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 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.
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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.
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.