Weekly China Trademark News Updates

June 22, 2021

1. Land Rover prevailed against Landwind X7

On May 27, 2021, the Beijing Intellectual Property Court concluded the final decision of an unfair competition lawsuit between Jaguar Land Rover Limited (“JLR”) and Jiangling Holdings Co., Ltd. (“JLH”) and Beijing Dachang Landwind Motor Sales Co., Ltd. (“Landwind”). The court ordered JLH and Landwind to immediately stop all unfair competition actions and affirmed the first instance court’s decision on publishing a statement to eliminate negative impacts, compensation for losses and reasonable expenses of RMB 1.5 million (USD232,200).

In this case, JLR claimed five design features of its “Range Rover Evoque” had the characteristics that were different from the common exterior design of ordinary cars, and these designs were distinctive as product decorations. JLR’s evidence were also sufficient to prove that its “Range Rover Evoque” car enjoyed certain fame and influence in China’s car industry. Accordingly, Range Rover Evoque’s exterior decoration when used as product shape decoration satisfied the “decoration with certain influence” as stated in the Chinese Anti-Unfair Competition Law. The shape and decoration used by JLH on the “Landwind X7” car was enough to confuse and misled the relevant public with JLR’s “Range Rover Evoque,” which constituted as unfair competition.

The first instance court calculated the damages based on the sales volume and unit profit of the infringing product, while referring to the 2015 domestic vehicle industry sales profit of domestically funded vehicle companies published by “National Passenger Car Information Exchange Association,” the sales data and the lowest unit price published on the official website of JLH. Also considering the duration of the unfair competition in the case, the role of the car product shape and decoration played during sales of “Landwind X7”, the range of sales, and the popularity of the “Range Rover Evoque” car shape. The second instance court affirmed the first instance court’s calculation methods.

2. Huawei’s “H” trademark was found not similar to Under Armour’s logo

Recently, the Beijing High Court made a final judgment on an administrative trademark regarding Huawei’s “H” letter trademark rejection appeal.

The disputed trademark was an “H” letter with design applied by Huawei in September 2017. The cited mark was Under Armour’s registered trademark “UA” mark with design.

The Beijing High Court as the second instance court found that Huawei mainly engaged in communications, computers, mobile wearable devices, and artificial intelligence businesses, and Under Armour mainly engaged in the sports equipment and other businesses. According to Huawei’s description regarding its design of the disputed trademark, the periphery was a circle, and inside was a letter “H” composed of two “U”s, which represented the initial letter of Huawei’s main logo “HUAWEI.” The graphic design of the cited trademark is formed by intersecting the first letters U and A of “Under Armour” and used in class 25 on clothing related goods. The Chinese consumers already associated Under Armour’s logo with “An De Ma in Chinese.”

In terms of the compositional elements and appearance of design trademarks, the compositional concepts between the disputed trademark and the cited trademark were different, the design style, overall appearance, and relevant public involved were also different. The two trademarks could be distinguished if they were used in downloadable computer application software and other goods in class 9. Accordingly, the disputed trademark and the cited trademark did not constitute similar trademarks, and the first instance court and other related judgements shall be revoked.

3. The Supreme People’s Court issued the “the People’s Court Online Litigation Rules”

On June 17, the Supreme People’s Court held a press conference and issued the “the People’s Court Online Litigation Rules” (“Rules”). The “Rules” is the first judicial interpretation issued by the Supreme People’s Court to guide people’s courts across the country to carry out online litigations. It will come into force on August 1, 2021. Below are some of the highlights of the “Rules.”

First, clarify the scope of applicable cases, including various civil, administrative, special procedures, and enforcement cases. Online litigation can also be applied to some parts of expedited criminal proceedings and commutation and parole cases.

Second, clarify the validity of “deemed as original” electronic materials. Electronic materials that have been reviewed and approved by the people’s court can be used directly in litigation without submitting the originals.

Third, provide rules and guidelines on the authenticity of blockchain storage data, which will help parties to actively use blockchain technology to solve the dilemma of “difficulty in storing evidence” and “difficult to authenticate” electronic data.

Fourth, confirm requirements for online trial environment, discipline, publicity, and witness appearances.

Fifth, all parties are allowed to conduct online mediation, evidence exchange, investigation and inquiry, and other litigation activities in an asynchronous manner within a certain period of time.

Sixth, comprehensively regulate the applicable conditions, scope of content, methods and effective standards of electronic delivery, while promote the strengthening of the application of electronic delivery.

4. CNIPA: Trademark Examination and Adjudication Standards (Draft for Comments)

The CNIPA launched the revision of the current Trademark Examination and Adjudication Standards in July 2020 and published the draft for comments from the public. The revised content mainly includes two aspects: the first is to add new standards on trademark formality examination and trademark affairs examination; the second is to revise and improve the substantive standards of trademark examination and adjudication. The first aspect includes the standard for applying Article 4 of the Chinese Trademark Law, clarifying the applicable factors, considerations, and applicable circumstances for malicious trademark applications filed without the intent to use. The second aspect includes revision and improvement of applicable standards of other provisions in the Chinese Trademark Law, including the applicability of prohibited filings and prohibited use, standards and considerations for determining identical or similar trademarks, standards for determining distinctiveness for 3D marks, color combination marks, sound marks, etc.

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Weekly China Trademark News Updates

June 16, 2021

1. Vans won punitive damages of RMB 1 million in a trademark infringement case

Vans, Inc. (“Vans”) owns a registered trademark “” in class 25 (“Cited Mark”). The Cited Mark has reached high fame through use and promotion. The defendant Zhejiang Kaibang Footwear Co., Ltd. (“Kaibang”) repeatedly used logos that were almost identical with the Cited Mark on shoes related products. The first instance court found that Kaibang infringed upon Vans’s trademark right and should be held liable. The court ordered Kaibang to immediately stop the infringement and compensate Vans for its loss. The court considered Kaibang’s continuous infringement by reference the intent of punitive damages, increased Kaibang’s liability for compensation, and ordered Kaibang for economic losses of RMB 1 million (USD 156,000). Recently, Kaibang withdrew the second-instance appeal, and the above-mentioned first instance judgment has taken effect.

