Weekly China Trademark News Updates

June 7, 2023

1. Victorinox’s “Cross and Shield” marks were intentionally infringed with bad faith. The infringers were ordered to pay RMB 3 million in compensation

The Beijing Xicheng District Court recently concluded a trademark infringement lawsuit between Victorinox AG (“Victorinox”), Beijing Weishi Elite Trading Co., Ltd. (“Elite”), and Shanghai Baoshun Trading Co., Ltd. (“Baoshun”). The court ordered Elite and Baosun to immediately cease trademark infringements and compensate Victorinox economic damages of RMB2.9 million (USD407,355) and reasonable expenses of RMB100,000 (USD14,046). Baoshun appealed the first instance decision but the Beijing IP Court rejected the appeal request.

The alleged infringements in this case were: 1. The alleged infringing store sells bags and uses “victoriacross flagship” in the store name and uses “” pattern on its webpage; 2. “Weishi Cross in Chinese” was used in the name of each product; 3. The home page of each product introduction picture uses a combination of “VICTORIACROSS” and ““; 4. “” was used alone in many places on the products bought during notarized purchase, and “VICTORIACROSS” and “” were used in combination on packaging and tags. The allegedly infringing products were backpacks, handbags, suitcases, etc., which fell into the goods approved for use under Victorinox’s “VICTORINOX” mark with reg. no. G763828, the “” mark with reg. no. 3491225, and the “Victorinox” mark with reg. no. 8563347. Therefore, the alleged infringement fell within the scope of protection of Victorinox’s trademarks, which constituted trademark infringement.

The court found that the production and use of Elite and Baoshun lacked a legal basis. Moreover, the following factors were considered: First, Elite’s “Weishi Cross in Chinese” mark with reg. no. 6954073 was determined by the China Supreme  Court to fall under Article 13, Paragraph 2 of the 2001 Trademark Law, which “reproduces, imitates or translates others well-known mark that are not registered in China are likely to cause confusion,” and invalidated. Therefore, Elite’s copying, imitating, and translating others’ prior well-known marks were done with bad faith intentions. Second, the alleged infringing stores and products used the “” logo that was similar to Victorinox’s registered marks. Compared with “,” the latter has a higher significance. The composition elements, method, and overall appearances were all very similar. Elite and Baoshun did not provide evidence to prove that their use had a legal basis for rights. Third, in the (2018) SPC Administrative Judgment No. 64 issued by the China Supreme Court on May 31, 2018, it was determined that prior to the registration date of the “VICTORIACROSS” mark with reg. no. 349122, Victorinox’s prior marks with reg. nos. G763828 and 3491225 were widely used in class 18’s goods for handbags, travel bags, and other goods, which could establish a certain fame in China. Therefore, as a product operator in the same industry, it was impossible for Elite to be unaware of Victorinox’s brand reputation, but it still used the “VICTORIACROSS” and “Weishi Cross in Chinese” in combination with the “” logo, which was very similar to the use of Victorinox. Its intention to actively seek to confuse the results was obvious. In summary, it can be determined that the subjective bad faith of Elite and Baoshun was obvious, and that their acts have infringed Victorinox’s trademark right, and they should bear the legal responsibility to stop the infringements.

2. RMB 800,000 in damages for unauthorized use of “Mercedes in Chinese” on auto parts

The Shanghai IP Court recently concluded a trademark infringement lawsuit between the appellant Shanghai Tonghe Auto Parts Co., Ltd. (“Tonghe”), the appellee Daimler AG (“Daimler”), and the defendant in the first instance Shanghai Tongzhi Auto Parts Co. Ltd. (“Tongzhi”). The court rejected the request to appeal and affirmed the lower court’s decision. Tonghe was ordered to immediately stop infringements against Daimler and was ordered RMB800,000 (USD112,380) in compensation to cover Daimler’s economic loss.

According to the notarized evidence submitted by Daimler and the administrative penalty decision, on-site transcripts, interrogation transcripts, photos and other evidence made by Shanghai Minhang District Market Supervision Administration, it can be determined that Tonghe sold brake pads, in the relevant stores it operated, along with filters, pulleys and other auto parts. These parts were marked with three-pointed star design, “Mercedes-Benz,” “MERCEDES-BENZ.” and other logos. The first instance court found that the said goods were identical to those approved for use by Daimler’s marks with reg. nos. 526122 and G1089299. The three-pointed star logo and the “MERCEDES-BENZ” mark used above were basically identical visually as the three-pointed star logo and the “MERCEDES-BENZ” mark owned by Daimler, which constituted identical marks. Compared with Daimler’s marks, the only difference between the “MERCEDES-BENZ” mark and the “Mercedes-Benz” mark was letter case, and there was basically no visual difference between the two in overall appearances. Therefore, Tonghe’s acts violated Daimler’s trademark rights. The first instance court took into account the relatively high popularity of Daimler’s marks on related goods, the fact that product quality may affect personal safety, and the variety of infringing products, and comprehensively considered Tonghe’s degree of subjective bad faith, the nature, time, and decided that the amount of compensation shall be determined based on factors such as the consequences, the quantity, and unit price of the infringing products, and the size of the company.

