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.
Firm News
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Tommy Bahama finally prevailed in a decade-long battle against the “TOMMY BAHAMA” trademarks cases in the retrial before the Supreme People’s Court
On May 20, 2021, the Supreme People’s Court (“SPC”) rendered a final decision in favor of Tommy Bahama (“TB”) for the “TOMMY BAHAMA” trademark opposition cases in Classes 9, 14, and 18. In its decisions, the SPC revoked the lower courts’ and the CNIPA’s decision. The SPC’s final decision marvelously closed TB’s decade-long battle against […]
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“Iron Fist” Protects Intellectual Property Rights
On the occasion of the World Intellectual Property Day, Beijing East IP Law Firm gained another good news and achievements, and one of its cases was selected as “Top 10 Typical Cases of Trademark Administrative Protection in 2020” by the National Intellectual Property Administration, and Beijing East IP was highly recognized by clients for its professional skills, meticulous planning, quick response and professionalism in this administrative law enforcement case.
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Top 10 Trademark Agencies in Administrative Litigation
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 […]
General News
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Weekly China Trademark News Updates – June 16, 2021
Weekly China Trademark News Updates
June 16, 2021
1. Vans won punitive damages of RMB 1 million in a trademark infringement case
Vans, Inc. (“Vans”) owns a registered trademark “
” in class 25 (“Cited Mark”). The Cited Mark has reached high fame through use and promotion. The defendant Zhejiang Kaibang Footwear Co., Ltd. (“Kaibang”) repeatedly used logos that were almost identical with the Cited Mark on shoes related products. The first instance court found that Kaibang infringed upon Vans’s trademark right and should be held liable. The court ordered Kaibang to immediately stop the infringement and compensate Vans for its loss. The court considered Kaibang’s continuous infringement by reference the intent of punitive damages, increased Kaibang’s liability for compensation, and ordered Kaibang for economic losses of RMB 1 million (USD 156,000). Recently, Kaibang withdrew the second-instance appeal, and the above-mentioned first instance judgment has taken effect.2. Unauthorized Red Bull products were banned
On May 28, 2021, the Changsha Intermediate Court of Hunan Province issued an injunction in accordance with the law. The ruling ordered that Changsha Huaxia Sugar and Liquor Co., Ltd. (“Huaxia”) to immediately cease selling beverage products not authorized by Thailand Tencel Healthcare Co., Ltd. (“Tencel”) but containing the “Red Bull” series trademarks. This is yet another injunction after the previous one issued by the Chaoyang People’s Court of Beijing on May 12, 2021, which ruled that Beijing Hualian Supermarket Co., Ltd. should immediately cease selling the “Red Bull Vitamin Functional Drink” produced by Red Bull Vitamin Beverage Co., Ltd.
The Changsha Intermediate Court of Hunan Province found that based on the evidence provided by Tencel and the Supreme Court’s judgment, Tencel was the exclusive right holder of the “Red Bull” series of registered trademarks. The court ordered Huaxia to immediately stop selling Red Bull products that are not legally authorized by Tencel and the ruling would be immediately effective.
3. TikTok was sued for jointly liable for livestream that sold infringing products
Agatha Diffusion SARL (“Agatha”) owns the prior registered trademark “AGATHA” in class 25 on clothes related goods. Agatha authorized Saishi Trading (Shanghai) Co., Ltd. (“Saishi”) in China with an exclusive license to use “AGATHA” related trademarks. Saishi discovered that Laizhou Hongyu Crafts Co., Ltd. (“Hongyu”) was selling bags labeled with its authorized trademarks on TikTok during a livestream. Saishi sued both Hongyu and TikTok for trademark infringement. The Haidian People’s Court of Beijing held that Hongyu was liable for Saishi’s loss of RMB 300,000 (USD 47,000) and reasonable legal costs. The court found that TikTok had done its due diligence and should not be held jointly liable.
4. L’Occitane won RMB 9 million judgement for a trademark infringement
Laboratoires M&L, Société Anonyme (“M&L”) is an internationally renowned multinational company producing fragrance, facial, and body care products. Since 2008, L’Occitane Sakura series body lotion and shower gel (body wash) products have entered China, and in 2016, the cherry blossom graphic trademark was registered.
Zhejiang Junda Biological Technology Development Co., Ltd. (“Junda”) and Guangzhou Ailian Cosmetics Co., Ltd. (“Ailian”) sold body lotion products with cherry blossom patterns on the e-commerce platforms. The packaging and appearances of the products sold were very similar to the appearance of L’Occitane Sakura body lotion. M&L sued Junda and Ailian for trademark infringement and unfair competition. The Hangzhou Intermediate Court found that the actions of Junda and Ailian constituted trademark infringement and amounted to unfair competition. The Zhejiang High Court affirmed the first instance judgment.
5. 21 milk tea shops in Shanghai were fined for RMB 1.06 million for infringing the “COCO and Design” trademark
In April 2021, the Putuo District Administration for Market Regulation confiscated and destroyed the tools used to manufacture infringing goods using the registered trademark “COCO and Deisgn” by 19 business entities in 21 milk tea shops and issued a total of RMB 1.06 million (USD 165,600) in fine.
Through consumers’ complaints that allegedly purchased counterfeit milk tea products labeled the “COCO Du Ke in Chinese” logo, the Putuo District Administration for Market Regulation found that an individual used the word “COCO” prominently on shop signboard and milk tea cups, which was infringing on the exclusive right to use the registered trademark of “COCO and Design.” The Putuo District Administration for Market Regulation imposed administrative penalties according to the Chinese Trademark Law.