2. Unauthorized Red Bull products were banned

On May 28, 2021, the Changsha Intermediate Court of Hunan Province issued an injunction in accordance with the law. The ruling ordered that Changsha Huaxia Sugar and Liquor Co., Ltd. (“Huaxia”) to immediately cease selling beverage products not authorized by Thailand Tencel Healthcare Co., Ltd. (“Tencel”) but containing the “Red Bull” series trademarks. This is yet another injunction after the previous one issued by the Chaoyang People’s Court of Beijing on May 12, 2021, which ruled that Beijing Hualian Supermarket Co., Ltd. should immediately cease selling the “Red Bull Vitamin Functional Drink” produced by Red Bull Vitamin Beverage Co., Ltd.

The Changsha Intermediate Court of Hunan Province found that based on the evidence provided by Tencel and the Supreme Court’s judgment, Tencel was the exclusive right holder of the “Red Bull” series of registered trademarks. The court ordered Huaxia to immediately stop selling Red Bull products that are not legally authorized by Tencel and the ruling would be immediately effective.

3. TikTok was sued for jointly liable for livestream that sold infringing products

Agatha Diffusion SARL (“Agatha”) owns the prior registered trademark “AGATHA” in class 25 on clothes related goods. Agatha authorized Saishi Trading (Shanghai) Co., Ltd. (“Saishi”) in China with an exclusive license to use “AGATHA” related trademarks. Saishi discovered that Laizhou Hongyu Crafts Co., Ltd. (“Hongyu”) was selling bags labeled with its authorized trademarks on TikTok during a livestream. Saishi sued both Hongyu and TikTok for trademark infringement. The Haidian People’s Court of Beijing held that Hongyu was liable for Saishi’s loss of RMB 300,000 (USD 47,000) and reasonable legal costs. The court found that TikTok had done its due diligence and should not be held jointly liable.

4. L’Occitane won RMB 9 million judgement for a trademark infringement

Laboratoires M&L, Société Anonyme (“M&L”) is an internationally renowned multinational company producing fragrance, facial, and body care products. Since 2008, L’Occitane Sakura series body lotion and shower gel (body wash) products have entered China, and in 2016, the cherry blossom graphic trademark was registered.

Zhejiang Junda Biological Technology Development Co., Ltd. (“Junda”) and Guangzhou Ailian Cosmetics Co., Ltd. (“Ailian”) sold body lotion products with cherry blossom patterns on the e-commerce platforms. The packaging and appearances of the products sold were very similar to the appearance of L’Occitane Sakura body lotion. M&L sued Junda and Ailian for trademark infringement and unfair competition. The Hangzhou Intermediate Court found that the actions of Junda and Ailian constituted trademark infringement and amounted to unfair competition. The Zhejiang High Court affirmed the first instance judgment.

5. 21 milk tea shops in Shanghai were fined for RMB 1.06 million for infringing the “COCO and Design” trademark

In April 2021, the Putuo District Administration for Market Regulation confiscated and destroyed the tools used to manufacture infringing goods using the registered trademark “COCO and Deisgn” by 19 business entities in 21 milk tea shops and issued a total of RMB 1.06 million (USD 165,600) in fine.

Through consumers’ complaints that allegedly purchased counterfeit milk tea products labeled the “COCO Du Ke in Chinese” logo, the Putuo District Administration for Market Regulation found that an individual used the word “COCO” prominently on shop signboard and milk tea cups, which was infringing on the exclusive right to use the registered trademark of “COCO and Design.” The Putuo District Administration for Market Regulation imposed administrative penalties according to the Chinese Trademark Law.

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Weekly China Trademark News Updates

June 8, 2021

1. The Supreme People’s Court issued the Official Reply of Defendant’s Request for Compensation for Reasonable Expenses due to Abuse of Rights by the Plaintiff in IP Infringement Litigation

On June 3, 2021, the Supreme People’s Court (“SPC”) has issued the Official Reply of Defendant’s Request for Compensation for Reasonable Expenses due to Abuse of Rights by the Plaintiff in IP Infringement Litigation (the “Reply”) to be implemented immediately.

The Reply confirmed that, in an intellectual property infringement litigation, if the defendant can provide evidence to prove that the lawsuit brought by the plaintiff constitutes the abuse of rights according to the law, the people’s court should uphold the defendant’s request that the plaintiff should compensate for the reasonable attorney fee, transportation fee, accommodation fee, and other expenses. The defendant may also file another separate lawsuit to requires the plaintiff to compensate the said reasonable expenses and fees.

2. The Supreme People’s Court issued the Top 10 Typical Internet Cases

On May 31, 2021, the Supreme People’s Court held a press release for the Top 10 typical internet cases and introduced the overall scheme of judicial protection on the internet. We have selected the following case for your reference.

