Weekly China Trademark News Updates

March 22, 2023

1. Louis Vuitton successfully fend off the “LK & Design” mark

Disputed Mark	Cited Mark 1	Cited Mark 2
Reg. No. 28085116	Reg. No. G1249344	Reg. No. 241081

The Beijing High Court recently concluded an administrative trademark invalidation between the appellant Guangzhou Xiangfei Leather Goods Co., Ltd. (“Xiangfei”) and Louis Vuitton. The court dismissed the appeal and upheld the original judgment.

The issues of this case are: 1. Whether the Disputed Mark and the Cited Marks 1 and 2 constitute similar trademarks used on the same or similar goods as stipulated in Article 30 of the 2013 Trademark Law; 2. Whether the registration of the Disputed Mark violates the first paragraph of Article 44 of the 2013 Trademark Law.

Regarding issue 1: the court found that the approved goods of the Disputed Mark and the approved goods of the Cited Marks for leather, imitation leather and articles made therefrom all fell into class 18. Moreover, the goods’ function, use, manufacturing department, sales channel, target consumers, etc. were identical, which constituted as identical or similar goods. The Disputed Mark is a combination mark consisted of “LK” inside a circle. The Cited Mark 1 consisted of “LV” in a circle. The Cited Mark 2 consisted of only “LV.” The composition elements, methods and overall appearances of the Disputed Mark and the Cited Marks were similar. There were no distinctive differences between the two in terms of their meanings. When viewing them in isolation, the relevant public would easily mistake that the source of the goods of the Disputed Mark and the Cited Marks came from the same source of there were certain associations when paying general attention. Thus, the Disputed Mark constituted as a similar mark approved on identical or similar goods with the Cited Marks’ approved goods. This court affirmed that the Disputed Mark violated Article 30 of the 2013 Trademark Law.

In addition, Xiangfei claimed its rights from its prior registered “Lan Kou in Chinese LANKOU” mark with Reg. No. 15090726 and that the Disputed Mark was individually created by Xiangfei and was an extension of its copyright. The court found that trademark registrants enjoy exclusive trademark rights to each of the individual trademark they own. Trademarks registered in succession do not enjoy extended associations. Additional trademarks filed for defensive purpose on the basis of a registered trademark should not disrupt the established order of trademark registration, and in particular, it should not constitute the same or similar trademark used on the same or similar goods with the trademark that others have previously applied for registration. Whether Xiangfei owned the copyright of the Disputed Mark was not the basis for judging whether the trademark violates Articles 30 and 31 of the 2013 Trademark Law. Accordingly, Xiangfei’s relevant grounds for appeal cannot be established.

Regarding issue 2: the court found that among the dozens of trademarks filed by Xiangfei, not only were there a large number of copy and imitation of Louis Vuitton’s well-known trademarks, but also copy of “GUCCI” and “LANCOME” and other relatively well-known brands. Xiangfe’s application for registration of a large number of trademarks, including the Disputed Trademark, not only violated the principle of good faith, but also disrupted the order of trademark registration, damaged the public interest, and hindered the order of trademark registration management, which constituted as the circumstance of “obtaining registration by other improper means” as stipulated in the first paragraph of Article 44 of the 2013 Trademark Law. The judgment of the first instance court was correct and should be upheld.

2. The “Brks” mark was found similar to “BROOKS”

Disputed Mark	Cited Marks
Reg. No. 21013704	Reg. No. 262644        Reg. No. 7057423        Reg. No. 7069726                          Reg. No. 7069727        Reg. No. 18163412

The Beijing High Court recently concluded an administration trademark invalidation dispute between the appellant Putian Jianbu Industry and Trade Co., Ltd. (“Jianbu”), the appellee CNIPA, and the third party in the original trial, Brooks Sports Inc. (“Brooks”). The court rejected the appeal and upheld the original judgment.