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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 – June 8, 2021
Weekly China Trademark News Updates
June 8, 2021
1. The Supreme People’s Court issued the Official Reply of Defendant’s Request for Compensation for Reasonable Expenses due to Abuse of Rights by the Plaintiff in IP Infringement Litigation
On June 3, 2021, the Supreme People’s Court (“SPC”) has issued the Official Reply of Defendant’s Request for Compensation for Reasonable Expenses due to Abuse of Rights by the Plaintiff in IP Infringement Litigation (the “Reply”) to be implemented immediately.
The Reply confirmed that, in an intellectual property infringement litigation, if the defendant can provide evidence to prove that the lawsuit brought by the plaintiff constitutes the abuse of rights according to the law, the people’s court should uphold the defendant’s request that the plaintiff should compensate for the reasonable attorney fee, transportation fee, accommodation fee, and other expenses. The defendant may also file another separate lawsuit to requires the plaintiff to compensate the said reasonable expenses and fees.
2. The Supreme People’s Court issued the Top 10 Typical Internet Cases
On May 31, 2021, the Supreme People’s Court held a press release for the Top 10 typical internet cases and introduced the overall scheme of judicial protection on the internet. We have selected the following case for your reference.
Typical Case No. 8 – Tianjin Jiaruibao Metal Products Co., Ltd. v. Guizhen Xu, Yanhui Deng, Zhenquan Zhao, Tianjin Duoweisi Carpet Co., Ltd., Tianjin Ouhaoya Carpet Co., Ltd., and Zhejiang Tmall Network Co., Ltd. (Third Party)
On December 9, 2016, Jiaruibao opened a “Jiaruibao Flagship Store” on Taobao’s Tmall platform. Zhenquan Zhao, Duoweisi, and Ouhaoya also opened stores on Tmall platform. All four shops engaged in carpet sales. The offline business locations for all four shops are located in the same area. Since June 2019, Zhenquan Zhao has borrowed Guizhen Xu’s ID card to sell carpet orders through Zhenquan Zhao, Duoweisi, and Ouhaoya’s Taobao stores with a fake “Declaration Letter” issued by the three stores containing false content, and forged them with Guizhen Xu’s signature. Thereafter, the legal representative of Duoweisi Weiliang Zhao entrusted Yanhui Deng, who was familiar with Taobao network business, to complete the copyright registration procedures for the three carpet graphics involved in the case. Based on the said copyright registrations, Weiliang Zhao filed complaints with Alibaba’s intellectual property protection platform alleging copyright infringement against the three hot-selling products in the “Jaruibao Flagship Store” for five times, which resulted in the deletion of some product links. Jiaruibao filed an unfair competition lawsuit. After trial, the people’s court found that Zhenquan Zhao and Duoweisi had conspired and maliciously used Alibaba’s intellectual property protection platform rules to complain about Jiaruibo and led to deletion of its product links constituted unfair competition against Jiaruibao. The court held that Zhenquan Zhao, Duoweisi, Ouhaoya, and Yanhui Deng should compensate Jiaruibao for economic losses of RMB 350,000 (USD 54,670).
Typical significance: The notice of link deletion rule is an important legal rule for resolving infringement disputes among right holders, internet service providers, and internet users. This case is a typical case in which an e-commerce operator falsified facts and defrauded the registration of the related works and issued malicious notices to the internet service platform, which caused the interests of competitors in the same industry to be harmed and constituted a typical case of unfair competition. This case has important exemplary significance for guiding the right holder to correctly exercise the right to request for notice of deletion of links, curbing malicious complaints, and maintaining honesty, fairness, and standardization of the internet order.
The case number is 2019 Jin 0016 Min Chu No. 5880.
For more information on the rest of the Top 10 cases, please visit the following link (in Chinese): http://www.court.gov.cn/zixun-xiangqing-306391.html
3. Rolls-Royce invalidated “LAO SHI LAI SHI in Chinese”
Recently, the Beijing High Court has concluded a second instance administrative trademark invalidation dispute between Rolls-Royce PLC (“Rolls-Royce”) and Yongkang Tiewang Industry and Trade Co., Ltd. (“Tiewang”). The court affirmed the first instance court’s decision and rejected the CNIPA’s petition to appeal.
The Beijing High Court found that the disputed trademark “Lao Shi Lai Shi in Chinese” and the cited mark 1 “Rolls-Royce in Chinese” were relatively similar in text composition, pronunciation, and overall visual effects. Considering that the cited mark 1 enjoyed relatively high fame in “car” related goods, and such a term was not a commonly used vocabulary with strong distinctiveness, Tiewang should have known about this, but it did not make a reasonable effort to avoid applying for a trademark registration that was similar to the cited mark 1. Such an application was hardly a coincidence. Therefore, it can be determined that the disputed trademark constituted as an imitation of the cited mark 1. Although there were certain differences between the goods of the disputed mark such as “steel plates, steel pipes, metal doors,” and the goods of the cited mark 1 such as “cars” in terms of function, use, manufacturing unit, sales channels, considering the extent of the overlapped relevant public, similarity of the marks, and the well-known status of the cited mark 1, one can determine that the registration of the disputed mark may mislead the public, weaken the distinctiveness of a well-known mark, and thereby harm the interests of Rolls-Royce. Therefore, the registration of the disputed trademark constituted as the circumstances described in the third paragraph of Article 13 of the Chinese Trademark Law 2014.
The case number is 2019 Jing Zhong No. 9721.
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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
Publications
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Application of the “Other Unjustified Means” under Article 44 Paragraph 1 of the New Trademark Law
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
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Well-Known Mark Recognitions in China – Part I
Securing well-known mark (WKM) recognitions in China can give a broader protection to brand owners in both administrative and judicial disputes.
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Some Essential Aspects of Utility Model Patent in China
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.
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Can a Markush Claim be Split?
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.
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