Quarterly China Trademark News Updates

January – March 2021

Starting January 2021, Beijing East IP will be collecting and presenting notable China trademark and anti-unfair competition news and updates every quarter. Our quarterly newsletter will be a selection of notable news from our weekly updates, including cases, laws, regulations, and our on-going trademark articles regarding suggested trademark practices in China.

1. Notable trademark and anti-unfair competition cases

a. Burberry obtained its first preliminary injunction order against Baneberry

Burberry Limited (“Burberry”) registered the following marks on clothing and related goods. Among them, Cited Mark 1 and Cited Mark 2 have been recognized as well-known marks multiple times.

Cited Mark 1	Cited Mark 2	Cited Mark 3	Cited Mark 4
BURBERRY

Xinboli Trading (Shanghai) Co., Ltd. (“Xinboli”) is the licensee of the following marks.

Licensed Mark 1	Licensed Mark 2
BANEBERRY

Xinboli have been using the Licensed Mark 1 and Licensed Mark 2 (“Licensed Marks”) and similar marks to Burberry’s Cited Mark 3 and Cited Mark 4 on goods that Burberry carried, including clothing styles, designs, hangtags, purses, and bags, as well as the respective goods’ shape. What is more, Xinboli used the royal arms of the United Kingdom (“Royal Arms”) to falsely promote its brand history and sources. Xinboli even opened its own brick and mortar shops or clearance shops in 2019. Xinboli quickly expanded its sales and extended its coverage. At the time Burberry filed for the preliminary injunction at the end of 2020, Xinboli had opened 40 brick and mortar stores in large shopping malls and outlets in first and second tier cities, almost outmatched Burberry’s brick and mortar stores in mainland China. Xinboli also opened its online stores on TMall.com, WeChat, Pingduoduo, and Little Red Book. Xinboli’s actions caused confusion among the relevant public. Burberry sued Xinboli for trademark infringement and unfair competition. After docketing its case, Burberry filed a petition for preliminary injunction against Xinboli.

On January 29, 2021, the Suzhou Intermediate Court held the preliminary injunction hearing. The court ordered Xinboli to immediately stop using the Licensed Marks and immediately stop manufacturing and sell products bearing similar marks to Burberry’s Cited Mark 3 and Cited Mark 4; and immediately stop using the Royal Arms logo on the hangtag of all its products and stop all false promotions.

b. “Louis Vuitton” was recognized as a well-known mark to counter an infringer who abused administrative proceedings to extend its time to attain unjustifiable profits

Louis Vuitton Malletier (“LV”) sued Guangzhou Ruiwang Leather Co., Ltd. (“Ruiwang”) and Rui Wang (together as the “Defendants”) for trademark infringement.

Cited Mark	Disputed Mark

LV filed invalidation request with the CNIPA against the Disputed Mark and the CNIPA invalidated the Disputed Mark during the trial of this trademark infringement case. Ruiwang was unsatisfied with the invalidation decision and appealed to the Beijing IP Court. Considering the Disputed Mark was still valid during the trial, the Defendants argued that this case shall not be docketed because this was not a trademark infringement case but an administrative dispute over trademark registrations.

The court applied Article 11 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Well-Known Mark Protection (“Interpretation”) in its findings and found that Ruiwang violated the well-known mark provisions stated in Article 13 of the Chinese Trademark Law and LV’s well-known trademark was copied and imitated. Ruiwang’s act constituted an infringement of LV’s trademark right. That is, the court recognized the Cited Mark as a well-known to grant additional protections to LV against Ruiwang’s infringing use of the Disputed Mark.

In this case, LV submitted sufficient evidence to prove that before the Disputed Mark’s application date, LV’s Cited Mark had achieved well-known status. The Disputed Mark’s use on handbags and purses were identical in nature to the Cited Mark’s approved goods of bags, backpack, handbags, fur, artificial leather, suitcase, etc. The Disputed Mark were also identical to the LV’s Cited Mark in terms of font style. Both marks’ design and overall appearance were also highly similar. The Disputed Mark constituted as a copy of the Cited Mark. Moreover, LV’s Cited Mark had been used in China for years and had achieved well-known status. Under such circumstances, the Disputed Mark’s use was likely to cause the relevant public to be confused as to the source of goods and associate the Disputed Mark with LV’s well-known mark, dilute LV’s market reputation and damage LV’s interests. The second instance court ruled in favor of LV and ordered a damage of RMB 500,000 (USD 76,800).

c. Fendi won against unauthorized use in an outlet shopping center

On March 4, 2021, the Shanghai High Court held that Shanghai Yilang International Trade Co., Ltd. (“Yilang”) and Capital Outlets (Kunshan) Commercial Development Co., Ltd. (“Capital”) infringed upon Fendi S.R.L.’s (“Fendi”) trademark right and amounted to unfair competition. Yilang and Capital were ordered to pay FENDI RMB 350,000 (USD 54,000) for economic loss and reasonable legal cost.