Regarding to issue 1: since Cited Marks 2 and 3 have been canceled on all approved goods, they no longer constituted a prior right obstacle to the Disputed Mark’s application. Goods such as “clothing; shoes” designated by the Disputed Mark and “clothing; shoes (things worn on the feet); shoes” and other goods approved and used by the Cited Mark 1, 4, and 5 fell into identical or similar class according to the CNIPA Classification. The two were relatively similar in terms of functional use, production department, sales channel, consumer objects, etc., so the designated use of the goods under the Disputed Mark and the approved use of the Cited Mark 1, 4, and 5 constituted as identical or similar goods. The first instance court found that there was no obvious inappropriateness in finding that the two constituted the same goods. The Disputed Mark was composed of the letters “Brks”; the Cited Mark 1 was composed of the letters “BROOKS”; the Cited Marks 4 and 5 were composed of the letters “BROOKS” and design, and the letter “BROOKS” is one of the distinctive identification parts. Simultaneous use of the Disputed Mark and the distinguishing part of the Cited Marks on similar goods may cause confusion and misidentification by consumers, which violates the provisions of Article 30 and Article 31 of the 2013 Trademark Law, and the first instance court was correct.

Regarding issue 2: according to the evidence on file, Jianbu applied for several trademarks similar to the Disputed Mark for goods in Class 25 and services in Class 35. These marks included “Jordan,” “Nike,” “Converse,” “Delhui,” and other trademarks that are identical or similar to other people’s prior trademarks. Such registrations have obviously exceeded the normal production and operation needs, and Jianbu failed to submit evidence to prove that it has made commercial use of the above trademarks or has a genuine intention to use them. Taking the above factors into consideration, Jianbu’s misconduct occupied public resources and disrupted the normal order of trademark registration. The original judgment and the sued ruling found that the Disputed Mark’s application fell under the circumstance of “obtaining registration by other improper means” as stipulated in Article 44, Paragraph 1 of the 2013 Trademark Law should be affirmed.

3. The “Pampers & Design” mark was recognized as a well-known mark for cross-class protection

Disputed Mark	Cited Mark 1	Cited Mark 2
Reg. No. 20494723	Reg. No. 1564432	Reg. No. 11214847

The Beijing High Court recently concluded an administrative trademark invalidation between the appellant Fujian Guaiqiao Maternal and Baby Products Co., Ltd. (“Fujian Guaiqiao”), the appellee CNIPA and the third party in the original trial, Procter & Gamble Co., Ltd. (“P&G”). The court dismissed the appeal and upheld the original judgment.

The issues of this case are: 1. whether the approved use of the goods of the Disputed Mark such as “sanitary napkins, disinfectant wipes, baby diapers, incontinent diapers, sanitary pads, incontinent absorbent pants, baby diapers, and sanitary underwear” violates Article 30 of the 2013 Trademark Law; 2, whether the approved use of the Disputed Mark on “medical nutritional products and pesticides” violates the provisions of Article 13, Paragraph 3 of the 2013 Trademark Law.

Regarding issue 1: regarding similarity of goods, in view of Fujian Guaiqiao did not dispute the similarly between the approved goods of the Disputed Mark for “sanitary napkins, disinfectant paper towels, baby diapers, sanitary pads, incontinence absorbent pants, baby diapers, sanitary underwear” and those approved under the Cited Marks 1 and 2 as identical or similar goods, the court now affirmed such findings. The “incontinence diaper” goods approved for use under the Disputed Mark and the approved goods under the Cited Marks 1 and 2 fell into Part 1 of subclass 0506 in the CNIPA Classification. The functional use, manufacturing department, sales channels, and other aspects are highly overlapped and constituted similar goods. In terms of trademark similarity, the Disputed Mark is a word mark composed of foreign language “Pannters.” The Cited Marks 1 and 2 were both graphic-text trademarks composed of foreign language “Pampers” and a heart-shaped pattern, among which “Pampers” was a distinctive identification part of the marks. The Disputed Mark “Pannters” and the distinctive part “Pampers” of the Cited Marks 1 and 2 were similar in letter composition, arrangement, and pronunciation, and the overall visual effects of the Disputed Mark and the Cited Marks 1 and 2 were also relatively similar. If used on identical or similar goods, it was easy for the relevant public to believe that the goods used on the said marks came from the same entity subject or that there was a specific connection between the two, resulting in confusion and misunderstanding. The evidence submitted by Fujian Guaiqiao was not sufficient to prove that before the filing date of the Cited Marks 1 and 2, the Disputed Mark had gained a certain reputation and enabled the relevant public to distinguish it from the Cited Marks 1 and 2. Therefore, the Disputed Mark was identical or similar to the Cited Marks 1 and 2 for “sanitary napkins, disinfectant paper towels, baby diapers, sanitary pads, incontinent absorbent pants, baby diapers, sanitary underwear, incontinent diapers.” The registration of a similar mark on identical or similar goods violated the provisions of Article 30 of the 2013 Trademark Law and should be invalidated.

