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.
Beijing East IP -
2020 Tier 2 Firm Ranked by MIP
Following the success in 2019 MIP IP Stars Ranking, once again Beijing East IP is ranked as 2020 Tier 2 Firm in China for both trademark contentious and trademark prosecution practices by MIP.
Learn more details here.
Welcome to
Beijing East IP.
Beijing East IP was founded in 2002 by Dr. GAO Lulin and a group of experienced Chinese and international attorneys to provide top quality intellectual property services in China.
Top 10 Trademark Agencies in Administrative Litigation On January 8, 2021, Zhichanli Network Technology Co., Ltd., China’s top intellectual property media platform, published the Top 10 China Intellectual Property Agencies Rankings. Beijing East IP was ranked in the Top 10 Trademark Agencies in Administrative Litigation for the following two cases. Case 1 – Lonely Planet is […]
“The revisions generally serve the proclaimed purposes of placing greater importance on and strengthening IP protection, optimizing enforcement of patent rights, increasing deterrence to infringement, and promoting patent utilization and commercialization of inventions.”
Ms. Hui Shi, senior associate of Beijing East IP Law Firm, was invited by our German clients to share some key issues on IP protection in China through an online lecture.
Weekly China Trademark News Updates
April 8, 2021
1. LEGO won RMB 30 million in a trademark infringement dispute
The Guangdong High Court rendered the final decision regarding the trademark infringement and unfair competition disputes between the “LEGO in Chinese (乐高)” mark owned by LEGO Juris A/S (“LEGO”) and the “Le Pin in Chinese (乐拼)” mark. The court held that the manufacturers of “Le Pin in Chinese (乐拼)” Guangdong Meizhi Zhijiao Technology Co., Ltd. (“Meizhi”) and other defendants infringed upon LEGO’s trademark right and their acts amounted to unfair competition. The court ordered Meizhi and other defendants to compensate LEGO’s economic loss and reasonable legal cost of RMB 30 million (USD 4.58 million).
The court acted as the second instance court found that the “Le Pin in Chinese (乐拼)” mark used by Meizhi was highly similar to the “LEGO in Chinese (乐高)” mark in terms of color combination, presentation, and overall appearances, which was likely to cause confusion to the relevant public and weakened the distinctiveness of “LEGO in Chinese,” and damaged LEGO’s market reputation.
Meizhi had been copying LEGO’s products for more than four years, infringed upon 8 of LEGO’s registered trademarks and 1 influential trade name. Between September 11, 2017 and April 23, 2019, Meizhi’s infringing products collected unjustifiable income of RMB 330 million (USD 50 million). Added the sales records provided by Taobao, it can be reasonably presumed that “Le Pin in Chinese (乐拼)” products collected over RMB 500 million (USD 76 million) unjustifiable income. Consider the industrial profit, the overall profit of the infringing products is over RMB 160 million (USD 24.4 million).
The court ordered a high damage not only because Meizhi had obvious bad faith in copying and imitating LEGO’s trademarks, but also Meizhi’s long-term, extensive, and high-profited infringements on LEGO’s trademarks.
2. Friso diapers are not made by Friso?
Frieslandcampina Nederland B.V. (“Friesland”) won a trademark infringement and unfair competition lawsuit against Mei Su Jia Er (H.K.) Ltd. (“Mei Su Jia Er”), and Fujian Mengya Baby Goods Trading Co., Ltd. (“Mengya”). The second instance court Fujian High Court held that Mei Su Jia Er infringed upon Friesland’s “Mei Su Jai Er in Chinese (美素佳儿)” and “FRISO” trademarks by using “Mei Su Jai Er in Chinese (美素佳儿)” and “friso Mei Su Jai Er in Chinese (美素佳儿)” marks on baby diapers
What’s noteworthy is that the Fujian High Court raised the damages from RMB 580,000 (USD 88,000) to RMB 2.08 million (USD 320,000). More than tripled the damages ordered by the first instance court. The Fujian High Court reasoned that the infringing products shared similar sales channel and targeted consumers with the approved goods under Friesland’s cited marks. Such use was likely to cause confusion among the relevant public as to the source of goods. Moreover, the defendants were baby goods manufacturers and should have known about Friesland’s fame but insisted on using marks similar to Friesland’s cited marks. Such acts constituted subjective bad faith in copying, imitating, and plagiarizing other’s trademarks. Considering the above, the damages ordered by the first instance court was too low to cover Friesland’s economic loss and reasonable legal costs.
3. Bulgari won against fake Serpenti jewelry trademark dispute
The Beijing Intellectual Property Court recently held that the “snake head design” mark owned by an individual Liu with reg. no. 15911982 (“Disputed Mark”) infringed upon Bulgari S.P.A.’s (“Bulgari”) copyright and should be cancelled. The court found that Bulgari’s Serpenti design was a pictorial and unique design that can be protected under the Chinese Copyright Law as an artwork. Bulgari submitted sufficient evidence proving that it enjoys copyright for the snake head design before the Disputed Mark’s application date. Moreover, Bulgari’s evidence showed that Liu once owned a business related to “purse,” which overlapped with Bulgari’s scope of business and suggested that Liu may or should’ve known about Bulgari’s Serpenti design. Considering both the Disputed Mark and Bulgari’s Serpenti design have drawn ideas from snake head, the overall appearance, composition, visual effect, and expression were all similar, the Disputed Mark constitutes as a similar mark to Bulgari’s Serpenti design.