The court found that Yilang’s independent use of the mark “FENDI” on its signboard was intended to demonstrate itself as the business operator and management of the mark “FENDI,” which fell into the scope of protection of Fendi’s exclusive trademark right in Class 35 in connection with business operation and business management related services. Yilang’s conduct constituted as trademark infringement. Meanwhile, “Fendi,” as a trade name, had obtained certain fame on the market and was known by the public. Yilang’s independent use of the mark “FENDI” on its signboard without authorization constituted as using Fendi’s business name without authorization and amounted to unfair competition. As Yilang’s operation management, Capital shall be held jointly liable for aiding Yilang’s said trademark infringement and unfair competition for using the mark “FENDI” without authorization.

d. Michael Jordan finally got his name back! Qiao Dan Sports renamed to Zhong Qiao Sports

On December 30, 2020, eight years after Michael Jordan, the American professional basketball player, filed a name dispute against Qiao Dan Sports Co., Inc. (“Qiao Dan Sports”) and Shanghai Bai Ren Trade Co., Ltd. The Shanghai Second Intermediate Court ordered Qiao Dan Sports to publish clarifying statements regarding its relationship with Michael Jordan and issue a public apology. Specifically, the court ordered Qiao Dan Sports to stop using the “Qiao Dan in Chinese (“乔丹”)” part of its corporate name and its “Qiao Dan in Chinese (“乔丹”)” trademarks within 30 days of the effective date of this judgement. On January 12, 2021, Qiao Dan Sports was renamed to Zhong Qiao Sports Co., Ltd.

The court found Qiao Dan Sports knew of Michael Jordan’s fame but still registered or licensed the “Qiao Dan in Chinese (“乔丹”)” trademark, the “Qiao Dan in Chinese (“乔丹”) and Design (a baseball mannequin)” trademark, and the “Qiao Dan in Chinese (“乔丹”) and 23” trademark. And without authorization from Michael Jordan, Qiao Dan Sports used the “Qiao Dan in Chinese (“乔丹”)” mark that was identical with the Chinese translation of Michael Jordan’s last name in sporting goods industry as the distinctive part of its trade name. Further, Qiao Dan Sports promoted the “Qiao Dan in Chinese (“乔丹”)” brand through various media. These business activities were sufficient to confuse the public to associate Qiao Dan Sports with Michael Jordan. Qiao Dan Sports stepped on Michael Jordan’s influence in the sporting goods industry when entering the market to obtain more market opportunities and monetary interests. Accordingly, Qiao Dan Sports’ use of the “Qiao Dan in Chinese (“乔丹”)” mark shall be deemed as infringing upon Michael Jordan’s name right.

e. Paris Baguette in Chinese (巴黎贝甜) recognized as an unregistered well-known mark

Ai Si Bi Xi Investment Co., Ltd. (ASBX), the operator of the famous bakery “Paris Baguette” or “Paris Baguette in Chinese (巴黎贝甜)” sued Beijing Bali Beitian Enterprise Management Co., Ltd. (“Beijing Beitian”) in the Beijing Intellectual Property Court for infringing its unregistered well-known mark right by registering numerous “Ba Li Bei Tian in Chinese (芭黎贝甜)” marks and promoting the marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” on Beijing Beitian’s website.

