Weekly China Trademark News Updates

September 22, 2021

1. China’s trademark registration cycle will be further reduced

On August 26, 2021, the CNIPA specially held a mobilization and deployment meeting to shorten the trademark registration cycle. The CNIPA pointed out that the State Council had decided that the general trademark registration cycle will be reduced to 7 months. It is one of the important measures to deepen the reform of the “delegation of administration and decentralization” (simplification of administration and decentralization, combination of delegation and regulation, and optimization of services) in the field of intellectual property rights. The CNIPA’s most important task of the year.

The CNIPA issued a notice on September 14, 2021, in accordance with the “Working Plan for Reduction of the Trademark Registration Cycle in General Situations,” stating that from September 29, 2021, the deadline for payment shall be adjusted from within 15 days from the date of receipt of the payment notice to within 7 days. If the payment is not made within the time limit, the CNIPA will not accept the application.

It can be seen from the above that the CNIPA has shortened the trademark registration cycle in an all-round and multi-stage manner, not only speeding up the formal and substantive examination, but also furthering the process in terms of processing. According to our recent experience, if it all goes well, it will take about 3 to 4 months from submission of an application to preliminary approval; and if excluding the office action for the non-standard goods and services and the payment duration, it will take as short as about one month from the issuance of official filing receipt to preliminary approval.

2. CNIPA Issued the Reply on Whether the Shape of Goods Consistent with the Graphics of Registered Trademarks of Similar Goods Constitutes Infringement of Right to the Exclusive Use of the Registered Trademark

On September 8th, 2021, the CNIPA issued a reply on ” Whether the Shape of Goods Consistent with the Graphics of Registered Trademarks of Similar Goods Constitutes Infringement of Right to the Exclusive Use of the Registered Trademark“:

The CNIPA concluded that the two trademarks of Chanel and Van Cleef & Arpels have high reputation and distinctiveness and have formed a unique correspondence with the right holders. The relevant consumers have also closely associated the trademarks with the right holders. The use of the trademark design as the shape of goods actually has the function of identifying the source of the goods, which is likely to cause the relevant public to confuse the source of the goods. Such action constituted as using other’s registered trademarks or similar logos as the name or design of goods on identical or similar goods under Article 76 of the Implementation Guideline of the Trademark Law. If the action misleads the relevant public, it shall be deemed as infringing other’s exclusive trademark right under Article 57, Paragraph 2 of the Chinese Trademark Law.

3. The mark “MOPIDICK in Traditional Chinese” was maintained on cosmetic goods

IKEDA MOHANDO CO., LTD. (“IKEDA”) registered the trademark “” with registration no. 9945049 on August 28, 2014, in Class 3 for “cosmetics; soaps; fragranced soaps; fragrances; cosmetic nails; cosmetic eyelashes; perfume; toothpaste.”

A natural person filed a non-use cancellation and later a cancellation appeal against said mark. The CNIPA concluded that the evidence submitted by IKEDA showed that the disputed trademark was used on anti-mosquito and anti-itch liquid products, which were closely related to cosmetic products in function, sales location, consumer, etc., and the trademark shall be maintained on cosmetic goods. However, the evidence did not show that the disputed trademark was used for soaps; fragranced soaps; fragrances; cosmetic nails; cosmetic eyelashes; perfume; and toothpaste, and the mark’s registration on these goods shall be cancelled accordingly.

IKEDA appealed to the Beijing Intellectual Property Court and the court found that the online sales and publicity evidence submitted by IKEDA could prove that it had actually used the disputed trademark on the “anti-mosquito and anti-itch liquid” products within the specified period. In view of the strong correlation between the “anti-mosquito and anti-itch liquid” products and the “cosmetics” goods approved for the disputed trademark in terms of function, use, sales location, and consumers, the disputed trademark shall be maintained on the “cosmetics” goods. According to the Classification of Similar Goods and Services, “fragrance, cosmetic nails, cosmetic eyelashes, soap, fragranced soap” and “cosmetics” goods belong to the same subclass, and the disputed trademark shall be maintained on these goods as well. In addition, the disputed trademark’s approved goods of “toothpaste, perfume” and “cosmetics, soaps, fragrance” were all daily washing and chemical goods, and they were highly similar in terms of function and use, production department, sales channel, and consumers. According to Article 2 of the Regulations on Hygiene Supervision of Cosmetics and relevant regulations, cosmetics refer to daily chemical industrial products that are spread on skin, hair, nails, lips and other parts of the human body by wiping, spraying or other similar methods to achieve the purposes of cleaning, eliminating bad smell, skin care, beauty and decoration. Therefore, the dispute trademark’s approved use of “toothpaste and fragrance” products should also be covered by cosmetics in terms of function and use. Therefore, “toothpaste and fragrance” and “cosmetics” should be deemed as similar goods, and the disputed trademark’s approved use for “toothpaste and fragrance” shall be maintained.