Typical Case No. 8 – Tianjin Jiaruibao Metal Products Co., Ltd. v. Guizhen Xu, Yanhui Deng, Zhenquan Zhao, Tianjin Duoweisi Carpet Co., Ltd., Tianjin Ouhaoya Carpet Co., Ltd., and Zhejiang Tmall Network Co., Ltd. (Third Party)

On December 9, 2016, Jiaruibao opened a “Jiaruibao Flagship Store” on Taobao’s Tmall platform. Zhenquan Zhao, Duoweisi, and Ouhaoya also opened stores on Tmall platform. All four shops engaged in carpet sales. The offline business locations for all four shops are located in the same area. Since June 2019, Zhenquan Zhao has borrowed Guizhen Xu’s ID card to sell carpet orders through Zhenquan Zhao, Duoweisi, and Ouhaoya’s Taobao stores with a fake “Declaration Letter” issued by the three stores containing false content, and forged them with Guizhen Xu’s signature. Thereafter, the legal representative of Duoweisi Weiliang Zhao entrusted Yanhui Deng, who was familiar with Taobao network business, to complete the copyright registration procedures for the three carpet graphics involved in the case. Based on the said copyright registrations, Weiliang Zhao filed complaints with Alibaba’s intellectual property protection platform alleging copyright infringement against the three hot-selling products in the “Jaruibao Flagship Store” for five times, which resulted in the deletion of some product links. Jiaruibao filed an unfair competition lawsuit. After trial, the people’s court found that Zhenquan Zhao and Duoweisi had conspired and maliciously used Alibaba’s intellectual property protection platform rules to complain about Jiaruibo and led to deletion of its product links constituted unfair competition against Jiaruibao. The court held that Zhenquan Zhao, Duoweisi, Ouhaoya, and Yanhui Deng should compensate Jiaruibao for economic losses of RMB 350,000 (USD 54,670).

Typical significance: The notice of link deletion rule is an important legal rule for resolving infringement disputes among right holders, internet service providers, and internet users. This case is a typical case in which an e-commerce operator falsified facts and defrauded the registration of the related works and issued malicious notices to the internet service platform, which caused the interests of competitors in the same industry to be harmed and constituted a typical case of unfair competition. This case has important exemplary significance for guiding the right holder to correctly exercise the right to request for notice of deletion of links, curbing malicious complaints, and maintaining honesty, fairness, and standardization of the internet order.

The case number is 2019 Jin 0016 Min Chu No. 5880.

For more information on the rest of the Top 10 cases, please visit the following link (in Chinese): http://www.court.gov.cn/zixun-xiangqing-306391.html

3. Rolls-Royce invalidated “LAO SHI LAI SHI in Chinese”

Recently, the Beijing High Court has concluded a second instance administrative trademark invalidation dispute between Rolls-Royce PLC (“Rolls-Royce”) and Yongkang Tiewang Industry and Trade Co., Ltd. (“Tiewang”). The court affirmed the first instance court’s decision and rejected the CNIPA’s petition to appeal.

The Beijing High Court found that the disputed trademark “Lao Shi Lai Shi in Chinese” and the cited mark 1 “Rolls-Royce in Chinese” were relatively similar in text composition, pronunciation, and overall visual effects. Considering that the cited mark 1 enjoyed relatively high fame in “car” related goods, and such a term was not a commonly used vocabulary with strong distinctiveness, Tiewang should have known about this, but it did not make a reasonable effort to avoid applying for a trademark registration that was similar to the cited mark 1. Such an application was hardly a coincidence. Therefore, it can be determined that the disputed trademark constituted as an imitation of the cited mark 1. Although there were certain differences between the goods of the disputed mark such as “steel plates, steel pipes, metal doors,” and the goods of the cited mark 1 such as “cars” in terms of function, use, manufacturing unit, sales channels, considering the extent of the overlapped relevant public, similarity of the marks, and the well-known status of the cited mark 1, one can determine that the registration of the disputed mark may mislead the public, weaken the distinctiveness of a well-known mark, and thereby harm the interests of Rolls-Royce. Therefore, the registration of the disputed trademark constituted as the circumstances described in the third paragraph of Article 13 of the Chinese Trademark Law 2014.

The case number is 2019 Jing Zhong No. 9721.

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On May 20, 2021, the Supreme People’s Court (“SPC”) rendered a final decision in favor of Tommy Bahama (“TB”) for the “TOMMY BAHAMA” trademark opposition cases in Classes 9, 14, and 18. In its decisions, the SPC revoked the lower courts’ and the CNIPA’s decision. The SPC’s final decision marvelously closed TB’s decade-long battle against the other party, who sought return of its own trademarks. We were thrilled to assist TB from the second instance court appeal to winning the retrial before the SPC.

The issue presented in this case was whether the opposed marks constituted as the circumstances of “obtaining registrations by other unfair means” as described in Article 41(1) of the Chinese Trademark Law 2001. The hurdle lied in the interwoven relationships and between various parties involved, their actions, and protecting interests of a particular entity and public orders.

The SPC found that the other party and other closely related third parties did not have justifiable explanations for applying trademarks identical or highly similar to “TOMMY BAHAMA,” TB’s business signs and designs. Meanwhile, the other party used “TOMMY BAHAMA” to register corporate names and domain names and cause confusion among the relevant public to believe that the other party is the owner of the “TOMMY BAHAMA” trademarks through promotions on websites. What’s more, the related third parties and their legal representatives was a trademark agent who should have known the relevant trademark regulations and laws, abide by the good faith principle in conducting businesses, and respect others’ rights. However, the other party and the related third parties obviously violated the principle of good faith and applied multiple “TOMMY BAHAMA” trademarks, used it as corporate name and domain name for business purposes with the intent to obtain unjustified interests. Such actions amounted to subjective bad faith. The other party and the related third parties also applied other entities’ rightful trademarks, disturbed the trademark registration order. The SPC concluded that consider the actions taken by the other party and the related third parties surrounding the “TOMMY BAHAMA” trademark and other entities’ trademarks without justified reasons, the opposed marks constituted as the circumstances of “obtaining registrations by other unfair means” as described in Article 41(1) of the Chinese Trademark Law 2001.

