Weekly China Brand Protection News

February 27, 2025

1. Anhui High Court Upholds Decision on Retrial, Determining that a Sports Company’s Store Decoration is Highly Similar to DECATHLON and Constitutes Unfair Competition

Decathlon and Decathlon (Shanghai) Sporting Goods Co., Ltd. (“Decathlon”) noticed that a sports company had opened over a hundred stores across China under the name “OUTCOOL,” with some store signs displaying “Sports Outdoor Supermarket” beneath the said logo. These stores also featured facade advertisements, PLV posters, bench-style shoe-fitting mirrors, yellow price tags, and product descriptions similar to Decathlon’s. Decathlon believed that OUTCOOL stores’ overall decoration style and various decorative elements were extremely similar to Decathlon stores, and that OUTCOOL engaged in false advertising and other unfair competition actions, thus filing a lawsuit.

An Intermediate Court of Anhui Province initially ruled that the store signs of Decathlon and OUTCOOL were clearly different in terms of color usage, Chinese and English fonts, and content. While some other decorative elements in OUTCOOL stores were similar to those used by Decathlon, the overall visual impact or intuitive feeling would not cause confusion among the relevant public. The court determined that OUTCOOL’s use of decorations did not fall within the scope of unfair competition regulation. However, OUTCOOL repeatedly used “Decathlon” for promotion on its company webpage and other online media, with the intention of associating with or disparaging “Decathlon,” which constituted false advertising. Regarding the specific amount of economic loss, since neither party submitted evidence to prove Decathlon’s actual loss or OUTCOOL’s illegal gains, the court comprehensively considered the reputation of the “Decathlon” logo, OUTCOOL’s business scale, the influence of relevant promotions, degree of fault, and necessary rights protection expenses, and determined that OUTCOOL should compensate Decathlon CNY 300,000 (apprx. USD 41,000).

Decathlon appealed. The second-instance court determined that the store decoration Decathlon sought to protect had distinctive characteristics that distinguished the source of goods and had already established the “certain influence” required by the Anti-Unfair Competition Law. OUTCOOL’s stores had many similarities with the store decoration that Decathlon sought to protect, and the differences between the two would not be easily noticed by the relevant public with general attention, so the two decorations should be deemed similar. Moreover, OUTCOOL published multiple articles on its official website, claiming that OUTCOOL is the “Decathlon” in the sports outdoor brand franchise field, stating “Join OUTCOOL, be China’s Decathlon,” “OUTCOOL Outdoor Sports Supermarket, China’s Decathlon,” and so on. Therefore, even with differences in price, quality, consumer level, store signs, and trademarks, the relevant public would still easily mistaken that there was some economic connection between the two. OUTCOOL unfairly competes by unauthorized use of another party’s influential packaging and decoration and false advertising, and was ordered to compensate Decathlon for economic losses and reasonable expenses paid to stop the infringement, totaling CNY 2 million (apprx. USD 275,000).

OUTCOOL disagreed and applied for a retrial. The Anhui High People’s Court determined in the retrial:

Regarding whether Decathlon’s store decoration is protected as an influential decoration under the Anti-Unfair Competition Law: Decathlon’s decorative elements have formed a unique style and characteristics, applicable to different stores nationwide. Considering the time Decathlon entered the Chinese market, its brand’s operational scale and promotional time in China, as well as evidence showing that the relevant public has associated the overall image of its packaging and decoration with Decathlon stores operated by Decathlon, it can be determined that Decathlon’s store decoration falls under the “decoration with a certain influence” as stipulated in the Anti-Unfair Competition Law.

Regarding whether OUTCOOL’s store decoration is similar to Decathlon’s store decoration: In this case, the decoration used by OUTCOOL in the stores in question is quite similar to Decathlon’s store decoration in overall style, and there are many similarities in the selection and layout of design elements. OUTCOOL claimed that its stores differ from Decathlon stores in elements such as storefronts and staff uniforms, but these differences are not part of the store decoration that Decathlon seek to protect, nor do they affect consumers’ judgment of the overall store style.

