is the registrant of the trademarks “PUMA” and “PUMA and Design” (“Cited Marks”), which are approved to be used in class 25 for “sports clothes; sports pants; sports shoes; etc.” Beijing Sweet Puma Network Technology Co., Ltd. (“Sweet Puma”) applied for the registration of the “sweet puma” mark (“Disputed Mark”) on February 1, 2016 and was approved for registration in class 43 for “cafes; fast food restaurants; bar services; etc.” Puma filed an invalidation against the above trademark.

On October 16, 2019, the CNIPA found that the Disputed Mark and the Cited Marks did not constitute similar marks according to Article 30 of the 2013 China Trademark Law. Puma’s evidence could prove that prior to the Disputed Mark’s application date, the “PUMA” mark had obtained certain fame, however, the Disputed Mark was approved for lodging related services, which was obviously different from the Cited Marks’ approved use for clothing and sportwear related goods in terms of function, use, service channels. The relevant public paying general attention would not mistake services labeling the Disputed Mark to be originated from Puma, nor will they believe there were special association between the two registrants. The Disputed Mark’s validity was maintained.

Puma appealed to the Beijing IP Court, but the court affirmed the CNIPA’s decision. Puma then appealed to the Beijing High Court.

The Beijing High Court found that, in the evidence submitted by Puma, Cited Mark 1 has been used in China for over 40 years and has been extensively sold and promoted for “sports clothing, sports shorts, and sneakers,” which obtained extremely high market fame. Thus, before the Disputed Mark’s application date, the relevant public is familiar with Cited Mark 1 on “sports clothing, sports shorts, and sneakers,” which reached well-known status.

In this case, the Disputed Mark completely included the Cited Marks. These marks were similar in terms of word composition, pronunciation, and overall appearances. Despite the Disputed Mark included other English word, the overall appearances did not distinguish itself from the distinctive part of the Cited Mark 1. Thus, the Disputed Mark imitated the Cited Mark 1. The Disputed Mark’s approved use for “cafes; fast food restaurants; bar services; etc.” did not fall into the same class of goods as “sports clothing, sports shorts, and sneakers” for the Cited Mark 1. However, the garget consumer, sales channel, and place of use for the Cited Mark 1’s approved goods could have certain association with “cafes and bar services.” Thus, the relevant public for both marks overlapped. Consider the Cited Mark 1 had extremely high fame, the co-existence of both marks on the market would easily cause the relevant public to believe there are associations between the Cited Mark 1 and the Disputed Mark, which would cause misunderstandings amount the relevant public and damages Puma’s interests. Thus, the Disputed Mark violated Article 13(2) of the 2013 China Trademark Law.

3. The CNIPA and the State Administration for Market Regulation launched a special campaign to rectify trademark agency industry

In recent years, phenomena such as soliciting business by improper means and applying for trademarks in bad faith by intellectual property service agencies have occurred from time to time, causing adverse social impacts. The CNIPA and the State Administration for Market Regulation have decided to jointly launch a special rectification campaign for trademark agency industry from November to December 2022.

Intellectual property management departments and market supervision departments in various places collect and search for illegal clues such as forged application materials and legal documents, soliciting business by improper means, falsely claiming to have internal relations, squatting on behalf of agents, and hoarding of trademarks. Local market supervision departments must strictly investigate and deal with illegal acts of trademark agency in accordance with relevant regulations such as the Trademark Law, the Regulations for the Implementation of the Trademark Law, and the Regulations on Regulating Trademark Application for Registration. For those engaged in trademark agency business through the Internet, focus on checking whether they have maliciously squeezed out competitors, provided services at prices below cost, and displayed trademarks with major adverse effects through the Internet.

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