Infringing Mark | Bulgari’s Serpenti Jewelry |
![]() |
![]() |
4. Research report on electronic data evidence guidelines for trademark adjudication cases
In order to standardize evidence collection, proof of evidence, and examination of electronic data in trademark adjudication cases, the CNIPA initiated the research on the “Rules of Electronic Data Evidence in Trademark Adjudication Cases” in 2020. The parties and their agents and the examiner of trademark adjudication can refer to the rules for evidence collection, proof of evidence, and cross examination of electronic data. At the same time, the CNIPA will closely track the status of electronic data evidence submission and acceptance, so to gradually improve the “Guidelines for Electronic Data Evidence in Trademark Adjudication Cases” that will be the basis for the “Rules for Electronic Data Evidence in Trademark Adjudication Cases.”
![]() |
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 |
Weekly China Trademark News Updates
March 29, 2021
1. China National Intellectual Property Administration initiates special action against bad faith filings
On March 15, 2021, the CNIPA issued the Special Action Plan for Cracking down on Malicious Preemptive Trademark Registration (“Action Plan”) specifically aims to crack down on trademark squatting, seeking unjustified interests, disrupting trademark registration management order, and actions causing significant adverse social impact. Some of the noticeable focal points in the Action Plan for foreign trademark owners are crack down on “squatting relatively famous public figure’s name, famous works or character name” and “squatting relatively famous or inherently distinctive trademark or other commercial marks, damage other’s prior rights.”
The complete Action Plan in Chinese can be found at 国家知识产权局关于印发《打击商标恶意抢注行为专项行动方案》的通知.
2. The Shanghai IP Court recognized the mark “Peppa Pig in Chinese (小猪佩奇)” as a well-known mark
Entertainment One UK Limited (“Entertainment One”) sued an individual CHEN and Shanghai Xunmeng Information Technology Co. Ltd. (“Xunmeng”) for trademark infringement. The Shanghai IP Court recognized the mark “Peppa Pig in Chinese (小猪佩奇)” as a well-known mark in favor of Entertainment One and ordered Xunmeng to pay damages of RMB 30,000 (USD 4,500).
Infringing Mark |
![]() |
The Shanghai IP Court found that CHEN used “Peppa Pig in Chinese (小猪佩奇)” and the Peppa Pig design on its online store and on its infringing products, which constituted an imitation of Entertainment One’s mark “Peppa Pig in Chinese (小猪佩奇)” and infringed upon its trademark rights. In its findings, the court recognized the mark “Peppa Pig in Chinese (小猪佩奇)” as a well-known mark upon its findings that Entertainment One submitted sufficient evidence to support its request to recognized that the mark “Peppa Pig in Chinese (小猪佩奇)” has achieved well-known status in Class 9 in connection with animation and electronic publications (downloadable) and enjoyed high fame and good-well. The court ordered CHEN to pay compensation and reasonable costs to Entertainment One based on the nature, duration, scope, and consequence of the infringement. Regarding Xunmeng, the court found that Xunmeng had removed the infringing product links and without evidence proving its connection with CHEN, Entertainment One’s infringing claim against Xunmeng cannot be established.
For more information regarding well-known mark recognition, we have prepared the following well-known mark series for your reference.
3. “B.duck Yellow Duck” won RMB 2.4 million in a trademark infringement case
The Shandong High Court ordered Lixun Group Co., Ltd. (“Lixun”) and other defendants to pay Duckling Clothing (Fujian) Co., Ltd. (“Duckling”) economic loss and reasonable cost of RMB 2.4 million for trademark infringement.
In its findings of trademark infringement, the court found that the yellow duck design work used in the Involved Mark was originally completed in 1948 and has reached relatively high fame through promotions. Duckling has been using the yellow duck design on shoes and clothing related goods as a commercial mark since at least 2019. And because the image used on the shoes and clothing goods by Duckling was nearly identical to the original work completed in 1948, the yellow duck’s fame can be reflected to the Involved Mark. Therefore, although the yellow duck design work was approved only in 2020 as a registered trademark, given the fame of its original work, the Involved Mark have certain fame since its registration and can be used to distinguish the source of goods. The first instance court erred in finding that the Involved Mark lacked distinctiveness and lack fame. Moreover, the alleged infringing goods are identical to the Involved Mark’s approved goods. The overall composition, appearances, and the overall appearance of the alleged infringing marks and the Involved Mark was similar. Despite there were differences between the alleged infringing marks and the Involved Mark, since the Involved Mark carried high fame and high distinctiveness, the relevant consumer would not be able to distinguish the alleged infringing mark with the Involved Mark. Lixun’s use of the infringing marks on the infringing goods would cause confusion as to the source of goods or that the two companies have affiliations. Lixun infringed upon Duckling’s trademark right.
Note, although Lixun claimed that it had obtained authorization from the copyright owner to use the duck design, the court found Lixun altered the duck design. Moreover, Lixun was only authorized to use the brand and the duck design was not registered as a trademark. Since Duckling had the exclusive rights to use the trademark, and the Involved Mark was highly similar to the original work, Lixun’s alteration of the duck design and prominently use the design as a trademark on its goods showed objective bad faith in free riding Duckling’s Involved Trademarks. Lixun also failed to submit evidence proving that it has been using the infringed mark on the infringing goods prior the Involved Mark’s application date. Accordingly, Lixun’s prior use rebuttal cannot be established.
Consider the fame of the yellow duck, the objective bad faith, nature, scope, and consequence of the infringement, the court ordered Lixun and other defendants to pay Duckling for economic loss and reasonable cost of RMB 2.4 million (USD 366,800).
The case number is (2020) Lu Min Zhong No. 3127.
![]() |
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.