Regarding whether the decoration used by OUTCOOL’s stores is likely to cause consumer confusion: Decathlon’s store decoration has distinctive characteristics that distinguish the source of goods. The decoration used by OUTCOOL in its stores is visually very similar to Decathlon’s store decoration. Combined with OUTCOOL’s multiple promotional claims that OUTCOOL is the “Decathlon” in the sports outdoor brand franchise field, its use of store decoration similar to Decathlon’s is likely to cause confusion among the relevant public, mistakenly believing that there is a licensing relationship, affiliated enterprise relationship, or other connection between the two. The differences in business districts, store area, and trademark logos claimed by OUTCOOL are insufficient to prevent consumers from mistakenly believing that there is a licensing relationship, affiliated enterprise relationship, or other connection between the two, and the evidence provided is insufficient to achieve the purpose of proof.

Regarding whether the compensation amount in the original judgment is reasonable: In this case, Decathlon did not provide evidence to prove its losses due to the alleged infringement or the profits gained by OUTCOOL from the infringement. The second-instance court comprehensively considered Decathlon’s scale, brand and enterprise reputation, operations and promotional activities in mainland China, OUTCOOL’s business scale, duration of the alleged infringement, subjective state of infringement, and other factors, and determined that OUTCOOL should compensate Decathlon for economic losses and reasonable expenses paid to stop the infringement, totaling CNY 2 million, which is not inappropriate.

2. DeepSeek Trademark Applications Maliciously Filed by Others Rejected by the CNIPA

The CNIPA announced that recently, the DeepSeek artificial intelligence large model developed by Hangzhou DeepSeek AI Foundation Technology Research Co., Ltd. has attracted widespread attention globally. Some enterprises and individuals have submitted trademark applications for “DEEPSEEK” or its graphic logo , and some trademark agencies are suspected of providing illegal services, with obvious intentions of “riding on popularity” and seeking improper benefits.

The CNIPA has rejected 63 applications, including the “DEEPSEEK” trademark application with app. no. 82848449.

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Weekly China Brand Protection News

February 20, 2025

1. Whether the inclusion of identical characters in a company name to other’s registered trademark constitute trademark infringement

The Shenzhen Intermediate Court made a second-instance judgment on the trademark infringement and unfair competition dispute case between the plaintiff an Anhui company and the defendant a Shenzhen restaurant, ruling that the defendant’s use of the Disputed Mark was a reasonable use of its business name, and dismissed the plaintiff’s litigation request.

In this case, the plaintiff claimed that the defendant’s shop front used the words “肥叔 (Fat Uncle),” constituting trademark infringement. Regarding whether the defendant’s action constitutes trademark infringement, the court analyzed as follows:

Disputed Mark	Cited Mark

First, regarding the services used by both parties. The plaintiff’s trademark is approved for use in Class 43 services, including restaurants, hotels, tea houses, and other services, while the defendant’s business scope is snack preparation and sales. The services of the two parties are similar.

Second, regarding whether the Disputed Mark and the Cited Mark are identical or similar in its form. The Cited Mark consists of Chinese characters and letters, and both the Chinese characters and letters have undergone artistic processing and design. The Disputed Mark only uses the text “肥叔 (Fat Uncle),” and does not use the design in the Cited Mark. In a comparison in isolation, the Disputed Mark uses only standard fonts, and there is a significant difference in the style of the text. Additionally, the defendant’s use is included in the overall text combination of “肥叔潮汕吃乐园 (Fat Uncle Chaoshan Food Paradise).” Although the “肥叔 (Fat Uncle)” in the Disputed Mark is identical to the Cited Mark, the defendant did not prominently use its mark alone.

Furthermore, regarding whether the Disputed Mark could cause confusion. The Cited Mark has undergone certain artistic processing and design and is a combination trademark. Its distinctiveness comes from the combination of the textual elements and related design (including font style, etc.), not from the Chinese characters itself. Moreover, the Cited Mark refers to a man of a plump physique and is relatively common in daily life. The defendant’s use of “肥叔 (Fat Uncle)” is a self-reference by the owner, primarily using the word in its original meaning, without using the design of the Cited mark. Therefore, it cannot be concluded that the Disputed Mark, merely containing the word “肥叔 (Fat Uncle),” is similar to the Cited Mark and could cause confusion among the relevant public.

Moreover, restaurant operations have a certain regional nature. The defendant is registered in Shenzhen City, Guangdong Province, and their family has been engaged in the catering business since 2013. The plaintiff has not provided evidence to prove that the Cited Mark has a certain reputation within Shenzhen City, and there is no evidence showing that the defendant’s use of the Disputed Mark was intended to capitalize on the plaintiff’s business reputation. Therefore, since the defendant does not have the intention to capitalize on the plaintiff’s business reputation and has reasonable grounds for using the word “肥叔 (Fat Uncle),” the relevant public will not easily be confused given the Cited Mark and the Disputed Mark differ in their specific use.

