Weekly China Brand Protection News

January 3, 2025

The SPC affirmed the lower court’s decision to invalidate Beijing Miantian’s “Muji in Chinese” trademark in a retrial decision

At the end of 2024, the Supreme People’s Court rendered a retrial decision on the administrative dispute regarding the invalidation of the “Muji in Chinese (無印良品)” trademark with reg. no. 16999994A (“Disputed Mark”), concluding an eight-year-long trademark dispute.

The Disputed Mark was applied for by Beijing Miantian Textile Products Co. Ltd., (Beijing Miantian) on May 21, 2015, for use on Class 24 goods, including “textile fabrics” and “textile towels.” The trademark holder of the Japanese MUJI brand, RYOHIN KEIKAKU CO., LTD. (“MUJI Co.”), initially filed an opposition in January 2017, followed by an invalidation request in September 2018. Both actions were dismissed. However, subsequent first- and second-instance courts supported MUJI Co., ruling that the Disputed Mark should be declared invalid.

Beijing Miantian petitioned the SPC for a retrial, which reviewed and ruled as follows:

1. Does the Disputed Mark Violate Article 32 of the Trademark Law (Prior Trade Name Rights)?

Evidence in the case shows that MUJI Co. established its first wholly owned subsidiary in China in May 2005. By the time of the Disputed Mark’s application, MUJI Co. had established over 100 subsidiaries and branches in mainland China, all using “Muji in Chinese” as part of their trade name. MUJI Co. also operated online and offline stores named “Muji in Chinese” selling textiles and other daily goods. As a result, MUJI Co. had long conducted business in China, using “Muji in Chinese” as its trade name, achieving high recognition and influence across various regions in mainland China.

The Disputed Mark consists of the characters “Muji in Chinese” identical to MUJI Co.’s trade name. The designated goods for the Disputed Mark are closely related to MUJI Co.’s prior use of its trade name on apparel and household items in terms of production, function, sales channels, and target consumers. This similarity is likely to cause confusion among the public, harming MUJI Co.’s prior trade name rights.

2. Does the Disputed Mark Constitute Registration by “Other Improper Means” Under Article 44(1) of the Trademark Law?

Before applying for the Disputed Mark, Beijing Miantian and its affiliates had applied for over 60 trademarks. Subsequently, they continued to file for more than 900 trademarks, including those containing “Wuyin (first two characters of Muji in Chinese)” and/or “Liangpin (last two characters of Muji in Chinese)” or resembling trademarks with significant originality and distinctiveness in the same industry. Of these, nearly 300 were declared invalid. Such filings disrupted trademark registration management order.

Evaluating Beijing Miantian’s intent involves not only actions before the filing date but also a comprehensive review of their behavior over a period. Beijing Miantian repeated filings indicate an intent to exploit the goodwill of others.

Evidence submitted by MUJI Co. during the retrial revealed that affiliates and franchisees authorized by Beijing Miantian altered their registered trademarks to imitate MUJI’s trademarks during business operations. Multiple effective judgments and administrative penalties found these actions to constitute trademark infringement and unfair competition. This demonstrated Beijing Miantian’s intent to exploit MUJI’s brand for unfair gains.

3. In Reviewing Trademark Administrative Appeal Cases, a Comprehensive Review of the Lower Court’s Judgment, Ruling, and the Challenged Administrative Act Should Be Examined

Article 87 of the Administrative Litigation Law stipulates that appellate courts must comprehensively review first-instance court decisions, rulings, and challenged administrative acts. The SPC’s provisions on trademark authorization and confirmation cases allow courts to expand the scope of review, when necessary, provided all parties have presented their arguments.

In this case, MUJI Co. argued in its invalidation request and subsequent litigation that the registration of the Disputed Mark violated Articles 32 and 44(1) of the Trademark Law. Thus, the appellate court’s review of these matters did not exceed the scope of the case. Beijing Miantian’s reasons for requesting a retrial were unfounded.

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