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.
East IP is pleased to announce the expansion of its trademark and IP enforcement practices with the arrival of two new teams, including SIPS, a market-leading IP firm based in Hong Kong, founded by Joe Simone, and a team of six partners with 36 professionals led by Jimmy Huang Jingwen, from the Beijing office of a top Chinese law firm.
East IP is pleased to announce the expansion of its trademark and IP enforcement practices with the arrival of two new teams, including SIPS, a market-leading IP firm based in Hong Kong, founded by Joe Simone, and a team of six partners with 36 professionals led by Jimmy Huang Jingwen, from the Beijing office […]
China’s new punitive damages system bolsters protection against trademark infringement
Recently, BEIJING EAST IP LTD assisted a Chinese sports equipment company to successfully solve the problem that its products sold on Amazon in Japan were complained by competitors for infringing Japanese design patent, and quickly lifted the delisting punishment.
Weekly China Brand Protection News
May 7, 2024
1. Michelin prevailed in a trademark infringement dispute involving the “Mizhilian in Chinese” mark
The Compagnie Generale des Etablissements Michelin (“Michelin”) owns the registered trademarks “MICHELIN” and “Michelin in Chinese.” The said trademarks had been recognized as well-known marks multiple times. Since 1900, Michelin has published the “Michelin Guide” for restaurants around the world, and the restaurants included in it are recognized as Michelin restaurants. In 2008, Michelin began to use “Mizhilian in Chinese” as the Cantonese translation of “MICHELIN” and has issued the “Mizhilian Guide in Chinese” for a long time. A catering company in Shanghai used the “Mizhilian in Chinese” logo during its business activities without authorization and promoted on its website: “My name is ‘Mizhilian in Chinese.’ In Hong Kong, ‘Mizhilian in Chinese’ means Michelin… …”. Its business scale has expanded rapidly, with 500 stores opened across the country in the past five years. Michelin then filed a lawsuit in court, claiming that this Shanghai catering company had infringed on its well-known marks. The first instance court held that Michelin’s “MICHELIN” and “Michelin in Chinese” trademarks are well-known trademarks, and “Mizhilian in Chinese” is the Cantonese translation of “MICHELIN.” The Shanghai catering company used the “Mizhilian in Chinese” logo without authorization that infringed Michelin’s trademark right. The court ordered the Shanghai catering company to stop the infringement and compensate Michelin RMB10 million (USD1.4 million). The Shanghai catering company appealed. The Hubei High Court found that when judging whether the relevant languages have a translation relationship, not only is it necessary to consider the corresponding language habits and regional differences, but also to respect the current market situation. Foreign trademarks can have multiple different Chinese translations. The “MICHELIN” trademark can be translated as “Michelin in Chinese,” but Michelin also translated it into Cantonese as “Mizhilian in Chinese” and issued the “Mizhilian Guide in Chinese.” After long-term use and publicity, “Mizhilian in Chinese,” “MICHELIN” and “Michelin in Chinese” have formed a stable language correspondence. The Shanghai catering company claimed in its promotion that “’Mizhilian in Chinese” means Michelin in Hong Kong dialect and that it deliberately took advantage to the goodwill of the “MICHELIN” and “Michelin in Chinese” trademarks and intentionally caused consumer confusion. The appeal was dismissed, and the lower court’s decision affirmed.
2. A judicial punishment case for bad faith litigation involving the “Chang Gao Dian Xin in Chinese” mark
Houfu Qitian Digital Technology Co., Ltd. (“Houfu Qitian”) was approved to register the 12 “Chang Gao Dian Xin in Chinese” trademarks in September and October 2022. In November 2022, Houfu Qitian and its affiliated company Changgao Dianxin International Trading Co., Ltd. jointly filed a lawsuit in court, claiming that Changgao Dianxin Technology Co., Ltd.’s use of the “Chang Gao Dian Xin” logo constituted trademark infringement and unfair competition. The Changsha Intermediate Court found that Houfu Qitian has applied for registration of 129 trademarks in just 8 months since its establishment in March 2021, covering 24 classes, and it cannot prove that it has the intention to use. After Changgao Dianxin Technology Co., Ltd. announced it will change its company name due to its listing, Houfu Qitian immediately applied to register the 12 “Chang Gao Dian Xin in Chinese” trademarks and filed a lawsuit demanding a huge compensation of RMB10 million (USD1.4 million). During the trial, all 12 “Chang Gao Dian Xin in Chinese” trademarks have been declared invalid by the CNIPA. The first instance court held that Houfu Qitian and its affiliated company Changgao Dianxin International Trading Co., Ltd. knew that the trademark involved in the case was registered through improper means, but still maliciously filed a trademark lawsuit to demand huge sums of money for the purpose of obtaining illegal benefits. Its action violated the principle of good faith and filed the lawsuit in bad faith and abused its intellectual property rights. The court fined Houfu Qitian and its affiliated company RMB100,000 (USD14,135). Houfu Qitian and Changgao Dianxin International Trading Co., Ltd. petitioned for reconsideration. The Hunan High Court dismissed the petition and affirmed the first instance decision.