The main focus of dispute in the second instance of this case was whether the amount of compensation in the first instance was reasonable. Regarding Tonghe’s claim that the amount of compensation in this case should be based on the quantity of infringing products investigated and dealt with by the Market Supervision Administration and its fine. The second instance court found that Daimler, as the owner of the registered marks, has the right to both apply for administrative investigation and file a civil lawsuit for trademark infringement. Although Tonghe was punished administratively because Daimler purchased the infringing product based on the three notarizations involved in the case, the amount of compensation in civil infringement lawsuits is not necessarily based on the facts and the fines found in the administrative punishment. The first instance court’s comprehensive considerations of Tonghe’s infringement facts were appropriate.

With regard to Tonghe’s claim that Daimler failed to present evidence of notarized purchases in the first instance, resulting in the inability to identify product quality, Daimler should bear the adverse consequences. The second instance court found that although Daimler did not submit notarized evidence in the first instance, based on the photos attached to the notarial certificate and the content recorded on the CD-ROM and the relevant facts recorded in the administrative punishment decision, Tonghe did not submit valid evidence to prove its products’ legal origin. Based on this, the first instance court was not in err in determining that Tonghe infringed Daimler’s trademark. Moreover, product quality of the infringing products would not have affected the determination of trademark infringement.

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

May 24, 2023

1. “Adidas” was recognized as a well-known mark and successfully fended off “qdidas”

Disputed Mark Reg. No. 19502292	Cited Mark 1 Reg. No. 71092	Cited Mark 2 Reg. No. G1037620	Cited Mark 3 Reg. No. 3336263

The Beijing High Court recently concluded an administrative trademark invalidation dispute between the appellant Tianjin Jiuhong Bicycle Co., Ltd., (“Jiuhong”), the CNIPA, and Adidas Co., Ltd. (“Adidas”). The appeal was dismissed, and the first instance court judgment upheld.

The issue in this case is whether the Disputed Mark violated Article 13, Paragraph 3 of the 2014 Trademark Law. The court found that: based on the evidence in the case, it can be proved that the Cited Mark 1 has been widely known to the public on clothing and other goods before the Disputed Mark’s application date and constituted a well-known mark. According to the need-based determination principle of well-known marks, the courts will only determine whether a trademark is well-known when it is really necessary. This court has protected the rights and interests of Adidas by affirming that the Cited Mark 1 is a well-known mark, and will not comment on whether the Cited Marks 2 and 3 constituted well-known trademarks.

The Disputed Mark is composed of English letters “qdidas”, the Cited Mark 1 is a word trademark composed of uppercase English “ADIDAS”. The Disputed Mark and the Cited Mark 1 are relatively similar in terms of word composition, pronunciation, meaning, appearance, etc. It constituted a copy or imitation of the Cited Mark 1. Although “bicycle; trolley” and other goods approved for use under the Disputed Mark and “clothes” goods for which the Cited Mark  is well-known are not similar goods according to the CNIPA Goods and Services Classification, they overlap in terms of sales channels and consumer groups, which belong to goods with a high degree of correlation. Considering factors such as the distinctiveness and popularity of the Cited Mark 1 and the degree of imitation of the Disputed Mark, the use of the Disputed Mark on “bicycles; trolleys” and other goods was likely to cause the relevant public mistakenly believe that the Disputed Mark and the Cited Mark have a certain degree of connection, thereby weakening the distinctiveness of each Cited Mark, improperly using the market reputation of the Cited Marks, and causing the interests of Adidas to be affected and damaged. Therefore, the first instance judgment and the sued ruling determined that the registration of the Disputed Mark violated the provisions of Article 13, Paragraph 3 of the 2014 Trademark Law was not wrong, and this court affirmed. The relevant grounds of appeal of Jiuhong cannot be established and should not be supported.

2. Nike successfully invalidated the “Swoosh & M & Design” mark

Disputed Mark Reg. No. 30399446	Cited Mark 1 Reg. No. 991722	Cited Mark 2 Reg. No. 4581865

The Beijing High Court recently concluded an administrative trademark invalidation dispute between the appellant Shanghai Jingnai Apparel Co., Ltd. (“Jingnai”), the CNIPA, and Nike Innovation Co., Ltd. (“Nike”). The court dismissed the appeal and affirmed the first instance judgment.

The Beijing High Court found that “clothing, shoes, socks” and other goods approved for use under the Disputed Mark and “clothing, shoes, hats” and other goods approved for use under the Cited Marks 1 and 2 fall into the same subclass according to the CNIPA Goods and Services Classification, constituted as identical or similar goods. The Disputed Mark is composed of the English letter “m” and designs, and the Cited Marks 1 and 2 are design marks. Comparing the Disputed Mark with the Cited Marks, it can be seen that the lower part of the Disputed Mark is highly similar to the design of the Cited Marks. The said marks were similar in design methods and overall visual effects, which constituted similar trademarks. In addition, the evidence submitted by Nike can prove that the Cited Marks already had a high reputation before the application date of the Disputed Mark through its publicity and use. Jingnai did not submit any evidence to prove that the Disputed Mark had formed a one-to-one relationship with the Disputed Mark through use and promotion, and was able to distinguish itself with the Cited Marks. On this basis, if the Disputed Mark and the Cited Marks 1 and 2 coexisted in the market, it would easily cause the relevant public to be confused and misunderstand, or believe that there was a certain relationship between the source of the goods. Therefore, the Disputed Mark and the Cited Marks constituted similar marks on identical or similar goods, and the registration of the Disputed Mark violated Article 30 of the Trademark Law. The original judgment was correct and shall be upheld.