Regarding issue 2: evidence such as sales data, sales invoices, advertisements, media reports, and protected records submitted by P&G in this case can prove that before the filing date of the Disputed Mark, through P&G’s long-term, extensive and continuous publicity and use, the goods “baby diaper” under the Cited Mark 2 has been widely known to the relevant public in China and has reached a well-known level. The Disputed Mark was similar to the text of the distinctive part of the Cited Mark 2, which constituted an imitation. Although the “medical nutritional products and pesticides” goods approved for use under the Disputed Mark and the “baby diapers” goods for which the Cited Marks were well-known fell into different Class in the CNIPA Classification, but the relevant public overlapped. In the case that the Cited Mark 2 has reached the level of well-known on the goods of “baby diapers” and the Disputed Mark constituted an imitation of the Cited Mark 2, use of the “medical nutrition, pesticides” goods under the Cited Mark was likely to cause the relevant public to mistakenly believe that the Disputed Mark has a considerable degree of connection with the Cited Mark 2 and thereby weakening or diluting the distinctiveness of the Cited Mark 2 or improperly using its market reputation, resulting in damage to P&G’s right to the already well-known Cited Mark 2. Therefore, the registration of the Disputed Mark on “medical nutritional supplements and pesticides” violated the provisions of Article 13, Paragraph 3 of the 2013 Trademark Law, and should be invalidated. Guaiqiao’s other relevant grounds for appeal were untenable and the court did not support it.

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Weekly China Trademark News Updates

March 15, 2023

1. The CNIPA issued the “Guidelines for Handling Administrative Intellectual Property Service Matters”

On March 10, 2023, the CNIPA issued the “Guidelines for Handling Administrative Intellectual Property Service Matters” that materialized the basis, application documents, and conditions when handling patents, trademarks, and geographic indications, etc. The purpose of the Guidelines aims at providing non-discriminatory administrative services in accepting applications, handling using identical standards, and realizing the convenience, speed, fairness, inclusiveness, high quality and efficiency of administrative services.

2. Hermes won RMB 2 million in damages – using “Hermes in Chinese” as a real estate name constitutes of trademarks infringement and unfair competition

Hermes International (“Hermes”) sued Shandong Hugang Jianye Real Estate Development Co., Ltd. (“Hugang Jianye”) for trademark infringement and unfair competition. The first instance court found that Hermes’ trademark “Hermes in Chinese” with reg. no. 1636601 and “” mark with reg. no. 1708652 are approved in Class 18 for “leather, leather bags, travel bags, harnesses” and so on.