Finally, as the trademark holder, the plaintiff should follow the principle of good faith, and while exercising its rights, should also consider the public interest. ” Shenzhen Futian District Fat Uncle Chaoshan Food Paradise Shop” is a legally registered business name, and the defendant’s use of the Disputed Mark “Fat Uncle Chaoshan Food Paradise” is a reasonable use of its business name. Therefore, the court does not support the plaintiff’s claim that the defendant infringed on its trademark rights.

2. Court Issues Another Decision Recognizing Copyright Protection for AI-Generated Images

Recently, the Wuhan East Lake New Technology Development Zone Court made a first-instance judgment in a copyright ownership and infringement dispute case between Wang and a Wuhan technology company, recognizing that images generated by AIGC software are protected by copyright.

The court held that: In this case, the images generated by the plaintiff using AIGC software are no different from photographs and paintings that people commonly see, clearly belonging to the artistic domain, having a certain form of expression, and are protected by copyright law. Considering the correlation between the presentation of the disputed images and the plaintiff’s creative process, the keywords used by the plaintiff correspond to the elements and effects of the picture, and there is a certain “mapping relationship” between the generated image and the plaintiff’s creative activities. In the process of setting and adjusting keywords, parameters, style lighting effects, and selecting images to ultimately obtain the disputed image, the plaintiff had a certain degree of “control and foresight” over the generated work. The creative process reflected the plaintiff’s conception, creative techniques, and aesthetic choices, embodying the plaintiff’s personalized expression. Therefore, the disputed image crystallizes the results of the plaintiff’s intellectual labor and should be protected. The plaintiff is the author and copyright owner of the disputed image and has the right to file this lawsuit.

The defendant, without permission, used the disputed image as an illustration and posted it on their account for online course promotion, making it available to the public at their chosen time and place, which infringed upon the plaintiff’s right to communicate the disputed image through information networks. The defendant should bear the responsibility to stop the infringement and compensate for losses.

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Weekly China Brand Protection News

February 13, 2025

AI Platform Held Liable for User-Generated Ultraman Copyright Infringement Images

In September 2024, the Hangzhou Internet Court issued a first-instance judgment in its first case involving copyright infringement by a generative AI platform. The court found the defendant, a Hangzhou-based AI technology company, liable for contributory infringement of information network transmission rights and ordered them to cease infringement and pay CNY30,000 (USD4,100) in damages and reasonable expenses. Recently, the Hangzhou Intermediate Court upheld this ruling on appeal.

The plaintiff owns the intellectual property rights to the Ultraman series characters. The defendant operates an AI platform that provides Checkpoint base models and LoRA models, supporting features like image-to-image generation and online model training. The platform’s homepage and “Recommended” and “IP Works” sections contained AI-generated Ultraman images and LoRA models that could be used, downloaded, published, or shared. The Ultraman LoRA model was created by users uploading Ultraman images, selecting a base model, and adjusting parameters for training. Subsequently, other users could generate substantially similar images to Ultraman by entering prompts and combining base models with the Ultraman LoRA model.

1. Regarding direct infringement, the court found that: While users utilized the defendant’s generative AI service and the infringing images were distributed through the platform, the users themselves uploaded the training images and model cover/sample images. Objectively, it was the users who determined the generated content and its audience. The defendant, as the operator, did not participate in uploading reference images or sharing generated images. Subjectively, there was no evidence of coordination between the defendant and users to jointly provide works. Therefore, the defendant was not the content provider and did not directly infringe on information network transmission rights.

2. Regarding contributory infringement, the court reasoned:

First, the nature and profit model of generative AI services: While open-source ecosystems are crucial to AI development, the defendant, as a user-facing service provider, modified open-source models for specific applications and directly profited from targeted content generation. This created obligations to maintain sufficient understanding of content and exercise due diligence. The defendant earned revenue through user memberships and points, incentivizing users to publish training models.

Second, the fame of the copyrighted works and obviousness of infringement: Ultraman is highly famous, and multiple infringing images were visible on the homepage and in specific categories. The LoRA model cover/sample images directly displayed infringing content.

Third, potential infringement consequences: While generative AI typically produces random results that are hard to identify or intervene with, the Ultraman LoRA model consistently output character features, increasing the platform’s ability to identify and intervene. The technology’s convenience allowed repeated use by multiple users, making infringement obvious and foreseeable.

