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 29, 2024
1. The registration of the “A2” mark on milk related goods was recognized as having distinctiveness and unlikely to cause confusion
The A2 Milk Company Limited is the registrant of the “A2” trademark with reg. no. 14013718, designated on “milk; milk products” and other goods. Nestlé Products Co., Ltd. (“Nestlé”) filed an invalidation request claiming that the “A2” mark constitutes generic name on milk products, milk powder, and other goods. When used on milk and other goods, it directly expresses the nutritional content and other characteristics of the designated goods and lacks the distinctive features that a trademark should have. At the same time, its registration may easily cause confusion to the public regarding the quality and origin of the goods.
The court found that “A2” is not an inherent vocabulary and has no specific meaning. It is not directly related to the characteristics or quality of the goods such as “milk; milk products” used in the disputed trademark. The evidence cannot prove when using “A2” on its approved goods such as “milk; milk products” the public can naturally associate it with “vitamin A2” or “A2β-casein” based on their general understanding, and cause confusion with the disputed trademark.
As to whether the disputed trademark is a generic name, the determination falls on the factual status on the date of trademark application. Nestlé failed to submit evidence to prove that relevant professional reference books and dictionaries have listed “A2” as the product name of “milk; milk products” and other goods. Most of the evidence submitted by Nestlé such as the publicity and usage of its peers, the publicity of video websites, online reports, and journal articles were later than the application date or the registration of the disputed trademark. The evidence submitted by Nestlé before the filing date of the disputed trademark mainly includes relevant journal articles and some media reports, but the content is mainly research and introduction of A2β-casein and does not directly reflect the association between “A2” and “milk; milk products” and other goods. It also was not sufficient to reflect the relevant public’s awareness of “milk; milk products” and other goods across the country. Therefore, the evidence on record submitted by Nestlé is not enough to prove that “A2” has been generally recognized as a generic name that can refer to “milk; milk products” and other goods by the relevant public on the application date of the disputed trademark and at the time of approval of registration.
Regarding Nestlé’s claim that the disputed trademark is a simple combination of letters and numbers and does not have inherent distinctiveness, the court found that “A2” is not a fixed combination of letters and numbers, has no inherent meaning, and is identifiable in itself. The disputed trademark “A2” has no direct or fixed association with the “milk; milk products” and other goods approved for use. According to the evidence on record submitted by The A2 Milk Company Limited, its “A2” brand has been used among the relevant public in China after long-term publicity. It has a certain degree of popularity and influence and has the distinctive characteristics that a trademark should have.
In summary, the court upheld the registration of the disputed trademark.
2. Top 40 Chinese Trademark Agencies Serving Foreign Clients are released
On May 20, 2024, at the 146th INTA at Atlanta, USA, the China Trademark Association Forum released the “Top 40 Chinese Trademark Agencies Serving Foreign Clients.” The list uses official data to establish a systematic evaluation model from more than ten dimensions, including the number of foreign related trademark applications, foreign related trademark agency opposition cases, and foreign related trademark agency review cases. The model evaluates trademark agencies that have been registered with the Trademark Office of the CNIPA, and selects the top 40 outstanding trademark agencies. East IP is included in the list.
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 Brand Protection News
May 15, 2024
1. 2023 Typical Cases of Trademark Opposition and Invalidation
The CNIPA has recently released 10 typical trademark opposition and adjudication cases in 2023, including:
2. Quadruple punitive damages awarded for infringement after reaching settlement
A Xiamen company is the registrant of the “Yanzhiwu in Chinese” and “Wanyan in Chinese”, and sued the defendant a Changzhou food factory who produced and sold products under marks “Yanzhiwo in Chinese” and “Wanyan in Chinese” for trademark infringement.
The first instance court found that the “Yanzhiwo in Chinese” mark used on the outer packaging of the accused infringing product and the plaintiff’s “Yanzhiwu in Chinese” mark were both composed of Chinese characters, with only one character difference between “wu” and “wo.” The pronunciations of them are highly similar, which constitutes similar marks. Given the plaintiff’s Yanzhiwu in Chinese brand enjoys a high reputation in the field of bird’s nest products, the accused infringing mark “Yanzhiwo in Chinese” can easily cause confusion among the relevant public, who may believe that the accused infringing product originates from the plaintiff or there are some specific relationships with the plaintiff. The “Wanyan in Chinese” logo used on the outer packaging of the accused infringing product is visually indistinguishable from the plaintiff’s “Wanyan in Chinese” mark, which constitutes as identical marks. Therefore, the defendant used marks identical with the plaintiff’s registered trademarks on the same goods without authorization, which constituted an infringement of the plaintiff’s trademark right, and should be liable to stop the infringement and compensate for damages.
Regarding whether punitive damages can be applied against a defendant and how the amount of damages is determined. The court verified that, the defendant was sued by the plaintiff in another case for the same infringements and they reached settlement. The settlement letter clearly stipulated that “the defendant promised not to produce or sell products that infringed the exclusive rights of the plaintiff’s registered trademarks of ‘Yanzhiwu in Chinese’ and ‘Wanyan in Chinese’” and voluntarily assumed liability for infringement. Under this circumstance, the defendant continued to carry out trademark infringement production and online promotion activities, and established a sales channel in cooperation with another agent, making it easy for the infringing products to be placed elsewhere. Combined with factors such as the defendant’s false statements in the lawsuit, it can be determined that its subjective intention to infringe is obvious and circumstance is serious. The plaintiff also voluntarily selects to first apply punitive damages, so punitive damages should be applied in this case.
The plaintiff claimed that the amount of RMB26,500 (USD3,663) in said settlement case between the two parties should be used as the base for punitive damages, and that the amount of punitive damages should be RMB100,000 (USD13,825) as quadrupled. Based on factors such as the intentionality of the defendant’s infringement, the moderateness of the compensation base, and the false statements, the first instance court supported the plaintiff’s claim that punitive damages should be quadrupled. The court specifically stated that the calculation method should be quadrupled by RMB26,500 and the total should be RMB106,000. The plaintiff only claimed RMB100,000, which is the plaintiff’s disposal of its own right and this court shall respect such claim.
In addition, regarding the final amount of compensation that the right holder should receive, in addition to punitive damages RMB100,000, it should also receive the base compensation RMB26,500 itself. At the same time, considering the plaintiff’s reasonable rights protection expenses, the court ordered the defendant to compensate the plaintiff for economic losses and reasonable expenses to stop the infringement, totaling RMB150,000.
The defendant was dissatisfied and appealed. After trial, the second instance court affirmed the compensation amount and affirmed the lower court’s decision.
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.