Cited Mark	Disputed Mark

The court found that ASBX’s evidence supported its petition to recognize the marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” reached well-known status among relevant consumers as unregistered well-known marks. Beijing Beitian used “Paris Baguette in Chinese (巴黎贝甜)” prominently on its WeChat public account and website caused relevant public associated “Paris Baguette in Chinese (巴黎贝甜)” with Beijing Beitian. Such use was sufficient to mistake the source of services and infringed upon ASBX’s interests on the unregistered well-known marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜).” Meanwhile, ASBX’s unregistered marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” had relative high fame when Beijing Beitian was established. Under such circumstance, Beijing Beitian’s registration and use of the mark “Ba Li Bei Tian in Chinese (芭黎贝甜),” that was highly similar to the unregistered mark “Ba Li Bei Tian in Chinese (巴黎贝甜),” as its trade name was likely to cause confusion among the relevant public and violated the Chinese Anti-unfair Competition Law. The court ordered Beijing Beitian to immediately stop any infringing activities and pay damages and reasonable legal costs of RMB 1.5 million (USD 231,600).

f. Amazon was hammered with RMB 76.4 million (USD 11.8 million) in damages

Beijing Yanhuang Yingdong Technology Development Co., Ltd. (“Yanhuang”) sued Amazon.com, Inc.’s Chinese subsidiary, Amazon Connect Technology Services (Beijing) Co., Ltd. and a Chinese data center and cloud technology provider, Beijing Sinnet Technology Co., Ltd. (“Sinnet”) (together as the “Defendants”) before the Beijing High Court for infringing its registered trademark “AWS.” The court held that the Defendants were jointly liable for trademark infringement. The Defendants shall immediately stop using the “AWS” mark, pay Yanhunag RMB 76.4 million (USD 11.8 million) for economic loss, reasonable legal costs of RMB 260,000 (USD 40,000), and publish a public statement to eliminate any impact caused by its infringements.

Parts of Disputed Marks	Cited Marks

 g. Ferrero received RMB700,000 (USD108,000) in damages for Kinder Surprise Egg packaging decorations infringement

Soremartec SA, Ferrero SpA., and Ferrero Trading (Shanghai) Co., Ltd. (“Ferrero”) sued Chaozhou City Chaoya Distrct Yaliwen Food Factory (“Yaliwen”) for trademark infringement and anti-unfair competition claiming RMB 1 million (USD 154,750) in damages.

Kinder Surprise Egg	Infringing goods

The second instance court held that Yaliwen’s infringing products were similar to Ferrero’s registered trademarks and were used on identical goods, which were likely to cause confusion to the relevant public and infringed upon Ferrero’s trademark rights. The overall appearance of the infringing products was similar to Kinder Surprise Egg’ packaging and decoration, which was likely to cause confusion to the relevant public on the source of goods and amounted to unfair competition.

h. The “Supreme” mark squatter was fined for RMB 8.5 million (USD 1.3 million)

Chapter 4 Corp. (“Chapter 4”), owner of the famous “Supreme” skateboard and streetwear brand, filed an unfair competition lawsuit against Shanghai Jiao She International Trade Co., Ltd. and its retailing partner Zhejiang Outlet Plaza Co., Ltd. (“Defendants”). The Zhejiang Intermediate Court found that Chapter 4’s “Supreme” brand had collaborated with Louis Vuitton, Nike, and Lacoste in China. With other facts found by the CNIPA, the court held that the “Supreme” mark has obtained certain influence and shall be protected under the Anti-unfair Competition Law. Defendants were ordered to immediately stop infringing activities, publish clarifying statements, eliminate negative impacts on the “Supreme” mark, and pay RMB 8.5 million (USD 1.3 million) to Chapter 4 for economic loss and reasonable costs.

i. Wyeth LLC won RMB 30.55 million in punitive damages against infringing trademarks

On December 25, 2020, the Zhejiang Intermediate Court held that Guangzhou Hui Shi Co., Ltd., Zeying CHEN, and Xiaoshen GUANG (together as the “Guangzhou Hui Shi”) jointly infringed upon Wyeth LLC.’s “Hu Shi in Chinese (惠氏)” and “Wyeth” trademark rights. Considering Guangzhou Hui Shi’s obvious subjective bad faith, the court ordered treble punitive damages according to the China Trademark Law along with reasonable costs for RMB 30.55 million (USD 4.7 million).

2. Notable trademark laws, regulations, and news updates

a. The CNIPA published 2020 Annual Trademark Statistics

In 2020, 5.76 million marks were registered from applicants worldwide. Although 2020 was hit by the pandemic, domestic applicants managed to file 7,553 trademark applications under the Madrid Protocol before the CNIPA.With a striking 64.7% year-on-year growth, the CNIPA closed 149,000 trademark oppositions. Among them, 55,079 cases were allowed for registration, 38,988 cases were refused for registration, and 9,176 cases were partially allowed for registration.