Finally, preventive measures: The defendant’s user agreement disclaimed responsibility for reviewing uploaded content. While they implemented content blocking and IP review after receiving legal notice, this proved they had the capability but failed to take necessary preventive measures.

3. Regarding unfair competition, the court found:

First, from the perspective of platform business models, operational methods, and their impact on market competition, the platform’s services aim to expand the application scenarios and functionalities of generative artificial intelligence, providing users with more personalized creative services and improving creative efficiency, without violating principles of integrity and business ethics. Moreover, the technology itself is neutral; if users create content in accordance with the platform’s service agreement while respecting others’ intellectual property, their acts will not infringe upon the rights of copyright holders or public interests.

Second, regarding the relationship between the Anti-Unfair Competition Law and Copyright Law, if an AI-generated work reaches the level of reproducing the original, creative expression of another’s work, it falls within the scope of regulation by Copyright Law. The Anti-Unfair Competition Law, as a supplementary protective legal provision, should not re-examine infringing behavior. Therefore, the alleged conduct does not constitute unfair competition.

4. Regarding civil liability: The court ordered immediate removal of infringing images and LoRA models showing original design features, plus measures to stop infringement. However, the court didn’t support blanket removal of all related materials where reasonable use existed or where users could still study/research their own stored images without distribution.

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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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Weekly China Brand Protection News

December 27, 2024

1. Reversed in the Supreme Court Retrial! Jingmen Laobaixing Company infringed trademark rights of Changsha Laobaixing Pharmacy established half-year earlier, its prior use defense was not supported

The Supreme People’s Court made a retrial judgment on the trademark infringement and unfair competition dispute case between Laobaixing Pharmacy Chain Co., Ltd. (“Laobaixing”) and Jingmen Laobaixing Pharmacy Chain Co., Ltd. (“Jingmen Laobaixing”). The court revoked the first and second instance judgments and found that the actions of Jingmen Laobaixing constituted trademark infringement and unfair competition.

The court found that Paragraph 3 of Article 59 of the China Trademark Law states where an identical or similar trademark with certain fame has been used, prior to the use by the trademark registrant, concerning the same goods or similar goods by others before the trademark registrant applied for trademark registration, the exclusive right owner may not prohibit the user of the aforesaid trademark from continuous use of such trademark within the original scope but may request its user for addition of proper logos for distinction purpose. The Trademark Law provides a certain degree of protection for unregistered trademarks that have been used and grants prior use defense right to prior users against others who register the trademark. However, this defense cannot completely break the registration principle. In its application, it is necessary to balance the interests of the prior user and the right holder of the registered trademark. For the bona fide prior use of a trademark that is identical or similar to the registered trademark of others and has certain fame on the identical or similar goods, the prior user has the right to continue to use it within the original scope; if the prior use is earlier than the trademark filling date, but later than the use of the trademark, and there is evidence to show that the prior user knew or should have known, it is not proper to find for prior use.

In this case, the trademark filling date of Laobaixing was June 4, 2003. Jingmen Laobaixing was established on May 21, 2002, and began to use the “Laobaixing” mark earlier than the filling date of the disputed trademark. However, Laobaixing was established on October 25, 2001. After that, Laobaixing’s name was changed several times and is now called Laobaixing Pharmaceutical Group Company. The use of the “Laobaixing” name and mark by Laobaixing can be traced back to its establishment date, October 25, 2001, which is about half-year earlier than the establishment date of Jingmen Laobaixing when it began to use the “Laobaixing” mark. Before the establishment of Jingmen Laobaixing, the predecessor of Laobaixing had already used the “Laobaixing” name and mark and established certain fame by relevant media carried out publicity and reports. As an operator in the same industry, Jingmen Laobaixing should have known this but still used the “Laobaixing” mark on the same pharmaceutical services as Laobaixing. Based on this, Jingmen Laobaixing’s prior use defense cannot be established.

Jingmen Laobaixing used the “Laobaixing” mark in its branch store signs, business premises, and online official accounts, such as “Laobaixing Pharmacy + XX Store” and “Laobaixing Pharmacy.” The above use constitutes trademark use and is similar to the registered trademark of Laoaixing. Jingmen Laobaixing used the “Laobaixing” mark on the same service without permission, infringing Laobaixing’s trademark rights.