Beijing East IP’s Yan Zhang, Yanfang Fu, and Di Yuan were involved at the second instance trial phase before the Beijing High Court. Upon further investigating and studying the case, we were certain that the key in overturning the lower court’s decision lied in the said application of “obtaining registrations by other unfair means.” We began collecting evidence regarding the bad faith among the other party, related third parties, and the mastermind behind. During evidence collection, we found the relationships between the other party, the other party’s shareholders and trademark agent, the opposed marks’ applicant and assignee were particularly intertwined, namely, although these parties were related, they could not be simply connected through shareholders (one of the common strategies we use when a case involves more than one party). It was critical for us to connect the dots between the said parties’ network because simply relying on the other party’s trademark filings was insufficient to hold it for “obtaining registrations by other unfair means.” To conquer such challenge, our attorneys investigated and dissected available information to find the collusion between the involved parties in copying “TOMMY BAHAMA.” Based on the evidence found, we persuaded the judges that not only the other party’s actions should be considered, but the third parties’ actions should also be considered. These actions include trademarks applied, use of the trademarks, similarity and relatedness between the applied trademarks and other famous corporate names or logos, and trademark assignments. We argued that these actions could prove that the other party and the related third parties had subjective bad faith. The SPC supported our allegations and held that the actions of the other party and the related third parties disturbed the trademark registration orders and constituted as “obtaining registrations by other unfair means.”

Remarks: this case was brought to trial by the SPC in 2018 and according to the SPC’s 2018 annual intellectual property report, in the 1,243 retrial cases, 976 cases were rejected, 190 were brought to trial by the SPC. That is, only 15.3% of the retail petitions would be actually tried by the SPC. Further, in 2020, there were only 305 retrial cases and even fewer cases were overruled.

Weekly China Trademark News Updates

June 1, 2021

1. Amended Chinese Patent Law and Chinese Copyright Law came into force on June 1, 2021

The Amended Chinese Patent Law

The amended Chinese Patent Law adds a new patent term adjustment and extension system, increases the roof of the statutory compensation amount to RMB 5 million (USD784,000), and the floor to RMB 30,000 (USD 47,000), extends the design patent protection period to 15 years, and adds partial design.

The Amended Chinese Copyright Law

The amended Chinese Copyright Law modified the definition of “work,” stipulates the relevant requirements for audiovisual works, improves the relevant regulations on copyright protection in cyberspace, introduces a punitive compensation system for infringement, and strengthens the enforcement of copyright infringement.

2. China joins EUIPO’s TMview trademark database as a participating IP office

As of May 19, 2021, the TMview will include the CNIPA trademark data. This means that the total number of trademarks in the TMview search tool would increase from 62 million to over 90 million from 75 participating IP Offices.

For your information, TMview is a trademark database of the European Union Intellectual Office (“EUIPO”). It contains the collections of trademark applications and registered marks of all EU national IP offices, the EUIPO and a number of national partner offices outside the EU.

3. “Mocha in Chinese” was found as a generic name when used on coffee related goods

The mark “Mocha in Chinese and MOCCA and design” with registration number 9199914 (“Subject Mark”) was approved for registration on May 21, 2012, in Class 30 for coffee, cocoa products, coffee flavors (condiments), coffee beverages with milk, chocolate beverages containing milk, plant preparations for coffee substitutes, chocolate sauce, tea beverages, and sugar.

On September 30, 2015, Beijing Huineng Taifeng Information Consulting Co., Ltd. Branch filed an invalidation with the CNIPA against the Subject Mark based on that the Subject Mark has became a generic name. The Beijing High Court, as the second instance court, found that based on the consumer’s perceptions, usage by competitors in the same industry, media introduction and report, and dictionary inclusion, “Mocha in Chinese” had become a generic name for coffee products and should be revoked.

4. Weibo sued Toutiao for unfair competition and won a RMB 20 million verdict in compensation

Beijing Weimeng Chuangke Network Technology Co., Ltd. (“Weibo”) sued Beijing ByteDance Technology Co., Ltd. (“Toutiao”) based on the grounds that Toutiao’s relevant content constituted unfair competition before the Haidian District Court of Beijing. The court found that displayed content and disseminated information of the Weibo content involved in this case was not purely user-generated, the information involved were added with Weibo’s resources and services, which constituted as the “legal interests” of Weibo according to Article 2 of the Chinese Anti-Unfair Competition Law. Toutiao targeted Weibo’s contents and transferred the said contents without authorization, particularly with those Weibo accounts that had large number of fans, more market impact, celebrities’ accounts, and major VIP accounts. Toutiao’s actions may substantially substituted Weibo and damaged its business interests. The court ruled in favor of Weibo for economic loss of RMB 20 million (USD 3.14 million) and reasonable legal costs of RMB 1.15 million (USD 180,000).

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Weekly China Trademark News Updates

May 25, 2021

1. Ecovacs Robotics successfully defended trademark squatters

Ecovacs Robotics (“Ecovacs”) is a leading Chinese in-home service robotics appliance company and owns the following registered trademarks in Class 7 and Class 9 (“Cited Mark”).

Machines and apparatus for cleaning, electric, etc. in Class 7	Theft prevention installations, electric; Weighing apparatus and instruments, etc. in Class 9

On December 28, 2018, Danyang Zhuomei Optical Glasses Co., Ltd. (“Zuomei”) registered the following Disputed Mark.

Eyeglasses, sunglasses, etc. in Class 9

Ecovacs filed an invalidation against the Disputed Mark based on Article 30 (similar marks on similar goods), Article 32 (prior copyright), Article 13 (well-known mark), and Article 44 (obtaining registration via unfair means) of the  Chinese Trademark Law 2013 before the CNIPA. However, the CNIPA maintained the Disputed Mark’s validity. Ecovacs appealed the unfavorable decision to the Beijing IP Court.

