Weekly China Trademark News Updates

July 21, 2021

1. The Beijing High Court rejected a retrial petition filed by Beijing Wuyinliangpin against MUJI

On July 13, 2021, the Beijing High Court rejected a retrial petition filed by Beijing Miantian Textile Co., Ltd. (“Beijing Miantian”) against Muji (Shanghai) Commercial Co., Ltd. and Beijing Chaoyang Third Branch of Muji (Shanghai) Commercial Co., Ltd. (together as “MUJI”).

Beijing Miantian owns registered trademarks “Wuyinliangpin in Chinese” with registration numbers 1561046 and 7494239 in class 24 for “cotton textiles and towels.” These two trademarks were licensed to Beijing Wuyinliangping Investment Co., Ltd. for use in China. Ryohin Keikaku Co., Ltd. owns the following registered trademarks in China, the “MUJI” trademark with registration number 3545164 in class 24, the “Wuyinliangping in Chinese” mark in class 16 with registration number 4471270, in class 35 with registration number 4471277, and the “Wuyinliangping in Chinese and MUJI” mark in class 35 with registration number 1707559. Ryohin Keikaku Co., Ltd. licensed the said trademarks to MUJI for use in China. Beijing Miantian sued MUJI alleging that MUJI’s use of the “Wuyinliangpin in Chinese” mark on store signboard, header of the shopping receipt, and shopping bags infringed upon its registered trademarks “Wuyinliangpin in Chinese” with registration numbers 1561046 and 7494239 in class 24 for “cotton textiles and towels.”

The court found that MUJI’s use of the “Wuyinliangpin in Chinese” mark on its signboard shall be considered as use on selling general merchandise goods. The use of the “Wuyinliangpin in Chinese” logo on the header of the shopping receipt was the unified format of the shopping receipt provided by the store when selling goods, and did not specifically point to towels, quilts or other specific products. Such use still constituted as trademark use in providing general merchandise sales services. Except for the “Wuyinliangpin in Chinese and MUJI” logo on the outside, no other words were printed on the body of the disputed shopping bag. From the appearance, the disputed shopping bag cannot be seen to have a specific connection with the goods approved for use under the disputed trademarks in this case. Meanwhile, MUJI was authorized by its parent company, Ryohin Keikaku Co., Ltd., the right to use the “Wuyinliangpin in Chinese” trademark with registration number 4471270 in class 16 for packaging paper bags and other goods. The court found that MUJI’s use of the disputed trademarks on its store signboard, head of the shopping receipts, and shopping bags were trademark use in the process of sales services, which were not identical with or similar to the disputed marks’ approved goods and did not constitute as infringing on the disputed marks’ exclusive rights.

2. Huawei prevailed in the “Huawei Ark” trademark dispute

On July 5, the Beijing High Court rejected the second instance appeal between the CNIPA and Huawei and affirmed the first instance court’s decision.

Huawei Technologies Co., Ltd. (“Huawei”) applied for the “Huawei Ark” trademark with application number 37348881 on April 8, 2019 in class 38 for information transmission related services. The CNIPA cited “Huaxun Ark and design” with registration numbers 16987741, 21723380, and 22485505 and “Huaxun Ark” with registration number 31713645 in refusing the “Huawei Ark” from registration. Huawei appealed to the first instance court the Beijing IP Court.

Huawei Ark	Huaxun Ark

The Beijing IP Court found that the “Huawei” used in the “Huawei Ark” mark could be distinguished and would not cause confusion to the relevant consumer. The “Huawei Ark” mark and the cited marks did not constitute as similar marks use on identical or similar services. The Beijing IP Court ruled in favor of Huawei and ordered the CNIPA to reissue its refusal decision. The CNIPA appealed to the second instance court the Beijing High Court. The Beijing High Court found that although both the “Huawei Ark” and the “Huaxun Ark” contains the word “Ark,” however, ark usually means Noah’s ark, which was a non-distinctive coined word. The relevant consumer would primarily distinguish the two marks through the use of “Huawei” and “Huaxun” contained in the marks. “Huawei” and “Huaxun” had obvious differences in its calling, meaning, and composition, and they would not cause confusion to the relevant public as to the source of goods when used on identical or similar services, neither would the relevant public believe that they are serial mark from the same service provide, or otherwise associated. Therefore, the “Huawei Ark” did not constitute as similar mark with the cited marks on identical or similar services.

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Weekly China Trademark News Updates

July 13, 2021

1. “Tencent Weishi in Chinese” is ruled not similar to “Weishi in Chinese”

The Beijing High Court made a final judgment on an administrative trademark invalidation dispute in favor of Tencent Technology (Shenzhen) Co., Ltd. (“Tencent”), and against Beijing Gaojie Shengshi Technology Co., Ltd. (“Gaojie”) and the CNIPA.

The Beijing High Court found that: although the disputed mark “Tencent Weishi in Chinese” and the cited trademarks 1-6 “Weishi in Chinese, “Weishi in Chinese”, “Weishi Design”, ““,”,” and “” all contain “Weishi in Chinese”, however, the rather distinctive trademark “Tencent in Chinese” has been added in front of the disputed mark. Considering that the use of “Weishi in Chinese” in class 9 goods was not so distinctive, the disputed mark and the cited trademarks has certain differences in the overall enunciation and composition elements. Tencent submitted a consent letter issued by Gaojie, which clearly stated the detail information of the disputed mark and each of the cited trademarks, and the undertaking to agree unconditionally, permanently, and irrevocably the coexistence of the said trademarks, which was sufficient to prove that Gaojie has agreed to the disputed mark’s registration on all approved goods in class 9. If there was no other evidence to prove that the coexistence of the disputed mark and the cited trademarks will cause confusion among the relevant public regarding the source of the goods, the disputed mark can be maintained.

2. “Double Eleven in Chinese” and “618 Carnival” are all invalidated at last

The Beijing High Court made a final judgement on an administrative trademark invalidation dispute in favor of JD.com and against Alibaba and the CNIPA. The mark involved is the “Double Eleven in Chinese” trademark in class 35 for “sales for others,” which the court found that JD.com submitted sufficient evidence to prove that using the disputed mark on “advertisement and sales for others” services was likely to cause relevant public to believe that such a term was a sales description or slogan. Such use could not be distinguished as a trademark use because the disputed mark lacked distinctiveness. Accordingly, the disputed mark violated the provisions of Article 11, Paragraph 1, Item 2 and Item 3 of the 2001 Chinese Trademark Law.

Meanwhile, the Beijing High Court made a final judgement on an administrative trademark invalidation dispute against JD.com and the CNIPA. The mark involved is the “618 Carnival in Chinese” trademarks in class 35 for “advertisement and sales for others,” which the court found the trademarks to be deceptive because the combination of “618” and “carnival in Chinese” used on the approved services would mislead the relevant public on the content and quality of the services provided. Moreover, the court noted that none of the Chinese holidays is a “carnival.” The disputed mark “618 Carnival in Chinese” would be seen as promotional slogan when used on the approved services, which lacked distinctiveness as a trademark. The evidence submitted was insufficient to prove that the disputed mark has established a stable association with JD.com as a distinguishable trademark when used on the approved services. Accordingly, the disputed mark violated the provisions of Article 11, Paragraph 1, Item 3 of the 2001 Chinese Trademark Law. The first instance decision is affirmed.

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