Weekly China Brand Protection News

August 22, 2024

A Court found that the “MUJI in Chinese” trademark and service name have gained high recognition on retail services

Ryohin Keikaku Co., Ltd. (“Ryohin Keikaku”) and MUJI (Shanghai) Co., Ltd. (“MUJI Shanghai”) sued Beijing Cotton Field Textile Products Co., Ltd. (“Beijing Cotton Field”), Beijing Wuyinliangping Investment Co., Ltd., (“Beijing Wuyinliangping Investment”) and Beijing Wuyinliangping Home Furnishing Products Co., Ltd. (“Beijing Wuyinliangping Home Furnishing”), etc. for trademark infringement and unfair competition.

Ryohin Keikaku is the owner of the “ ” trademark in Class 35. It also registered “” in Classes 16, 20, 21, 25, and 35. It authorized MUJI Shanghai to use its registered trademarks in mainland China. Meanwhile, Beijing Cotton Field registered multiple “Wuyinliangping in Chinese” trademarks in Class 24, and  and also registered the “Wuying Workshop in Chinese” and “Natural Mill” trademarks in Classes 16, 24, 25, and 35.

The court found that:

Regarding trademark infringement:

In Class 20, the trademark “MUJI in Chinese” with reg. no. 4471268 owned by Ryohin Keikaku is approved for use on goods in Class 20, including pillows. Meanwhile, the trademark No. 1561046 “Wuyinliangping in Chinese” owned by Beijing Cotton Field is approved for goods in Class 24, including cotton fabrics and pillowcases. The accused infringing U-shaped pillow’s label indicates the product name as a neck pillowcase, but in reality, it is sold as a pillowcase with a filled pillow inside. Therefore, the accused U-shaped pillow is not just a separately sold pillowcase but is sold as a complete product with both pillowcase and pillow insert, thus falling under the category of pillows, a product covered by the Ryohin Keikaku’s trademark with reg. no. 4471268. As a result, the production by Beijing Wuyinliangping Investment and the sale by Dongtai Derun of the accused infringing U-shaped pillow infringes on Ryohin Keikaku’s trademark right. Additionally, the accused infringing long pillow is listed on the invoice as “Muji pillow in Chinese,” which functions as a trademark use by indicating and identifying the source of the product. The use of the “Wuyinliangping in Chinese” mark on the same or similar goods by Dongtai Derun without authorization is likely to cause confusion and misidentification, constituting infringement.

In Class 21, the accused infringing heat-resistant gloves, classified as household utensils, are similar to the products under Ryohin Keikaku’s trademark with reg. no. 4471267 in Class 21, which includes “cleaning tools (hand-operated), brooms,” due to similarities in function, purpose, and target consumers. Therefore, the use of the “Wuyinliangping in Chinese” mark on the accused infringing heat-resistant gloves exceeds the approved scope of the trademark with reg. no. 14621213, constituting infringement.

In Class 16, Beijing Cotton Field and Dongtai Derun used the “Wuyinliangping in Chinese” mark on the packaging of their accused infringing non-woven baby wipes (wet wipes) and non-woven multipurpose wipes (soft wipes). These products significantly overlap with the “tissues, wet wipes” covered by Ryohin Keikaku’s trademark No. 4471270 in terms of function, purpose, sales channels, and target consumers. Therefore, the accused infringing behavior infringes on Ryohin Keikaku’s exclusive rights to its registered trademark with reg. no. 4471270 in Class 16 for “tissues.”

In Class 25, the use of the “Wuyinliangping in Chinese” mark on the sales invoice for the accused infringing slippers by Dongtai Derun constitutes an infringement of trademark with reg. no. 4833852.

Finally, in Class 35, Dongtai Derun provides retail services for daily necessities. The purpose, content, method, and target of these services are highly similar to “promotional services (for others)” covered by Ryohin Keikaku’s trademarks with reg. nos. 4471277 and 16240403 “Wuyinliangping in Chinese.” The only distinction is between promoting others’ products and selling products, which is not easily distinguishable for the average consumer. During the provision of these retail services, Dongtai Derun used the same “Wuyinliangping in Chinese” mark on store signs, in-store promotional posters, cashier counter backgrounds, shopping bags, shopping baskets, and promotional posters, which is likely to confuse the relevant public and constitutes trademark infringement.

Regarding unfair competition:

According to the evidence, before the establishment of Beijing Cotton Field, the trade name and retail service name of Muji Shanghai already had significant recognition and market influence. The two Beijing companies used the same trade name as Muji Shanghai to attract franchisees. In the retail services provided by the online and offline stores opened by the Beijing companies, the “MUJI in Chinese” and “Wuyinliangping in Chinese” marks were frequently used in a non-standard manner. Additionally, the two Beijing companies labeled their products with their company name, which could easily lead the relevant public to mistakenly believe that there was a specific connection between the two Beijing companies and Ryohin Keikaku or Muji Shanghai, causing confusion. Based on the evidence, the court found that the purpose of Beijing Wuyinliangping Investment and the later-established Beijing Wuyinliangping Home Furnishing in using “Wuyinliangping in Chinese” as their trade name was largely to capitalize on the existing influence of Muji Shanghai’s trade name and the well-known “MUJI in Chinese” retail service name, rather than simply making fair use of the authorized trademark “Wuyinliangping in Chinese” with reg. no. 1561046.

In summary, the court found that the unauthorized use of the “Wuyinliangping in Chinese” name by the Beijing Wuyinliangping companies led to public confusion and constituted unfair competition.

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