The Beijing IP Court found that the Disputed Mark’s approved use on “glasses” related goods were not related to the Cited Marks’ approved goods. Meanwhile, every of Ecovacs’s Cited Marks has not yet reached the well-known status and the design “” lacked creativity as a copyrighted artwork. However, the evidence submitted can prove that the Cited Marks have obtained certain fame in the Class 7 goods such as vacuum cleaner and cleaning equipment.  Zuomei and Ecovcas were located rather close, Zuomei should have known about Ecovacs and its prior used famous marks but Zuomei still applied for twelve similar or identical marks in Class 9 involving “KE WO SI in Chinese” or “ECOVACS.” Zuomei also owned another 20 plus trademarks involving “SU FEI YA in Chinese,” “EVIL’S,” “GM,” “MAITENAZ in Chinese” and other famous brands and celebrity names. Although Zuomei provided product pictures, Tmall store screenshots, receipts, and other evidence, such evidence cannot eliminate the subjective malicious intention to free ride others’ fame in its actual business operations. Moreover, Zuomei failed to provide reasonable explanations for applying the Disputed Mark. Based on the above, the court found that Zuomei’s Disputed Mark registration violated the principle of good faith and constituted as obtaining trademark registration by unfair means under Article 44 of the Chinese Trademark Law 2013. The CNIPA and Zuomei appealed the unfavorable first instance decision but the Beijing High Court, the second instance court, rejected the appeal and affirmed the Beijing IP Court’s first instance decision.

The number of trademarks owned by Zuomei could not be seen as numerous (total of 33 trademarks during the first instance and 45 during the second instance), however, the courts applied the good faith principle to regulate the registration of such Disputed Mark when they cannot invalidate the mark based on relative grounds in Article 30 or Article 13. This decision showcased the judicial system’s intention in crack down on bad faith trademark registrations.

2. “Guo Zu” stinky tofu was invalidated, will that kill the two companies?

The following “Guo Zu in Chinese” mark with Reg. No. 10280516 (“Disputed Mark”) was registered on February 13, 2013, on tofu and tofu products, and was assigned to Jinan Guozu Tofu Catering Management Co., Ltd. (“Guozu”).

Disputed Mark

Qingdao Lvhe Catering Management Co., Ltd. (“Lvhe”) filed an invalidation against the Disputed Mark on January 4, 2019, alleging that the character “掴” has the meaning of “slapping one’s face,” moreover, in actual use, the left portion of the “Guo” character was minimized while protruding use the right portion, resulting in the visual identity with “国足 (national soccer team)”. Such use on stinky tofu has unhealthy influence according to Article 10(i)(8) of the Chinese Trademark Law. 

The CNIPA found that using the Disputed Mark on stinky tofu and related goods would easily cause a certain level of negative and unhealthy influence to public interests and public orders in China. Based on the foregoing, the CNIPA invalidated the Disputed Mark.

Unsatisfied Guozu appealed to the Beijing IP Court. The court found that the Disputed Mark has suggestive tendency in derogating and mocking the National Soccer team, which was likely to cause negative and unhealthy influence.

Guozu appealed further to the Beijing High Court, which found in the second instance decision (final decision) that the distinctive part of the Disputed Mark was “Guo Zu in Chinese,” where the “Guo” character had the meaning of clapping with hands or slapping one’s face, the trademark as whole had not obtained secondary meaning. Meanwhile, from the design of the “Guo” character, the left portion shared a rather smaller percentage, while the right portion displayed as the distinctive portion. The Disputed Mark’s pronunciation was identical to the National Soccer team’s pronunciation. From the evidence submitted, parts of the public also related the Disputed Mark with the National Soccer team. The court concluded that the Disputed Mark’s use on tofu related products had derogatory and sarcastic tendency against the National Soccer team, which was likely to cause negative and unhealthy influence in violation of Article 10(i)(8) of the Chinese Trademark Law.

Both Guozu and Lvhe were using “Guozu” on stinky tofu:

Guozu’s actual use the Disputed Mark

Lvhe’s actual use of its trademarks

It is noteworthy that Guozu cited the Disputed Mark multiple times in various oppositions and invalidations against Lvhe’s “” and “” trademarks. It is obvious that Lvhe had enough and filed the invalidation against the Disputed Mark. The question remained after the conclusion of this case is: as Article 10(i)(8) of the Chinese Trademark Law is an article on “signs cannot be used as trademarks” based on negative and unhealthy influence as opposed to “cannot be registered as trademarks”, would the decisions backfire at Lvhe so it cannot use its trademarks either given how similar Lvhe’s trademarks are compare with the Disputed Mark?

3. The tale of MICHELIN’s two Chinese names: Mi Qi Lin and Mi Zhi Lian

Shanghai Mi Zhi Lian Co., Ltd. (“Shanghai Mi Zhi Lian”) registered the “Hui Ji Mi Zhi Lian in Chinese” mark with Reg. No. 18330221 (“Disputed Mark”) on hotel and restaurant related services in Class 43 on November 13, 2015. On November 9, 2018, Compagnie Generale Des Etablissements Michelin (“Michelin”) filed an invalidation against the Disputed Mark alleged that “Mi Zhi Lian in Chinese” was another Chinese transliteration of its well-known mark “MICHELIN” and the two had established corresponding relationship. The Disputed Mark also constituted as similar mark with Michelin’s prior registered trademark “MICHELIN” with reg. no. 9155688 and “MICHELIN and Design” with reg. no. 9149915 (“Cited Marks”) on similar services. Moreover, the Disputed Mark also constituted as a copy and translation of Michelin’s well-known mark. Shanghai Mi Zhi Lian situated in the same restaurant industry as Michelin, it had obvious bad faith in copy and imitate the widely famous “Mi Zhi Lian in Chinese” mark and the “MICHELIN” mark.

Disputed Mark

v.

Cited Marks

The CNIPA found that prior to the Disputed Mark’s filing date, “Mi Zhi Lian in Chinese” was adopted as one of the Chinese translations of “Michelin.” The two marks had been used in business promotions and created close corresponding relationship. Thus, the pronunciation of the Disputed Mark was similar to the Cited Marks and the two marks should be constituted as similar. If the two marks co-existed on the same or identical services, it was likely to cause confusion to the relevant public as to the source of services. Accordingly, the Disputed Mark constituted as similar to the Cited Marks on identical or similar services and shall be invalidated.

