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.
INTA Annual Meeting at Atlanta – Ethics for Trademark Attorneys May 31, 2024 Austin Chang spoke at the “Ethics for Trademark Attorneys” panel at INTA Annual Meeting at Atlanta with other esteemed panelists Our very own counsel, Austin Chang, was invited by Catherine Farrelly, Chair of the Trademark and Brand Management Group at US 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
Weekly China Brand Protection News
October 18, 2024
1. Advertising products as “Korean Version North Face Apparel” without authorization constitutes trademark infringement, CNY 360,000 compensation ordered
The plaintiff, The North Face Apparel Co., Ltd. (“The North Face”), holds the “” mark with reg. no. 2018929, the “” mark with reg. no. 5357180, and the “Bei Mian in Chinese” mark with reg. no. 2018921 in Class 25. The North Face discovered that the defendant, Hangzhou Yuhang Qianniuxing Clothing Business Department (“Qianniuxing”), and its actual operator, Huang, were promoting and selling clothing bearing the “” and “” logos through a Douyin store called “Qianniuxing.” The store advertised these clothes as “Korean Version Bei Mian (North Face in Chinese) 1996 Down Jacket” on the product detail page and promoted the alleged infringing products through short videos and live-stream sales. The North Face filed a lawsuit against the two defendants claiming that their actions infringed its trademark rights, demanding the cessation of infringement and compensation for economic losses and reasonable expenses totaling CNY 700,000 (USD 98,250).
The key issues in this case are as follows:
(1) Did the defendants’ actions infringe The North Face’s trademark rights?
The court found that the accused products prominently displayed the “” and “” logos, and the sales link titles prominently featured the words “Bei Mian.” These uses served to identify the origin of the goods, qualifying as trademark usage. The alleged infringing products were down jackets and T-shirts, which fall under Class 25, the same category as The North Face’s registered trademarks. The accused logos were identical to The North Face’s registered trademarks. Given that The North Face’s trademarks have achieved high fame and distinctiveness through extensive use, the accused logos and The North Face’s registered trademarks were deemed identical and used on the same class of goods, likely causing consumer confusion. Therefore, the defendants’ unauthorized sale of the accused products infringed upon The North Face’s trademark rights.
(2) Can the defendant’s parallel import defense be upheld?
The court determined that the defendant, Qianniuxing, did not provide evidence that the trademarks on the accused products were owned by the same rights holder in both China and South Korea, nor did they prove the origin of the products or demonstrate that the accused goods had undergone proper customs supervision. The available evidence was insufficient to establish that the accused goods qualified as parallel imports. Consequently, the parallel import defense was dismissed. Furthermore, based on the facts of this case, the court did not recognize the exhaustion of trademark rights, dismissing the defense of trademark exhaustion raised by Qianniuxing.
(3) Can the defendant’s defense of legitimate source be upheld?
Although Qianniuxing submitted WeChat chat records and transfer records, it failed to provide evidence of the WeChat user’s real identity, and its authenticity could not be confirmed. Moreover, there was no corresponding relationship established between the chat records and the accused products. The existing evidence was insufficient to prove that the accused products were obtained through legal means and lawfully imported into China for sale. Therefore, the court ruled that the defense of legitimate source could not be upheld.
(4) If trademark infringement is established, what liability should the two defendants bear?
The infringement actions of Qianniuxing constituted trademark infringement, and it should bear corresponding liability. Huang, as the actual operator of the Douyin store involved, was jointly liable for the infringement with Qianniuxing. According to Article 56 of the Civil Code, the debts of individual businesses should be borne by the business operator using their personal assets. Therefore, Huang should bear the liability of Qianniuxing in this case.
The court supported The North Face’s claims to stop the infringing behavior and destroy the inventory of infringing products. Regarding the amount of compensation, the court, considering factors such as the sales volume and revenue of the infringing products, the duration of the infringement, the small scale of the individual business, the defendant’s low subjective malicious intent, the high fame and distinctiveness of The North Face’s trademarks, and the reasonable expenses incurred by The North Face in protecting its rights, determined that the two defendants should jointly compensate The North Face for economic losses and reasonable expenses totaling CNY 360,000 (USD 50,500).
2. The assessment of trademark similarity involving geographical names should primarily focus on comparing the non-geographical parts
Disputed Marks | Cited Marks |
Reg. No. 39521915 Registrant: Deng |
Reg. Nos. 22772816, 37274477 Registrant: Chen |
The Beijing High Court recently concluded an administrative dispute regarding the invalidation of the “Shibati Dengdengmian” trademark between the appellant, the CNIPA, appellant Chen, and appellee Deng. The court rejected the appeal and upheld the original judgment.
