On March 4, 2013, Beijing East IP Law Firm received a favorable re-trial decision rendered by China Supreme Court.

In 2009, China Supreme Court ordered Beijing High Court to hear the re-trial case according to the protest raised by China Supreme Procuratorate and the client Shanghai Duck King Restaurant (Shanghai Duck King) domiciled in Shanghai represented by Beijing East IP Law Firm. In 2010, Beijing High Court rendered the re-trial decision in favor of Shanghai Duck King and overruled the first-instance and second-instance decisions. In 2012, the adversary Beijing Duck King Restaurant (Beijing Duck King) domiciled in Beijing filed the re-trial request before China Supreme Court, but was rejected by China Supreme Court in 2013.

This is a very high profile and very rare re-trial case with hotly debated legal issues, which has been extensively reported by the media.

The key dispute in this case is the determination of “bad faith” of filing a trademark application as prescribed by Article 31 of Chinese Trademark Law. Specifically, China Supreme Court holds that the client represented by Beijing East IP Law Firm does not have any bad faith in filing the trademark application of DUCK KING on restaurant services in Class 42, based on the following two reasons: (1) The earlier trademark application of DUCK KING filed by the adversary was once rejected by Chinese Trademark Office on the ground of lack of distinctiveness, and the adversary has abandoned said trademark application by choosing not filing the appeal. After Shanghai Duck King files the trademark application of the opposed mark DUCK KING, it is rejected on the same ground. However, Shanghai Duck King appealed to Trademark Review and Adjudication Board and obtained preliminary approval in the end, by submitting various evidence proving the use of the mark. The failure of registration of Beijing Duck King’s mark reflects that Shanghai Duck King does not have the bad faith in filing the opposed mark. (2) Shanghai Duck King does not have the intention of riding on Beijing Duck King’s fame and does not have the acts of causing confusion among the public either. The opposed mark filed by Shanghai Duck King has achieved fame and influence by extensive use and promotion in Shanghai area, which is the result of its own business operations instead of riding on fame of Beijing Duck King.

The ruling of the China Supreme Court decision has provided guidelines on definition of “bad faith” and will have great influence on the similar cases handled by the local Chinese courts.