Weekly China Trademark News Updates

September 20, 2023

1. Legislative Plans of the Standing Committee of the National People’s Congress involve trademark law, anti-unfair competition law, etc.

The 14th National People’s Congress Standing Committee has recently released its legislative plan, covering a total of 130 cases divided into three categories: the first category is 79 relatively mature draft laws for review, including the Draft Anti-unfair Competition Law, etc. The second category is 51 draft laws that need to be worked on quickly and should be reviewed when conditions are met, including the Draft Trademark Law, etc. The third category is those that have not yet met legislative conditions, and continued research and demonstration such as data ownership and network governance.

2. Capcom’s application for the Chinese name of Street Fighter in class 41 was refused again

The video game company Capcom used “街头霸王”/“街霸” as the Chinese name for its game “Street Fighter.”

CAPCOM U.S.A., INC. (“Capcom”) has successively applied for “街霸 (JIE BA in Chinese)” on online games, amusement arcade services, entertainment, and other services in Class 41 in November 2017, December 2019, and April 2021, but all of them have been refused by the CNIPA based on Article 10.1.8 for unhealthy social influence.

For its third attempt, Capcom had decided to appeal the CNIPA decision to the Beijing IP Court. The Court rejected its claims by affirming Article 10.1.8, and Capcom further pursued the case to the next level, the Beijing High Court, arguing that:

1. The State Administration of Press, Publication, Radio, Film and Television has determined that “JIE BA in Chinese” does not contain objectionable content and complies with national regulations and has approved its publication and operation. The “JIE BA in Chinese” game has never been punished for containing objectionable content since its release in the mainland Chinese market.
2. The Disputed Mark has a positive meaning and does not violate Article 10.1.8 of the Trademark Law.
3. The Disputed Mark has gained extremely high popularity and reputation through extensive use without causing any adverse effects.
4. A mark containing the word “JIE BA in Chinese” has been approved for registration, which proves that the meaning of ” JIE BA in Chinese” is positive and will not cause any adverse effects.
5. Several prior cases have pointed out that when the CNIPA determines whether a trademark constitutes the circumstances of Article 10.1.8 of the Trademark Law, it should be based on objective facts and avoid subjective assumptions.

The Beijing High Court has just rendered the second instance judgment. In its opinion, the court held that: in this case, the Disputed Mark consisted of the Chinese characters “街霸.” According to the general understanding of the Chinese public, “街霸” has meanings such as “bully in the street” and “bullying.” If used as a trademark on ” amusement arcade services; entertainment information” and other services, they will likely have a negative impact on China’s culture, which fell under the circumstances stipulated in Article 10.1.8 of the Trademark Law. In addition, the opinion of the State Administration of Press, Publication, Radio, Film and Television about the absence of objectionable content in the game “Street Fighter 5” was not necessarily related to the determination whether the Disputed Mark in this case should be approved for registration. The application, review, and approval status of other trademarks are not relevant to this case and cannot be the basis for concluding this case. Therefore, the appeal was dismissed and the original judgment was affirmed.

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Weekly China Trademark News Updates

September 13, 2023

1. Corporate name conflicted with a prior trademark

The Beijing IP Court concluded a trademark infringement and unfair competition dispute between the appellant Guangzhou Xuetu Education Consulting Co., Ltd. (“Xuetu”) and the appellee Xiaoyuantong (Beijing) Technology Co., Ltd. (“Xiaoyuantong”). The court made a final judgment that dismissed the appeal and affirmed the lower court’s decision.

The Beijing IP Court found that: here, the Xuetu.com screen recording files and credible timestamp authentication certificates submitted by Xiaoyuantong, and multiple contracts and corresponding invoices signed by Xiaoyuantong and other third parties clearly showed that Xiaoyuantong has promoted its own education, study tours, and other contents to a certain extent, and cooperated with third parties on education, study tours, training, and other businesses, or authorized third parties to use the “Xuetu in Chinese” mark to carry out education, training, and related promotion activities. The “Xuetu in Chinese” logo was displayed or marked on relevant websites and transaction documents, which played a role in distinguishing the source of services. In terms of service content, purpose, object, and method, these services fall into Class 41 for education, organizational education, and Class 39 for tourism. The occurrence or duration of the relevant transactions was three years before the first instance of this case. Accordingly, the first instance court found that the Xiaoyuantong had used the cited mark on a certain scale and had a certain degree of popularity, which was legally justified and was not inappropriate. The Beijing IP Court affirmed the first instance court’s said finding.

In this case, Xuetu promoted the research services it provided as an experiential learning method for students. Compared with the education, organizational education, and travel companionship approved for use of the cited mark, the two are highly related or overlapped in terms of service objects, content, methods, nature, etc., and are similar services. The evidence in the case was insufficient to prove that before Xuetu applied for registration of the trademark “Xuetuyanxue in Chinese” with app. no. 3223265, it used the “Xuetuyanxue in Chinese” logo on a certain scale and had a certain influence.

Xuetu’s use of the “Xuetu in Chinese” logo and the prominent part of the cited mark both contained “Xuetu in Chinese,” and the characters were identical, which constituted as similar marks. The use of the disputed mark on services similar to the approved use of the cited mark was enough to cause confusion to the general public about the source of the service, or tricked to believed that there was a trademark licensing or associated relationship between the two, which violated Article 57(2) of the Chinese Trademark Law. The first instance court’s determination was correct, and this court upheld it.

2. “Mao in Chinese” of “Maotai in Chinese” is a registered trademark of Moutai! The “Zhamao in Chinese” mark application was rejected based on its similarity with “Mao”

The Beijing High Court made a final decision on an administrative dispute case that affirmed the rejection of the “Zhamao in Chinese” trademark application.

The Beijing High Court found that, in this case, the distinctive Chinese character for the disputed trademark is “Zhamao in Chinese,” and the distinctive Chinese characters for each cited trademark were “Mao in Chinese.” If the disputed mark and the cited marks were used in the same or similar class, the relevant public paid general attention is likely to believe that the goods were from the same entity or they have a specific association, which will lead to confusion and misunderstanding, thus, the marks constituted similar trademarks. In addition, the evidence on record submitted by Xiaolin Jiang was insufficient to prove that the disputed mark has gained a certain degree of popularity through use and produced distinctive features that can distinguish it from the cited marks. The findings of the first instance court that the disputed mark violated Article 30 of the Chinese Trademark Law was appropriate, and this court affirmed.

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