Weekly China Brand Protection News

October 18, 2024

1. Advertising products as “Korean Version North Face Apparel” without authorization constitutes trademark infringement, CNY 360,000 compensation ordered

The plaintiff, The North Face Apparel Co., Ltd. (“The North Face”), holds the “” mark with reg. no. 2018929, the “” mark with reg. no. 5357180, and the “Bei Mian in Chinese” mark with reg. no. 2018921 in Class 25. The North Face discovered that the defendant, Hangzhou Yuhang Qianniuxing Clothing Business Department (“Qianniuxing”), and its actual operator, Huang, were promoting and selling clothing bearing the “” and “” logos through a Douyin store called “Qianniuxing.” The store advertised these clothes as “Korean Version Bei Mian (North Face in Chinese) 1996 Down Jacket” on the product detail page and promoted the alleged infringing products through short videos and live-stream sales. The North Face filed a lawsuit against the two defendants claiming that their actions infringed its trademark rights, demanding the cessation of infringement and compensation for economic losses and reasonable expenses totaling CNY 700,000 (USD 98,250).

The key issues in this case are as follows:

(1) Did the defendants’ actions infringe The North Face’s trademark rights?

The court found that the accused products prominently displayed the “” and “” logos, and the sales link titles prominently featured the words “Bei Mian.” These uses served to identify the origin of the goods, qualifying as trademark usage. The alleged infringing products were down jackets and T-shirts, which fall under Class 25, the same category as The North Face’s registered trademarks. The accused logos were identical to The North Face’s registered trademarks. Given that The North Face’s trademarks have achieved high fame and distinctiveness through extensive use, the accused logos and The North Face’s registered trademarks were deemed identical and used on the same class of goods, likely causing consumer confusion. Therefore, the defendants’ unauthorized sale of the accused products infringed upon The North Face’s trademark rights.

(2) Can the defendant’s parallel import defense be upheld?

The court determined that the defendant, Qianniuxing, did not provide evidence that the trademarks on the accused products were owned by the same rights holder in both China and South Korea, nor did they prove the origin of the products or demonstrate that the accused goods had undergone proper customs supervision. The available evidence was insufficient to establish that the accused goods qualified as parallel imports. Consequently, the parallel import defense was dismissed. Furthermore, based on the facts of this case, the court did not recognize the exhaustion of trademark rights, dismissing the defense of trademark exhaustion raised by Qianniuxing.

(3) Can the defendant’s defense of legitimate source be upheld?

Although Qianniuxing submitted WeChat chat records and transfer records, it failed to provide evidence of the WeChat user’s real identity, and its authenticity could not be confirmed. Moreover, there was no corresponding relationship established between the chat records and the accused products. The existing evidence was insufficient to prove that the accused products were obtained through legal means and lawfully imported into China for sale. Therefore, the court ruled that the defense of legitimate source could not be upheld.

(4) If trademark infringement is established, what liability should the two defendants bear?

The infringement actions of Qianniuxing constituted trademark infringement, and it should bear corresponding liability. Huang, as the actual operator of the Douyin store involved, was jointly liable for the infringement with Qianniuxing. According to Article 56 of the Civil Code, the debts of individual businesses should be borne by the business operator using their personal assets. Therefore, Huang should bear the liability of Qianniuxing in this case.

The court supported The North Face’s claims to stop the infringing behavior and destroy the inventory of infringing products. Regarding the amount of compensation, the court, considering factors such as the sales volume and revenue of the infringing products, the duration of the infringement, the small scale of the individual business, the defendant’s low subjective malicious intent, the high fame and distinctiveness of The North Face’s trademarks, and the reasonable expenses incurred by The North Face in protecting its rights, determined that the two defendants should jointly compensate The North Face for economic losses and reasonable expenses totaling CNY 360,000 (USD  50,500).

2. The assessment of trademark similarity involving geographical names should primarily focus on comparing the non-geographical parts

Disputed Marks	Cited Marks
Reg. No. 39521915 Registrant: Deng	Reg. Nos. 22772816, 37274477 Registrant: Chen

The Beijing High Court recently concluded an administrative dispute regarding the invalidation of the “Shibati Dengdengmian” trademark between the appellant, the CNIPA, appellant Chen, and appellee Deng. The court rejected the appeal and upheld the original judgment.

The key issue in the case was whether the Disputed Mark and the two Cited Marks constituted similar trademarks for identical or similar services. After review, the court determined that the Disputed Mark is a purely text-based trademark, “Shibati Dengdengmian,” while the two Cited Marks consist of the words “Shibati Wooden Barrel.” Although both contain “Shibati,” the evidence showed that “Shibati” refers to an old street name in Chongqing’s Yuzhong District, symbolizing old Chongqing. Compared to the textual components “Dengdengmian” in the Disputed Mark and “Wooden Barrel” in the Cited Marks, “Shibati” is less distinctive. Therefore, the distinctive elements, “Dengdengmian” and “Wooden Barrel,” differ significantly in composition, meaning, and pronunciation. As such, the Disputed mark, when used for services such as “restaurants, dining establishments, etc.” can be distinguished from the Cited Marks and is unlikely to cause confusion or misidentification among the public regarding the origin of the services. The court upheld the first-instance ruling, which found that the use of the Disputed Mark for “restaurants, dining establishments, etc.” did not violate Articles 30 or 31 of the Trademark Law.

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