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Weekly China Brand Protection News
April 30, 2024
1. The China Supreme Court releases the 2023 Top 10 IP Cases
On April 22, the China Supreme Court released the 2023 Top 10 IP Cases and 50 Typical IP Cases. Among these cases, those involving trademark infringement and unfair competition are as follows:
1. The “Siemens in Chinese” trademark infringement and unfair competition disputes
SIEMENS AKTIENGESELLSCHAFT and Siemens (China) Co., Ltd. (“Siemens”) are the rights holders of the “Siemens in Chinese” and “SIEMENS” trademarks. The two trademarks are registered on washing machines and other goods. After long-term use and vigorous promotion by Siemens, these two trademarks have obtained high reputation. Ningbo Qimou Electric Co., Ltd. (“Qimou”) and others registered the name “Shanghai Siemens Electric Co., Ltd.” overseas and extensively used it as a commercial logo on the washing machine products, packaging, and related promotional activities. Siemens claimed that the acts of Qimou and others infringed on its registered trademark rights and constituted unfair competition. The first instance court found that the alleged infringement by Qimou and others did not constitute trademark infringement, but constituted unfair competition. The court held that Qimou and others should immediately stop the infringement and compensate for economic losses of RMB 100 million (USD 138 million) and reasonable expenses of RMB 163,000 (USD 22,500). Qimou appealed. In the second instance, the China Supreme Court found that Qimou and others knew the popularity of the “Siemens in Chinese” and “SIEMENS” trademarks and deliberately used “Shanghai Siemens Electric Co., Ltd.” on washing machine products, causing confusion among consumers and constituted trademark infringement. The use of this logo on packaging and promotional activities also constituted unfair competition. QImou shall bear liability for compensation. Regarding the amount of compensation, although it was difficult to determine Siemens’ actual losses or Qimou’s infringement profits from the evidence, it was sufficient to determine that Qimou’s infringement profits have clearly exceeded the maximum statutory compensation of RMB 5 million. Given that Qimou refused to provide financial information related to the infringement, which has constituted evidence impediment, the first instance court referenced to media reports that Qimou’s annual sales totaled RMB 1.5 billion (USD 207 million), and based on the relevant facts of the case that the sales ratio of the accused infringing products was one-fifteenth in determining the compensation to be RMB 100 million was not wrong. The China Supreme Court dismissed the appeal and affirmed the original judgment.
2. The “Lafite in Chinese” trademark infringement and unfair competition disputes
Chateau Lafite Rothschild (“Rothschild”) is the right holder of the “LAFITE” trademark and the “CHATEAU LAFITE ROTHSCHILD” trademark (collectively as “Cited Marks”). The Cited Marks are registered on alcoholic beverage goods. The Cited Marks obtained high reputation after long-term use. “LAFITE” and “Lafite in Chinese” have established a solid association. On April 1, 2005, Nanjing Jin Mou Wine Co., Ltd. (“Jin Mou”) filed for the “Lafite Chateau in Chinese” mark on wine and other goods. Since then, Jin Mou and others have used labels such as “Lafite Manor in Chinese” and “LAFEI MANOR” in the process of producing, importing, and selling wine, and promoted them on their websites and transaction documents. On December 23, 2016, the China Supreme Court made a retrial judgment and supported the CNIPA’s canceling of Jin Mou’s “Lafite Chateau in Chinese” trademark. Rothschild then sued seven defendants including Jin Mou to the court. The first instance court found that the seven defendants’ acts constituted trademark infringement and unfair competition, and ordered them to stop infringement and applied punitive damages. Jin Mou and others appealed. In the second instance, the China Supreme Court found that Jin Mou and others had bad faith intention to take advantage of the Cited Marks when applying for registration and using the “Chateau Lafite in Chinese” trademark, and they failed to show good faith and trustworthy interests in using the said mark. Their use of “Chateau Lafite in Chinese,” and “LAFEI MANOR” logo constituted trademark infringement, and exaggerating the historical heritage and popularity of the “Lafite Manor in Chinese” wine in publicity constituted false publication. Jin Mou and others obviously acted in bad faith and the infringement was serious. According to Rothschild’s request, punitive damages were applied against Jin Mou and others, and a total of RMB 79.17 million (USD 10.9 million) compensation in economic losses and reasonable expenses were ordered.