358,000 other trademark adjudication cases (including rejection appeals, registration refusal appeals, invalidation actions, non-use cancellation appeals, etc.) were closed, achieving a 7.8% year-on-year growth. Among them, the success rate for refusal appeal was 33.2%, the success rate for invalidation was 70.4%.

The average trademark examination time had been shortened to 4 months.

b. The Supreme People’s Court issued judicial interpretations regarding intellectual property punitive damages and typical cases for guidance

On March 3, 2021, the Supreme People’s Court (“SPC”) issued the Interpretation of The Supreme People’s Court on the Application of Punitive Damages in Adjudicating Infringement of Civil Intellectual Property Infringement Cases (“Interpretation”). The Interpretation stipulated the scope of the application of punitive damages, defined the terms “intentional infringement” and “serious circumstances,” and provided methods for calculating base and reasonable multiples of punitive damages. The Interpretation is aimed at guiding lower courts on application of punitive damages aimed at punishing serious intellectual property infringement conducts.

To better guide the lower courts in applying the Interpretation, the SPC released the Typical Cases of Punitive Damages in Intellectual Property Infringement to ensure proper implementation of the Interpretation.

c. China National Intellectual Property Administration initiates special action against bad faith filings

On March 15, 2021, the CNIPA issued the Special Action Plan for Cracking Down on Malicious Preemptive Trademark Registration (“Action Plan”) , and it specifically aims to crack down on trademark squatting, seeking unjustified interests, disrupting trademark registration management order, and actions causing significant adverse social impact. Some of the noticeable focal points in the Action Plan for foreign trademark owners are to crack down on “squatting relatively famous public figure’s name, famous works or character name” and “squatting relatively famous or inherently distinctive trademark or other commercial marks, damage other’s prior rights.”

3. Suggested Trademark Practices Series – Well-Known Mark Recognitions in China

Securing well-known mark (WKM) recognitions in China can help brand owners to block bad faith trademark filings from registration and invalidate or cancel trademarks registered in bad faith. Securing WKM recognitions in China can also help in trademark infringements and unfair competitions lawsuits because WKM recognitions can be used as legal basis for granting protection on dissimilar goods. In this series, we will share our insights on how to secure WKM recognitions in China. In Part I, we shared WKM recognitions benefits, principles, and evidence collection. In Part II and III, we shared cases with insightful analysis on how the courts apply well-known mark recognitions to various facts. 

1. Well-Known Mark Recognition in China Part I
2. Well-Known Mark Recognition in China Part II
3. Well-Known Mark Recognition in China Part III
4. Well-Known Mark Recognition in China Part IV

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

April 27, 2021

1. The Supreme People’s Court and the Beijing High Court issued 2020 intellectual property typical cases

On April 22, 2021, the Supreme People’s Court held press conference and released the People’s Court’s Intellectual Property Protection Plan 2021 to 2025, 2020 Top 10 Annual Intellectual Property Cases, and 2020 50 Intellectual Property Typical Cases. On the same day, the Beijing High Court also released its top 10 typical cases. We have selected the following cases for your reference.

a. “PENFOLDS in Chinese” recognized as an unregistered well-known trademark

Southcorp Brands Pty Limited (“Southcorp”) sued Huaian City Huaxia Manor Brewing Co., Ltd. and Hangzhou Zhengsheng Trading Co., Ltd. for infringing its registered trademark right for “PENFOLDS” and its right to the unregistered well-known mark for “PENFOLDS in Chinese.” The court found that Southcorp’s “PENFOLDS in Chinese” mark constituted as an unregistered well-known mark. Meanwhile, the defendants’ use of the “Penfunils” marks constituted as a similar mark to Southcorp’s “PENFOLDS” mark in terms of letter composition, order, and pronunciation. The court held that the defendants infringed upon Southcorp’s rights and ordered the defendant to compensate Southcorp’s economic lost and reasonable enforcement costs of RMB 1 million (USD 154,100).

The case number is (2018) Sue 01 Ming Chu No. 3450.

b. Michelin won in a trademark infringement retrial

Compagnie Generale Des Etablissements Michelin (“Michelin”) sued Ningbo Jaiqi Handicraft Co., Ltd. (“Jaiqi’) for trademark infringement. The Guangdong High Court found that the only differences between Micheline’s Cited Marks was its gestures, the rest of Michelin Man’s characteristics were identical, which suggested that the Michelin Man’s characteristics were the heart of its Cited Marks’ distinctiveness. Through long-term promotion and use, the Michelin Man’s characteristics grew more prominent and triggered the relevant public to associate Michelin upon seeing the Michelin Man.