The key issue in the case was whether the Disputed Mark and the two Cited Marks constituted similar trademarks for identical or similar services. After review, the court determined that the Disputed Mark is a purely text-based trademark, “Shibati Dengdengmian,” while the two Cited Marks consist of the words “Shibati Wooden Barrel.” Although both contain “Shibati,” the evidence showed that “Shibati” refers to an old street name in Chongqing’s Yuzhong District, symbolizing old Chongqing. Compared to the textual components “Dengdengmian” in the Disputed Mark and “Wooden Barrel” in the Cited Marks, “Shibati” is less distinctive. Therefore, the distinctive elements, “Dengdengmian” and “Wooden Barrel,” differ significantly in composition, meaning, and pronunciation. As such, the Disputed mark, when used for services such as “restaurants, dining establishments, etc.” can be distinguished from the Cited Marks and is unlikely to cause confusion or misidentification among the public regarding the origin of the services. The court upheld the first-instance ruling, which found that the use of the Disputed Mark for “restaurants, dining establishments, etc.” did not violate Articles 30 or 31 of the Trademark Law.
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Weekly China Brand Protection News
October 12, 2024
The application for customs protection measures based on intellectual property does not constitute unfair competition
Aidacheng Footwear Co., Ltd. (“Aidacheng”) owns the “” mark with reg. no. 51764426 and the “” mark with reg. no. 65218736, and several other registrations. It has obtained customs recordation for several of its trademarks. On May 25, 2022, Xiamen Jialianheng Import and Export Co., Ltd. (“Jialianheng”) declared the export of baby clothing and other goods to Mexico at Beilun Customs. After inspection, Beilun Customs believed that the goods were suspected of infringing Aidacheng’s related trademarks filed with customs and issued a “Notice of Confirmation of Intellectual Property Status” to Aidacheng. Subsequently, Aidacheng requested Beilun Customs to detain the goods. However, after investigation, Beilun Customs determined that it could not confirm whether the goods infringed Aidacheng’s registered trademarks recorded with the General Administration of Customs.
Following this, Aidacheng proactively contacted Jialianheng, asking them to pay licensing fees and then notify customs to release the detained goods. The two parties failed to reach an agreement, and Aidacheng subsequently filed a trademark infringement lawsuit in court. Upon trial, the court determined that Jialianheng’s processing and export of original equipment manufacturer goods did not constitute trademark infringement. Jialianheng then sued Aidacheng for unfair competition, alleging that Aidacheng’s abuse of customs protection for intellectual property rights amounted to unfair competition.
Upon trial, the court found the following:
Firstly, Aidacheng lawfully obtained the disputed trademarks, which are still within their protection period and are legally protected. Although Jialianheng submitted foreign registration information for trademarks that were somewhat similar to the disputed trademarks, not all of the foreign trademarks were registered earlier than Aidacheng’s trademarks. This evidence alone was insufficient to prove that Aidacheng maliciously registered the trademarks.
Second, the rights holder is entitled to protect its legal rights through lawful means. As the intellectual property rights holder, Aidacheng had the right to apply for intellectual property customs recordation of its trademarks with the General Administration of Customs, and the subsequent handling was decided by customs, not Aidacheng’s market behavior.
Last, Aidacheng’s application to detain the goods based on the customs notification and its participation in subsequent litigation were lawful exercises of its rights as the trademarks right holder, with a legitimate legal basis. Throughout the process, Aidacheng exercised caution in exercising its rights, and there was no intention to abuse the customs protection measures for intellectual property rights. Objectively, there was no fabrication of information or dissemination of false or misleading information. After customs determined that it could not confirm whether the goods infringed the trademarks, Aidacheng did not apply for measures such as stopping the infringement or property preservation, and Jialianheng eventually retrieved the goods on its own. Subsequently, Aidacheng promptly filed a trademark infringement lawsuit in court, and after the trademarks were invalidated, it timely applied to cancel the customs recordation.
In summary, Aidacheng’s application for intellectual property customs recordation was lawful, and its request for customs detention had a legitimate legal basis. Aidacheng exercised due diligence and caution during the process, and there was no abuse of the customs protection measures for intellectual property. Therefore, its actions did not constitute 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.