Shanghai Mi Zhi Lian appealed the unfavorable decision to the Beijing IP Court and we will continue to follow up the latest news regarding this case.

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Weekly China Trademark News Updates

May 18, 2021

1. CNIPA issued the Notice of Deepening “Deregulation, Innovation, and Service” in the Intellectual Property Industry on Optimizing and Improving Innovation Environment and Business Operation Environment

On May 11, 2021, the CNIPA issued the Notice of Deepening “Deregulation, Innovation, and Service” in the Intellectual Property Industry on Optimizing and Improving Innovation Environment and Business Operation Environment. The notice includes the following news.

1. Continue to reduce trademark examination period. Aim to regulate trademark examination time within four months. The entire trademark application proceeding will be reduced from eight months to seven months. At the end of 2021, examination time for trademark assignments, oppositions, rejection appeals, and invalidations will be reduced to one and half months, twelve months, five and half months, and nine months, respectively. Examination time for trademark applications and renewals filed electronically will be reduced by one fifth.
2. Strengthen trademark examination supervision. Rigorously crack down on bad faith trademark registration and refuse to accept or fast-reject trademark applications with significant adverse effects according to the law. Promptly disclose typical bad faith trademark registration cases in time. Include bad faith trademark registration without intent to use into credit supervision according to the law.
3. Fully implement electronic trademark registration certificate, accelerate the use of the electronic trademark registration certificate on e-commerce platform, enforcement, proffer evidence and other fields.
4. Establish and improve the green channel acceleration model of trademark examination. Priority examination for qualified trademark rejection appeals and oppositions in order to assist applicant in obtaining trademark certificate and safeguard legal rights and interests.
5. Strengthen the crack down on illegal agency. Rigorously crack down on the forgery of legal documents and seals and disrupt the order of the agency market by fraud and false publicity. Strengthen the credit supervision and punishment of illegal agency in accordance with the laws and regulations.
6. Fully exploit the value of intellectual property information. On the basis of data security, fully released basic data of intellectual property right, and fully employ the strategic resource value of intellectual property information.

2. The Beijing IP Court – Investigation report on trademark cases involving the protection of prior rights and interests of work name and character name

The Beijing IP Court investigated regarding grant and affirmation of trademark rights regarding the protection of prior rights and interests of work name and character name in the last two years.

From January 2019 to March 2021, the Beijing Intellectual Property Court docketed 35,966 trademark administrative cases and concluded 35,028 cases. Among them, 101 cases, or 0.3%, have applied Article 32 of the Chinese Trademark Law to protect the prior rights and interests of the work name and character name. Among them, the court concluded in 48 cases, or 48%, that the dispute mark constituted infringement of the prior rights and interests of the prior right owner. These cases have the following characteristics:

1. The work has high popularity and wide audience. The names and characters involved in the case include “Kung Fu Panda,” “Three Life Three Generations Shi Li Peach Blossom,” Honor of Kings,” “Astro Boy,” “Luding Ji,” etc. The high popularity of these works and characters makes their names have certain commercial value and can be protected as the prior rights and interests.
2. The name is highly “recognizable.” The name of the works and characters actually plays a role of distinguishing the source of goods or services like trademarks so that the relevant public can form an one-to-one correspondence through the association between the name and the work owner.
3. There were more foreign rights holders involved. The cases involving foreign rights holders such as Japan, U.K., and the U.S. accounted for about 55% of all cases.
4. The scope of protection is close to daily life. The scope of protection of the title of the work and the name of the character was not limited to its field of work, but also covered the field where popularity of the work or the character reached in daily life.

3. First criminal copyright infringement case involving an artwork came into effect with RMB 410,000 in penalty in Shenzhen

Recently, the Shenzhen Longgang District Court (the “First Instance Court”) concluded the defendant WANG infringed upon the plaintiff’s copyright. The Shenzhen Intermediate Court rendered the final decision as the second instance court which rejected WANG’s petition to appeal and affirmed the First Instance Court’s decision. In the First Instance Court decision, WANG was sentenced to 3 years and 8 months in prison with penalty of RMB 410,000 (USD 63,675). The infringing toys used as evidence during the trial were confiscated and destroyed. This is the first criminal copyright infringement case involving an artwork in Shenzhen.

Between October 2016 and November 2018, without authorization from CCA and B, LLC. (“CCA”), Wang purchased the infringing Christmas genie dolls and reindeer dolls that he knew were infringing CCA’s copyright. Upon purchase, WANG made unjustified profits from selling the dolls on its Alibaba store “mcroon,” “An Ke Trading” and Amazon store “plush kids.”

On October 31, 2018, Longgang Branch of Shenzhen Municipal Administration for Market Regulation seized 8,340 “Christmas genie dolls” and 215 “reindeer dolls” for sale in WANG’s company. Identified by the Copyright Appraisal Committee of Copyright Protection Center of China, these dolls constated as copies of the ‘Christmas genie dolls” and “reindeer dolls” owned by CCA. They are infringing copies of “Christmas Genie dolls” and “reindeer dolls”. On July 15, 2019, the case was transferred to Longgang Public Security Bureau.

It was verified that between May 31, 2017 to October 30, 2018, WANG sold the infringing products through three online stores and earned a total amount of RMB 557,000 (USD 86,500). The value of the seized infringing products for sale was about RMB 213000 (USD 33,000). The total unjustified profit was RMB 771, 000 (USD 119,700).

After hearing, the First Instance Court concluded that WANG’s operation purpose was to obtain unjustified profits by copying and selling copyrighted artworks without authorization, which amounted to RMB 771, 000 (USD 119,700). Such circumstance was particularly serious and constituted as a crime of copyright infringement.