Cited Marks

When comparing the disputed cartoon character with the Cited Marks, although the disputed cartoon character only had a smiling face, the component and details of the smiling face were nearly identical with the Cited Marks’ characteristics. Considering Michelin Cited Marks’ distinctiveness and fame, such smiling face was likely to cause the relevant public to associate the Michelin Man image presented in the Cited Marks and cause confusion. Thus, disputed smiling face shall be deemed as similar to the Cited Marks. Additionally, the disputed inflatable doll also closely reassembled the Michelin Man’s characteristics and shall be deemed as similar with the Cited Marks. The court concluded that Jaiqi infringed upon Michelin’s trademark rights and ordered compensation for economic loss and reasonable legal costs of RMB 100,000 (USD 15,416).

The case number is (2019) Yue Ming Zai No. 44.

c. The “YEEZY” mark was recognized as an influential trademark on shoes related goods

Mascotte Holdings, Inc., (“Mascotte”) entrusted by the famous American singer and producer Kayne West, filed an invalidation against the “YEEZY” mark with Reg. No. 11161428 (“Disputed Mark”) owned by Xiamen Yezhi Trading Co., Ltd. (“Yezhi”). The Beijing High Court as a second instance court held that the Disputed Mark constituted as using unfair means to preemptively register other’s prior used mark that had certain influence, and damaged Kanye West’s name right.

Disputed Mark

The Beijing High Court found that the mark “YEEZY” constituted as a prior used mark that had certain influence prior to the Disputed Mark’s application date. Mascotte submitted large amount of promotion materials and media reports as evidence proving that the “Nike Air Yeezy” shoes, as a collaboration product between Kanye West and Nike, Inc., had obtained relatively high fame prior to the Disputed Mark’s application day. Kanye West was a well-known music producer and rapper and “YEEZY” was his alias and nickname. His popularity had expanded from music and entertainment to shoes and other fields. The Disputed Trademark was registered in connection with shoes, clothing, socks, and other goods, which would easily confuse the relevant public that the goods bear the Disputed Mark was licensed or had certain association with Kanye West. Accordingly, the registration of the Disputed Mark damaged Kanye West’s name right.

The case number is (2019) Jing Xing Zhong No. 3273.

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

April 20, 2021

1. Alibaba fined for RMB 18.22 billion for abuse of market dominance

On April 10, 2021, the State Administration of Market Regulation (“SAMR”) rendered a decision finding Alibaba Group Holding Limited (“Alibaba”) abused its market dominance, imposed a fine of RMB 18.22 billion (USD 2.79 billion), and requested Alibaba to conduct full rectification and operate in compliance with laws and regulations.

In its decision, the SAMR found that Alibaba’s operations have “occupied a relatively high market share for a long-term, which enjoys a very high market recognition and consumer awareness, and there is high cost for operators to move away from Alibaba’s platforms.” Alibaba had a dominant position in the online retail service market in China.

Since 2015, in order to restrict other competitions, maintaining and strengthening its market position, Alibaba abused its market dominance by not allowing business operators on its platform to operate or participate sales events on other competing platforms. Further, Alibaba imposed various awards and punishments in order to carry out its “choice between the two” (business operators can only choose either Alibaba or other competing platforms but not both) implementation.

Alibaba’s actions not only maintained and strengthened its market position, but also deviated from the development concept of economic openness, tolerance, and sharing. Such actions excluded and restricted relevant market competition, harmed the interests of business operators and consumers on the platform, and weakened innovation and development vitality. Alibaba’s actions also hindered the healthy development of platform economy in a standardized, orderly, and innovative manner.

Click here for SAMR’s official press release and its administrative decision and guidance in Chinese.

2. Taobao successfully invalidated the “Lian Tao” trademark

Guangdong Lian Tao Electronic Commerce Co., Ltd. (“Lian Tao”) applied for the “Lian Tao in Chinese” mark in Class 9 for computer, electronic recorder, etc. with application number 19802423 on April 28, 2016. The “Lian Tao in Chinese” mark was approved for registration on November 21, 2018 after an opposition proceeding.