Regarding unfair competition, before the establishment of Jingmen Laobaixing on May 21, 2002, Changsha Laobaixing Pharmacy, the predecessor of Laobaixing, had already used the “Laobaixing” name and mark on October 25, 2001, and established certain fame by relevant media publicized and reported on it. As an operator in the same industry, Jingmen Laobaixing should have known this, but it still registered the “Laobaixing” business name and used it for the same pharmaceutical services as Laobaixing, which is likely to cause confusion and misunderstanding among the relevant public. The behavior of Jingmen Laobaixing constitutes unfair competition.

2. The interior design of a jewelry store is protected by copyright law

The Beijing IP Court made a second-instance judgment on the copyright infringement dispute between the appellant Sun, the appellant Beijing Shuidian Taohua Yishu Co., Ltd. (“Shuidian Taohua”) and the respondent Nanchang Gongjiang Jewelry Co., Ltd. (“Nanchang Gongjiang”), ordering Shuidian Taohua and Nanchang Gongjiang to stop the infringement and compensate Sun for economic losses of CNY 100,000 (USD 13,700).

The court found that the disputed works and shops are similar regarding red arched door design, white light strip inlay, reflective mirror setting, arched door corridor, black reflective effect of the floor, and the overall visual effects are similar, constituting substantial similarity. Shuidian Taohua claimed that some designs were common expressions or originated from prior, public designs, but it did not provide evidence to prove its claim. The disputed shops used designs that were substantially similar to the disputed works, they achieved the reproduction of the disputed works from two-dimensional to three-dimensional. Nanchang Gongjiang, as the operator of the disputed shops, and Shuidian Taohua, as the licensor providing franchise services to Nanchang Guongjiang, jointly infringed Sun’s reproduction right for the disputed works and should bear the tort liability of stopping infringement and compensating for losses. 

Shuidian Taohua is the brand owner of “Gongjiang Zaoban” and the brand headquarters. All other companies operating businesses related to the disputed business need to obtain the consent of Shuidian Taohua and the image of each store needs to be uniformly arranged by the headquarters. Shuidian Taohua and Nanchang Gongjiang claim that they are in a franchise relationship, Shuidian Taohua is the licensor, and Nanchang Gongjiang Company is the franchisee. Therefore, it can be determined that while Shuidian Taohua provided franchise services to Nanchang Gongjiang, it also made unified arrangements for the store image of Nanchang Gongjiang. Shuidian Taohua participated in the image design of the disputed store and jointly committed copyright infringement with Nanchang Gongjiang, and it should bear the infringement liability.

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Weekly China Brand Protection News

December 19, 2024

1. Bighit Music challenged the CNIPA’s invalidation decision on a squatted “BTS” mark

Bighit Music Co., Ltd. appealed an invalidation decision to the Beijing IP Court against the CNIPA regarding the “BTS” mark in Class 25 for clothing, jackets, etc. The court revoked the CNIPA’s invalidation decision and ordered the CNIPA to re-issue the decision.

Disputed Mark

The court found that Bighit Music’s evidence can prove that the BangTan Sonyeondan in Chinese/BTS music group had achieved certain fame before the filing date of Disputed Mark. Multiple media reports before the filing date of Disputed Mark stated that BTS, a male singing group debuted in 2013 under Bighit Music, had been using “BTS” as their group name and has achieved certain fame. Bighit Music has prior rights to the name “BTS” as a singing group name. The distinctive identifying text “BTS” in the Disputed Mark is identical to the Bighit Music’s singing group name, and the goods approved for use under the Disputed Mark, such as clothing, could be considered derivative products of the singing group’s name. In this context, the registration and use of the Disputed Mark on goods like clothing is likely to mislead the public into believing that the related goods originate from them or are closely associated with Bighit Music, thus leading to confusion. The Disputed Mark owner’s filing of the Disputed Mark improperly exploits the fame and influence of Bighit Music’s singing group name, infringed upon Bighit Music’s prior rights to “BTS,” and violated Article 32 of the Trademark Law which states that a trademark “shall not prejudice any existing prior rights of others.”

Furthermore, based on the evidence, the Disputed Mark’s owner had registered multiple “BTS” and “BTS and Design” trademarks across various classes of goods and services, indicating a clear intention to take unfair advantage of the goodwill of Bighit Music’s well-known trademark. This behavior not only disrupts the order of trademark registration and administration but also improperly occupies public resources, damaging the interests of numerous other trademark applicants and undermining the fair competition market order. Therefore, the registration of the Disputed Mark has violated Paragraph 1 of Article 44 of the China Trademark Law, and shall be invalidated.