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Weekly China Trademark News Updates

May 12, 2021

1. CNIPA: Enlist bad faith applicants into blacklist

From the beginning of 2021, the CNIPA has rejected more than 10,000 bad faith trademark applications citing the 2019 Chinese Trademark Law. The CNIPA has also created a blacklist system to include applicants who filed more bad faith applications and registrations. This is to closely supervise new trademark applications. So far, there are about 1,000 bad faith trademark applicants added into the blacklist.

2. Wyeth LLC won a punitive damage of RMB 30 million against Guangzhou Hui Shi

In 2019, Wyeth LLC sued Guangzhou Hui Shi Co., Ltd., Zeying CHEN, and Xiaoshen GUANG (jointly as the “Guangzhou Hui Shi”) for trademark infringement and unfair competition and petitioned for punitive damages of RMB 30 million (USD 4.66 million) and reasonable legal cost of RMB 550,000 (USD 85,000). On December 25, 2020, the Hangzhou Intermediate Court found Guangzhou Hui Shi infringed upon Wyeth LLC’s rights and ordered the punitive damage as petitioned.

On April 26, 2021, the Zhejiang High Court affirmed the Hangzhou Intermediate Court’s first instance decision and the punitive damages were ordered.

For more information regarding the first instance court decision please see our previous report: https://www.beijingeastip.com/type-news/weekly-china-trademark-news-updates-january-18-2021/.

3. Sam’s Club vs. Shan Mu in Chinese (山姆)

Wal-Mart (China) Investment Co., Ltd. (“Walmart”) was established in China in 2003 and has since opened 15 Sam’s Club in Fuzhou, Beijing, Shanghai, and other cities. The first Sam’s Club, however, opened in Shenzhen in 1996 under Walmart’s subsidiary company in Shenzhen. Tianjin Shan Mu Da Shu Trading Co., Ltd., Tianjin Wuqing Shan Mu Import and Export Co., Ltd., and Dalundo (Tianjin) International Trade Co., Ltd. (together as “Shan Mu”) highlighted the use of “Tianjin Shan Mu,” “Tianjin Shan Mu,” “Shan Mu Safe Foods,” and “Shan Mu Cross-border Goods” in the online and offline platforms of Shan Mu Safe Foods stores. Walmart sued Shan Mu for unfair competition.

The Tianjin High Court found that through Walmart’s long-term use, promotion, advertisement, “Shan Mu in Chinese” has established a unique association with the “retail” services Sam’s Club provided, which constituted as a service name that enjoyed certain influence among retail services. Tianjin Shan Mu’s misuse of the “Shan Mu in Chinese” mark in its market operations was likely to cause confusion to the relevant consumer regarding the source of goods or services, which amounted to unfair competition. The court ordered Tianjin Shan Mu to immediately stop any infringing use, eliminate any negative impacts, and compensate Walmart.

The case number is (2018) Jin Min Zhong No. 242.

4. Hin Sang Group won in a trademark infringement case against Guangdong Yan Sheng Tang

Hin Sang Group (International) Holding Co. Ltd. (“Hin Sang”) sued Guangdong Yan Sheng Tang Healthy Industry Co., Ltd. (“Yan Sheng) for using its registered trademark “Yan Sheng in Chinese (衍生)” as trade name without authorization, which caused confusion to the relevant public and damaged Hin Sang’s interests.

The Shanwei Intermediate Court found Yan Sheng infringed upon Hin Sang’s trademark rights and its acts amounted to unfair competition. The court ordered Yan Sheng to immediately stop infringement and change its trade name as “Yan Sheng” immediately.

The case number is (2019) Yue 15 Min Chu No. 62.

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 Trademark News Updates

May 8, 2021

1. Selected typical IP cases from the Supreme People’s Court’s 2020 Annual Report

Aldi GmbH & CO.KG and the CNIPA petitioned to the Supreme People’s Court (“SPC”) regarding a trademark rejection appeal case involving the disputed mark “ALMAT” with reg. no. 26585561. The SPC reasoned that although trademark right is a private right, but trademark right cannot be arbitrarily disposed like other property rights. If two marks are highly similar and designate on similar goods, there is still a possibility that the relevant public would be confused regarding the source of goods. Thus, allowing the two marks to coexist would likely to damage the trademark’s identification function, the consumers’ interests, and the public interests. The SPC found that the disputed mark “ALMAT” was highly similar to the cited mark “ALMAY” with reg. no. 3117097 and the two marks were designated and approved on similar goods. Consider the similarity between the two marks and the goods, there was a high possibility the relevant public would be confused. Merely providing a coexistence agreement from the cited mark’s owner could not eliminate the possibility of confusion. Accordingly, the effectiveness of such coexistence agreement shall not be recognized.

The case number is 2020 Zui Gao Fa Xin Shen No. 8163.

2. Selected Top 10 typical IP cases from the Supreme People’s Procuratorate

From 2017 to November 2018, defendants used “PHILIPS” and “Oral-B” trademarks without authorization on electric toothbrush heads, including laser imprint of the “PHILIPS” mark on the toothbrush heads, “PHILIPS” and “Oral-B” packaging. Defendants sold counterfeit electric toothbrush totaled RMB 19 million (USD 2.9 million). During the raid to one of the defendant’s rental apartment, the police confiscated counterfeit toothbrush heads worth RMB 160,000 (USD 24,700). The police also confiscated large numbers of counterfeit toothbrush heads, production tools and produced labels of the said registered trademarks.

On October 19, 2018, the Jiangsu Province Dongtai City People’s Procuratorate (“DCPP”) timely involved in the police’s investigation on the defendant’s activities. The DCPP obtained evidence regarding the defendant’s web store sales records, money flow, evidence, account books, WeChat records and other electronic records. On May 9, 2019, the DCPP transfer this case to the Jiangsu Yancheng City People’s Procuratorate (“YCPP”).