The CNIPA appealed the first instance decision to the Beijing High Court. The Beijing High Court recently affirmed the first instance court decision that the disputed trademark “MOPIDICK in Traditional Chinese” shall be maintained for its registration on cosmetics, toothpastes, fragrances and other designated goods.

4. Unilever successfully invalidated the “OMO in Chinese” mark in Class 11 with its well-known mark recognition

Wuxi Lianhua Daily Use Technology Co., Ltd. (“Wuxi Lianhua”) registered the “” mark with registration number 12156179 (“Disputed Trademark”) on September 7, 2014 for “electric heating devices; heating plates; burners; evaporators” and other goods in class 11. Unilever filed an invalidation request against the Disputed Trademark, citing multiple registered trademarks of “” and “” in Class 3. The CNIPA maintained the Disputed Trademark as it found that the Disputed Trademark’s approved goods of heating devices, etc. were quite different from the cited trademark’s approved goods for “washing powder, laundry (agents) detergent and ingredients,” and did not support Unilever’s well-known mark claims.

Unilever was dissatisfied and appealed to the Beijing Intellectual Property Court. The court held that the Disputed Trademark was identical with the Chinese characters of the cited trademarks but did not form a new meaning that was clearly different from the cited trademarks, which constituted an imitation of the cited trademarks. The Disputed Trademark’s approved goods “electric heating device; heating plate” and the cited trademarks’ approved goods “detergent; washing powder; laundry detergent” were all consumer goods. Using the Disputed Trademark on “electric heating device; heating plate” could easily let the relevant public associate Unilever’s cited trademarks. The Disputed Trademark improperly took advantage of reputation built by Unilever’s long-term promotion of its cited trademarks, which damaged Unilever’s well-known trademarks. Therefore, the Disputed Trademark’s registration constituted the situation stipulated in Article 13 Paragraph 3 of the Chinese Trademark Law 2014.

The CNIPA was unsatisfied and appealed to the Beijing High Court. The second instance court found in the final judgment that: although the “electric heating device; heating plate” and other goods approved for use under the Disputed Trademark and the approved goods of “washing powder and detergent” that the cited trademarks were well-known for were not identical or similar goods according to the Classification of Similar Goods and Services, but there was a large range of overlap in sales channels, consumers, etc. Where Unilever’s “OMO and OMO in Chinese” trademarks have been widely known to the public, the Disputed Trademark’s registration and use on its approved goods would likely to mislead the public that the Disputed Trademark was associated with the cited trademarks., which would decrease the distinctiveness of Unilever’s well-known trademarks. Meanwhile, Wuxi Lianhua’s evidence failed to support that the Disputed Trademark had obtained stable corresponding relationship with the approved goods through promotion and use. Thus, the Disputed Trademark’s registration may have improperly taken advantage of the cited trademarks’ market reputation and damaged Unilever’s interests. Accordingly, the first instance’s decision shall be affirmed.

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Weekly China Trademark News Updates

September 14, 2021

1. Amazon’s “AWS” trademark was rejected in the second instance

On September 1, 2021, the Beijing High Court rejected Amazon’s appeal and affirmed the first instance court’s decision on Amazon’s “AWS” trademark application in Class 35.

On September 5, 2017, Amazon applied for “AWS” mark with application number 26231153 designated in Class 35 for “business consulting; business data analysis; data processing services; providing online market for buyers and sellers of goods and services; business management and organization consulting.” The CNIPA refused the “AWS” mark for registration citing prior similar marks. Amazon was unsatisfied and appealed the decision to the first instance court.