2. “Xiaomi Youpin” (小米有品) provides e-commerce platform Services in Class 35, not constituting infringement of the “Youpin”  (有品) Trademark

The Jiangsu Nanjing Intermediate Court delivered a first-instance judgment regarding the trademark and unfair competition dispute between plaintiff Picooc (Beijing) Technology Co., Ltd. (“Picooc”) and defendant Youpin Information Technology Co., Ltd. (“Youpin”). The court dismissed the plaintiff’s claims.

In this case, the plaintiff, Picooc, claimed that the defendant prominently used the “Youpin in Chinese” in its “Xiaomi Youpin in Chinese” app, as well as on detail pages, which are similar to the plaintiff’s registered trademarks in Class 9 (scales) and Class 10 (bodybuilding massage devices). The plaintiff argued that the defendant using labels, such as “Youpin Flash Sale in Chinese” and “Youpin Customization in Chinese” etc. for identical goods on its landing pages, intended to mislead consumers into believing that the products were manufactured and provided by “Youpin,” resulting in confusion between the plaintiff and defendant’s products, constituting infringement of the “Youpin” trademark.

The defendant, Youpin, claimed that as the operator of the “Xiaomi Youpin” e-commerce platform, it uses trademarks authorized by its affiliated company, Xiaomi Technology Co., Ltd., to provide online marketplace, marketing, and promotional services for buyers and sellers. Its use does not constitute identical or similar trademarks and has no prominent uses as those of the plaintiff in Class 9 and Class 10, and thus the alleged infringement could not be established. The defendant further claimed that it does not operate the shops on the “Xiaomi Youpin” and submitted materials about the relevant sales shops and business entities for blood pressure monitors and scales to prove that the sellers of the contested goods were third parties.

Regarding the issue of trademark infringement through the use of the “Youpin” label on the e-commerce platform, the court found that the “Xiaomi Youpin” app and website function as an e-commerce platform that provides an online marketplace, marketing services, and promotional services for buyers and sellers. The defendant used the labels “Mijia Youpin in Chinese,” “Youpin,” and “Xiaomi Youpin in Chinese” within the scope of services authorized by Xiaomi Technology Co., Ltd. As the operator of the e-commerce platform, the defendant’s use of terms such as “Youpin Flash Sale in Chinese,” “Promotion: Youpin Flash Sale in Chinese,” “Youpin Customization in Chinese,” “Youpin Delivery in Chinese,”, and “Youpin Crowdfunding” is based on the platform’s positioning and is aimed at using platform data resources to enhance the sales of others’ goods or services, satisfying consumer demand, and providing marketing service and promotional services. This does not constitute the use of the “Youpin” trademark on products like scales, massage devices, or blood pressure monitors. Furthermore, there is a certain distinction between the defendant’s business scope and the goods registered for the plaintiff’s trademark. In this specific e-commerce platform context, the relevant public has ample opportunity to distinguish and recognize the two parties. Evidence shows that the sellers of body fat scales and blood pressure monitors are not the defendants. For the specific products, the operators of the relevant shops marked their specific product brands in the product names and detail pages, allowing the public to make distinctions and not be confused or misled about the source of the products. Moreover, according to the evidence, through the continuous use and promotion of the defendant Youpin and its affiliated companies, the “Xiaomi Youpin” e-commerce platform has a high reputation and influence in Class 35. The evidence provided by the plaintiff is insufficient to prove that it has gained strong distinctiveness and popularity through the use of its registered trademark. In this case, it is even more difficult for the relevant public to be confused or mistaken about the source of the alleged infringing mark and the plaintiff’s trademark and their corresponding products. Hence it does not constitute trademark infringement.

Regarding the unfair competition alleged by the plaintiff, the court found that although the defendant’s corporate name contains the word “Youpin,” the evidence submitted by the plaintiff, such as the body fat scale sales contract, business cooperation agreement, and procurement service agreement, are not sufficient to prove that the “Youpin” trademark registered for use on Class 9 and Class 10 goods had a high market reputation and influence when the defendant was established in 2018, nor can it be proved that the defendant has the intention to borrow its trademark goodwill. The defendant uses the word “Youpin” on the e-commerce platform service, its usage scenarios and methods will not cause the relevant public to confuse the source of the goods or mistakenly believe that there is a specific connection with the plaintiff. Therefore, it does not constitute unfair competition.

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