Regarding trademark infringement, Hugang Jianye promoted “Hermes in Chinese Themed Apartments” on its “Huganghui” WeChat public account since January 2019. According to the evidence submitted by Hermes, the court comprehensively considered relevant public’s understanding to the Cited Marks, the time, duration, and geographical area of the actual use and promotional duration of the Cited Marks, and the Cited Marks’ multiple recognitions as a well-known mark prior to Hugang Jianye began using the Disputed Marks. The court found that Hermes has been continuously using its Cited Marks for 20 years and have extensively, broadly, and massively used, promoted, and marketed its Cited Marks. Hermes’ Cited Marks enjoy very high reputation and influence and are well-known to the public, which shall be recognized as well-known marks in Class 18 for leather bags, travel bags, and other goods. During its real estate construction and sales, Hugang Jianye used “Hermes in Chinese Themed Apartments” as its real estate’s name to promote and for sales. It highlighted the use “Hermes in Chinese” and “HERMES” in its building protective net, billboards on exterior walls, peripheral shielding boards. Hugang Jianye prominently used “HERMES” and “” on the large electronic screen outside of its sales center and exhibition stand. In the “Hermes in Chinese Themed Apartment” promotional pages, floor plans, and model room decoration, the “Hermes in Chinese”, “HERMES,” and “” logos were prominently used. Promotional articles, videos, and photos about “Hermes in Chinese Themed Apartments” were published on the WeChat public account of Hugang Jianye where the Cited Marks were prominently used. Hugang Jianye named the real estate as “Hermes in Chinese Themed Apartments” and prominently used the above-mentioned accused logo in commercial activities such as the construction, sales, exhibition and advertising of commercial housing, which played a role in identifying the source of goods, which fell under the provisions of the Trademark Law as trademark use. Through comparison, the “Hermes in Chinese” logo that was prominently used by Hugang Jianye was identical with Hermes’ Cited Mark. And the logo used by Hugang Jianye was also identical to Hermes’ Cited Mark. The “HERMES” logo used by Hugang Jianye was similar to the English letters in Hermes’ “” mark, which constituted as s similar mark. Consider Hermes’ Cited Marks have reached well-known status, relevant public can readily associated with Hermes’ and its brands upon hearing or seeing its Cited Marks. Thus, Hugang Jianye’s use of the Disputed Mark during construction, promotion, and sales for its real estate business activities was sufficient to confuse the relevant public that the disputed real estate came from Hermes or mistaken that Hugang Jianye has special connection or licensing relationship with Hermes. Moreover, Hugang Jianye directly used “Hermes in Chinese” as its apartment name for extensive promotion can be seen as to have subjective bad faith in taking advantage of other’s well-known mark and goodwill, which will diminish the distinctiveness of Hermes’ well-known mark, and unfairly exploited Hermes’ well-known marks’ market reputation, obtain unjustified interests, and damage Hermes’ legitimate interests. The court found that Hugang Jianye’s copy and imitation of Hermes’ well-known marks in different goods constituted as trademark infringement.

Regarding unfair competition, first, Hugang Jianye knew it did not have any license or connection with Hermes but deliberately emphasized the similarity or continuation relationship between its “Hermes apartment” and “Hermes” brand in terms of craftsmanship and design concepts. It also stated that the furniture and decoration in the apartment use Hermes brand and style products, and its behavior may mislead consumers into thinking that there is a connection between the two. Second, Hugang Jianye deliberately used words such as “French in Chinese,” “imported,” and “century-old luxury brand” in its publicity, and described the apartment involved as a luxury, thereby further deepening its connection with Hermes. Its intention to take advantage of Hermes’ popularity was extremely obvious. Third, combined with Hugang Jianye’s publicity and promotion of the project involved as “Hermes in Chinese Themed Apartment,” a large number of “Hermes” logos were used, and Hermes brand products, decorations and other behaviors were placed in the sales center and model rooms, these actions showed that it had the intention to mislead the relevant public. Therefore, Hugang Jianye’s publicity behavior is to promote products in ambiguous language or other misleading ways, which may easily cause confusion and misidentification of the relevant public. It was a misleading commercial publicity and constitutes unfair competition. Hugang Jianye used the Hermes classic orange design and classic logos such as the big “H” and horse design in the decoration of the apartment model room, and placed many Hermes products, which was enough to make the relevant public further mistakenly believe that the accused “Hermes Apartment” did come from Hermes or there was a specific relationship. The use of the above-mentioned logos or elemental products and decoration by Hugang Jianye was a comprehensive imitation of the trademark and brand of Hermes. Compared with simply using Heremes’ Cited Marks, Hugang Jianye’s use was more likely to cause confusion and misidentification to the relevant public, which further proves that its intention to cling to Hermes and the popularity of its trademark. Therefore, Hugang Jianye’s actions constituted as unfair competition that was enough to cause confusion.

Accordingly, the first instance court ordered Hugang Jianye to compensate Hermes economic loss and reasonable legal costs of RMB2 million (USD289,943). The second instance court later affirmed the first instance ruling.

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