Disputed Mark	Cited Mark 1	Cited Mark 2

On September 1, 2021, the Beijing High Court found that first, as the time of the second instance trial, the cited mark 1 was still a prior valid registered trademark, which could block the Disputed Mark’s registration. Second, according to the effective administrative judgment no. 1611 made by this court, the Cited Mark 2 in this case has made an actual, legal, and effective commercial use in its approved services of “systematization of computer database information, incorporation of information into computer database.” The Cited Mark 2’s registration in the above services should be maintained. Accordingly, the Cited Mark 2 also constituted as a prior right obstacle to the Disputed Mark. Third, in view of Amazon’s explicit recognition in the original trial that the services designated for the use of the Disputed Mark and the services approved for the use of the Cited Mark 2 constituted the same or similar services, this court confirmed such facts after examination. The Disputed Mark was composed of the English letters “AWS,” which was similar to the Cited Mark 1 and Cited Mark 2 “AWS” in letter composition, pronunciation, etc., and there were no obvious overall differences between the marks. At the same time, when used in the same or similar services, it was easy for the relevant public to associate that the marks were from the same entity or they were serial marks, or that there was certain special relationship between the trademark owners, so as to misidentify the source of the services. Therefore, the first instance court did not err in finding that the Disputed Mark’s application violated Article 30 of the Chinese Trademark Law 2013.

2. The Suzhou Intermediate Court ordered RMB 15 million in compensation for bad faith trademark filings and trademark hoarding

Recently, the Suzhou Intermediate Court concluded a trademark infringement and unfair competition dispute case, and ordered RMB 15 million (USD 2.3 million) in damages against a household furnishing company in Fujian (hereinafter referred to as the “Fujian Company”).

Big Nature Home (China) Co., Ltd. (“Nature Company”) is the owner of multiple registered trademarks such as “Big Nature in Chinese” and “Nature.” The Fujian Company applied for the “Big Nature Aesthetician in Chinese” mark and created the WeChat public account of ” Big Nature Aesthetician Flooring.” In the WeChat account, 46 franchised stores were listed and the “” mark was used on the franchise page. Meanwhile, the Fujian Company  registered the “naturemxj.com” domain name and used logos such as “Big Nature Aesthetician” and “Nature Mxj” in many places in its shops. In addition, the Fujian Company has applied for registration of 50 trademarks for goods/services in different Classes, 36 of which were submitted on the same day.

At the beginning of 2020, Nature Company filed a lawsuit to the court, demanding that Fujian Company immediately stop the infringement and compensate RMB 15 million for losses. The court held that the alleged infringing marks were similar to Nature Company’s trademark in terms of text, pronunciation, overall color matching, and visual effects, which could easily cause the relevant public to misunderstand the source of the goods or believe that it had a specific association with Nature Company’s products. Thus, it constituted as trademark infringement. At the same time, when the Fujian Company was established, the Nature Company’s trademarks already had high reputation and influence. As a business in the same industry, the Fujian Company registered words containing the infringing mark as its corporate name and deliberately taking advantage of Nature Company’s fame, caused confusion to the relevant consumers and amounted to unfair competition. In addition, the Fujian company deliberately registered a domain name similar to the Nature Company’s trademark and used the website to engage in corresponding commercial promotion activities, which was enough to cause the relevant public to misidentify the owner of the website or believe that the website has a special licensing relationship between the Nature Company and the Fujian Company, which amounted to unfair competition and violated the good faith principle and should be prohibited. This case is a malicious infringement with serious circumstance, and it meets the applicable conditions of punitive damages. In this case, punitive damages is doubled and the Nature Company’s claim of RMB 15 million is fully supported.

3. The Beijing Intellectual Property Court held a briefing on penalties involving perjury in administrative cases of trademark cancellation appeal

On September 10, 2021, the Beijing Intellectual Property Court (Beijing IP Court) held a briefing on penalties involving perjury in administrative cases of trademark cancellation appeal. At the meeting, the Beijing IP Court released the relevant status of the trial of administrative cases of trademark cancellation appeal, the main methods of regulating perjury in such cases, and related suggestions to further strengthen the protection of the entire chain of intellectual property rights.

Since 2019, the Beijing IP Court has concluded 40,114 trademark authorization and confirmation cases, of which 3,843 trademark cancellation appeal cases have been concluded, accounting for 9.6% of all trademark authorization and confirmation cases. Among them, a total of 970 cases were cancelled by the CNIPA with a cancellation rate of 27.7%. Regarding trademark registrants who submitted forged evidence of trademark use and falsified facts of trademark use, the Beijing IP Court has ordered punitive decision against these trademark registrants.

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