3. The trademark infringer of the “Atlantis in Chinese” mark was ordered to compensate for RMB 1 million

The Hainan High Court recently concluded a trademark infringement and unfair competition dispute between the appellant Hainan Fuda Building Materials Co., Ltd. (“Fuda”), Hainan Atlantis Hotel Management Co., Ltd. (“Hainan Atlantis”), the appellee Kona International Co., Ltd. (“Kona”) and Hainan Zhongrui Huachen Investment Holdings Co., Ltd. (“Zhongrui Huachen“), the defendant in the original trial. The court dismissed the appeal and upheld the first instance judgment.

The issues in this case are: 1. Whether Fuda, Hainan Atlantis, and Zhongrui Huachen, the defendant in the original trial, infringed on Kona’s trademark rights; 2. Whether Fuda, Hainan Atlantis, and Zhongrui Huachen, the defendant in the original trial, have committed unfair competition; 3. If their actions constitute trademark infringement and unfair competition, how should the three companies be held civilly liable.

Regarding issue 1, first of all, Kona registered the “ATLANTIS” mark with reg. no. 5171193, the ” Atlantis in Chinese” mark with reg. no. 6635808, the “ATLANTIS” mark with reg. no. 10940717 and the “Atlantis in Chinese’ mark with reg. no. 14010119 (collectively referred to as the “Cited Marks”), which are approved for use in services such as sales of commercial housing, real estate leasing, management, apartment management, etc. According to the facts ascertained by the first instance court, since 2008, Kona has been publicizing its “Atlantis in Chinese” and “ATLANTIS” marks on Xinhuanet and other media. It has further publicized and reported the Cited Marks when it began to construct and operate the Sanya Atlantis Hotel. The Sanya Atlantis Hotel named after the Cited Marks has won relevant honors successively, with high significance and fame. Second, Zhongrui Huachen and Fuda named their real estate project under development and construction “Atlantis Garden in Chinese” and used “Atlantis in Chinese” and “ATLANTIS” extensively when promoting and selling its project. Such use, in fact, played the role of identifying the project, and it was essentially a commercial mark. The name was exactly the same as the prominent part of the Cited Mark, and the pronunciation was the same, and it was located in Hainan, where the Sanya Atlantis Hotel is located. It will make the relevant public mistakenly believe that there was a certain connection between the real estate project and Kona and its brand services, which would easily mislead the public and confuse the relevant public. Therefore, Zhongrui Huachen and Fuda used Kona’s Cited Marks as the name of its real estate and used it in large quantities in the process of development, construction, publicity and sales, which infringed Kona’s trademark right. In addition, according to the ascertained facts, Kona applied for the registration of the “ATLANTIS” mark in 2006 and the “Atlantis in Chinese” mark in 2008, and made a lot of publicity for the said marks and gained wide popularity no later than 2008. The construction engineering design plan of the “Atlantis Garden in Chinese” project was only approved by the Haikou City Planning Bureau on July 17, 2012. Therefore, the prior use defense of the three companies could not be established.

Regarding issue 2, the Hainan Atlantis Company was a company established by Zhongrui Huachen on November 25, 2013 for the operation and management of real estate projects. Basically, the Hainan Atlantis Company used the same characters as Kona’s already well-known registered mark “Atlantis in Chinese” as its enterprise name and used “Atlantis in Chinese” in a large number of daily operations and promotional activities. The “Atlantis in Chinese” mark would easily made the relevant public mistakenly believe that the three companies and the real estate projects developed by them have a specific relationship with Kona. Therefore, it constituted unfair competition and should bear corresponding civil liabilities.

Regard issue 3, the assumption of infringement liability, Kona requested the three companies to stop infringing its Cited Marks, stop using the Cited Marks in all commercial publicity and activities including but not limited to the “Atlantis in Chinese” in real estate project site, brochures and WeChat public account, and requested the Hainan Atlantis Company to immediately stop unfair competition and change the company name. The changed company name must not contain the word “Atlantis in Chinese” based on factual and legal basis. The first instance court supported Kona’s requests according to the law. Regarding the liability for compensation, because Kona did not provide evidence to prove the economic losses it suffered due to the infringement, nor did it provide evidence to prove that Zhongrui Huachen, Fuda and Hainan Atlantis gained unjustified benefit, the first instance court comprehensively considered factors such as the popularity and influence of the Cited Marks, the nature and degree of infringement by the three companies, the time of infringement and the degree of subjective fault, and the reasonable expenses paid by Kona in this case, it was not inappropriate to determine that the three companies should compensate Kona for economic losses and reasonable expenses of RMB 1 million (USD141,747).

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