2. The Beijing High Court released the Top 10 Judicial IP Protection Cases and the Top 10 Judicial Trademark Authorization and Confirmation Cases in 2023
On April 25, the Beijing High Court released the Top 10 Judicial IP Protection Cases and the Top 10 Judicial Trademark Authorization and Confirmation Cases in 2023. In 2023, Beijing courts applied punitive damages in a total of 26 IP infringement. A significant year-on-year increase.
The trademark infringement and unfair competition disputes involving the “Jegere in Chinese” brand
In the trademark infringement and unfair competition disputes involving “all-round” imitation of “Jagermeister” beer, the defendant imitated the “Jagermeister” mark from liqueur bottle labels, bottle caps, website promotions and other aspects, which was considered an “all-round” brand imitation. In this case, the court applied punitive damages and ordered the defendant to pay RMB 10 million (USD 1.38 million) in compensation.
Mast-Jagermeister SE (“Mast-Jagermeister”) is the owner of registered trademarks such as “Jägermeister in Chinese” and “JÄGERMEISTER.” The Sheng Luo La Liquor Company (“Sheng Luo La”) used logos such as “Jager Haguleisi in Chinese” and Deer Head logos on labels, bottle caps, and official websites of the liquors it produced and sold. The packaging and decoration were the same or similar, and the words “German Master Group Co., Ltd. In Chinese” and other words are used on the website. The defendant applied for the registration of the “Jager Haguleisi in Chinese” trademark on Class 33 on liquors, and after obtaining the registration, he and Sheng Luo La jointly used the “Jager Haguleisi in Chinese” mark on liquor products. Pu Yuan Garden Trading Company is a distributor of Sheng Luo La that sells “Jager Haguleisi in Chinese” liquor on JD.com stores and combines Mast-Jagermeister’s “Jagermeister” liquor with “Jager Haguleisi in Chinese” Liqueur. Mast-Jagermeister claimed that the three defendants had infringed upon its trademark rights and constituted unfair competition, and claimed that punitive damages should be applied.
The first instance court found that Mast-Jagermeister’s “Jagermeister” trademark had been well-known to the relevant public in China on liquor products before the defendant applied to register the “Jager Haguleisi in Chinese” trademark, and constituted a well-known mark. The defendant applied to register a trademark similar to Mast-Jagermeister’s trademark, and the three defendants’ use of the trademark constituted an infringement of Mast-Jagermeister’s well-known trademark rights. The overall appearance similarity between the accused infringing products and Mast-Jagermeister’s products is relatively high, and the accused infringing products were mixed and sold with Mast-Jagermeister’s products, which can easily cause the relevant public mistakenly believe that the said products belong to a series of products or originated from the same source. The defendants’ actions had damaged the goodwill of Mast-Jagermeister’s “Jagermeister” brand. Sheng Luo La’s false publicity has the subjective intention of taking advantage of and free riding Mast-Jagermeister’s reputation. Mast-Jagermeister had issued multiple rights protection statements and sent demand letters to the three defendants. However, after receiving the demand letters, Sheng Luo La and other defendants did not respond in time and continued to infringe. The infringement was serious and punitive damages were applicable. The first instance court held that the three defendants should immediately stop the infringement and eliminate negative impact. Sheng Luo La should compensate Mast-Jagermeister for economic losses of RMB 10 million and the remaining two defendants should be jointly and severally liability for the compensation. Sheng Luo La and Pu Yuan Garden Trading Company appealed. The second instance court dismissed the appeal and affirmed the original judgment.
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 |
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
Securing well-known mark (WKM) recognitions in China can give a broader protection to brand owners in both administrative and judicial disputes.
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.
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.