YCPP found that every infringement case that used the infringing trademark shall be cumulated when calculating damages. Regarding the actual unjustified profits obtained by the defendants, the YCPP reasoned that such unjustified profits shall be calculated based on the duration, production number, and the product’s actual price of the infringing products, namely, such calculation should be based on the principle to favor the plaintiff when determining unjustified profits. Regarding the actual use of the registered trademarks, the YCPP reasoned that the defendants used the registered trademarks on toothbrush heads that did not have labels, which constituted as actual use and shall be found constituting crime of counterfeiting registered trademark. Based on the facts and circumstances of the case, the YCPP put forward reasonable sentencing suggestions. It is suggested that the three principal offenders for the crime of counterfeiting registered trademarks, selling goods with counterfeiting registered trademarks and received large profits, illegally produced registered trademarks, and selling illegally produced registered trademarks shall be sentenced to substantial punishment. Probation should be given to the six other defendants whose offenses were accessories and involved only with smaller amount of unjustified profit. On April 24, 2020, the Yancheng Intermediate Court held that the nine defendants were sentenced to imprisonment ranging from 9 months to 4 years and 3 months with a punishment of RMB 30,000 to RMB 3.25 million (USD 4,600 to USD 503,000).

3. Selected typical IP enforcement cases from the State Administration for Market Regulation

a. The Tianjin Administration for Market Regulation investigated and handled masks labeling 3M registered trademark

In February 2020, Duan, the party involved, purchased infringing masks with model number 3M9001 from Hebei through self-purchasing and proxy purchasing. Duan abused his position as the legal representative and official of a pharmaceutical company and arranged various employees sell the said masks. After investigation, a total of 270,000 masks were sold, with a sales amount of RMB 810,000 (USD 124,000). Duan knew that he purchased the masks through improper channels with prices far lower than the wholesale prices of genuine products, and there were no legal purchase receipts and related procedures, but still insisted on purchasing the infringing masks for sale. Duan’s activities were obviously in bad faith. In this case, the Tianjin Administration for Market Regulation collected numerous bank account information, on-site documentary evidence, physical evidence, and related electronic information evidence, etc., traced hundreds of units and individuals involved in the flow of the masks involved in this case. Based on the foregoing factfinding, Duan and the rest of the defendants were punished for five times the amount of illegal business operating income, RMB 4.05 million (USD 628,000). This case was sent to the police for further handling.

b. The Changshu Administration for Market Regulation investigated and handled bad faith trademark application filed without an intent to use by Jiangsu Bainian Trademark Agency

On August 31, 2020, law enforcement officers of the Changshu Administration for Market Regulation of Jiangsu Province (“CAMR”) conducted a law enforcement inspection on Jiangsu Bainian Trademark Agency. The CAMR found that the agency has applied for 880 registered trademarks for 3 apparel design companies in Changshu since 2017. After investigation, none of the above three companies has carried out actual business activities since its establishment, and the legal representatives of the three companies are the same person, an individual, Liu, whom is also the legal representative of Jiangsu Bainian Trademark Agency. Liu copied or imitated a large number of trademarks of others that had expired but had not been renewed, or trademarks that others had registered and used, and preemptively registered the same mark or similar or identical goods. Since November 2019, 91 applications have been rejected. Liu’s action of filing a large number of trademark applications in bad faith and not for the purpose of use had violated Paragraph 3, Article 19 of the Chinese Trademark law. The CAMR imposed a punishment of RMB 60,000 (USD9,295) on trademark agency, and a punishment of RMB 30,000 (USD 4,648) on Lieu, the legal representative of the trademark agency. This case acted as a deterrent and warning to other trademark agency to not violate the 2019 Chinese Trademark Law that added a new article to punish applicant who filed applications in bad faith and without the intent to use.

4. Selected 2020 typical IP cases from the China Customs

On September 30, 2020, the Beijing Customs arrested a company in Linyi’s that declared for export of 9 categories of goods, including “storage bags”, “switch boxes,” and “women’s jackets,” through a special deployment control order. After open-box inspection, it was found that the actual goods were glasses labeled with “GUCCI” and “Ray Ban” logos, leather bags labeled with “LV” and “CHANEL” logos, and sneakers labeled with “PRADA” and “Air Jordan design” logos. More than 60,000 pieces, involving 18 registered trademarks from more than ten rightsholders were recovered. All goods were confirmed as counterfeit goods by the rightsholders.

On the basis of this case, the Beijing Customs further conducted an in-depth analysis of Customs clearance data, historical case data, and extensively collected rightsholders information, implemented precise control of goods and articles on key routes between China and the United States, which found that in 2020, a total of 547 batches of infringing goods were seized, that is, almost 70,000 pieces of infringing goods, worth more than RMB 1.5 million (USD 232,424).

During the same period, the Fuzhou Customs intensified risk analysis, precise deployment and control, and increased open-box inspection in response to a substantial increase in goods shipped out to the United States through postal channel. A total of 1,379 batches of various infringing goods mailed out to the United States were seized, and 1,612 infringing items such as earphones, sunglasses, bracelets, watches, backpacks, and thermos cups were seized, valued at RMB 146,000 (USD22,625). These infringing goods used multiple marks such as “Beats,” “BOSE,” “Cartier,” “ROLEX,” “LV,” and “GUCCI,” which infringed the trademark rights of the respective rightsholders.

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

On the occasion of the World Intellectual Property Day, Beijing East IP Law Firm gained another good news and achievements, and one of its cases was selected as “Top 10 Typical Cases of Trademark Administrative Protection in 2020” by the National Intellectual Property Administration, and Beijing East IP was highly recognized by clients for its professional skills, meticulous planning, quick response and professionalism in this administrative law enforcement case.