On October 10, 2019, Alibaba filed an invalidation action against the “Lian Tao in Chinese” mark claiming that such mark constituted as a similar mark on identical or similar goods with its “Tao in Chinese,” “Tao Bao in Chinese,” “Tao Bao in Chinese and TAOBAO,” and 6 other marks. Alibaba also requested for well-known mark recognition and protection.

The CNIPA ruled in favor of Alibaba and invalidated the “Lian Tao in Chinese” mark. The CNIPA found that the “Lian Tao in Chinese” mark and Alibaba’s Tao Bao in Chinese” series marks all consisted of the “Tao in Chinese” character, which constituted as similar marks in terms of composition and pronunciation. The CNIPA invalidated the goods of computer, neon lamp, television, and other goods, and only maintained on chip (integrated circuit) approved for the “Lian Tao in Chinese” mark.

Lian Tao filed an administrative appeal with the Beijing IP Court and we will continue to update news regarding this dispute.

3. “Nestlé” recognized as a well-known mark and granted cross-class protection against infringing use on furniture related goods

Nestlé S.A. (“Nestlé”) sued Yabo International Home Trading Center Co., Ltd. (“Yabo”) for infringing use of its “Que Chao in Chinese” and “Nestlé” trademarks before the Guangzhou IP Court.

The court found that Nestlé submitted sufficient evidence to prove that its “Que Chao in Chinese” and “Nestlé” trademarks have obtained high fame and were generally known by the relevant public through long-term and extensive use and promotion on coffee related goods. Nestlé’s marks had in fact achieved well-known status. Yabo’s disputed marks completely included Nestlé’s well-known marks and the Chinese characters and English letters were in identical order, which constituted as a copy of Nestlé’s well-known marks. Yabo’s use of the disputed marks on wholesale and retail of furniture goods damaged the corresponding relationship between Nestlé’s well-known marks and its approved goods for coffee related goods, weakened Nestlé’s well-known marks’ inherent distinctiveness, which constituted as trademark infringement because such act misled the relevant public and was likely to damage Nestlé’s interests as an owner of its well-known trademarks.

Considering it was difficult to determine Nestlé’s loss and Yabo’s unjustified profit from infringement and there lacked trademark licensing fee for reference in determining Nestlé’s compensation, the court considered Yabo’s overall operation scale, infringing regions and duration, Nestlé’s trademarks fame, Yabo’s failure to provide operation profit upon court order, and Nestlé’s legal and other reasonable enforcement costs and ordered Yabo to pay RMB 1 million (USD 153,600) in damages including reasonable enforcement costs to Nestlé.

Yabo appealed the unfavorable decision to the second instance court but the appeal was rejected.

4. The CNIPA said “NO” to malicious trademark hoarding and squatting

The CNIPA launched the “Special Action Plan to Combat Malicious Trademark Squatting” at the end of March emphasizing that trademark squatting not only seriously damaged the legitimate rights and interests of market entities and the public, but also seriously endangered the order of trademark registration. Therefore, starting from March 2021, the CNIPA has launched a special campaign to combat malicious trademark squatting, and severely cracked down on seven types of malicious squatting that attempted improper interests, disrupted the order of trademark registration management, and caused significant adverse social impact.

Prior to this, the CNIPA had issued a separate document to rectify the situation of malicious hoarding of trademark applications not for use. Judging from the recent publication and news release from the CNIPA, the crack down has been very intense. For example, a company submitted more than 380 trademark applications within 3 months, but all of them were rejected. An individual submitted 15 applications on May 14, 2020 and August 20, 2020, totaling 30 applications. In its decision to reject these applications, the CNIPA found that such number of trademarks “obviously exceeding regular business needs” and “should be considered as malicious trademark applications not for the purpose of use.”

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

April 13, 2021

1. Selected CNIPA administrative enforcement guiding cases

Case 1: Dun & Bradstreet trademark infringement

In March 2019, Shanghai Huaxia Dun & Bradstreet Information Consulting Co. Ltd., (“Huaxia DUNS”) filed a trademark infringement complaint with the Shanghai Chongming District Market Supervision Administration (“MSA”) against Shanghai Zhangyuan Information Technology Co., Ltd. (“Zhangyuan”). The Dun & Bradstreet Corporation (“DUNS”) registered “Deng Bai Shi in Chinese (邓白氏),” “Deng Bai Shi Bian Ma in Chinese(邓白氏编码),” and various trademarks in China in Classes 35 and 36 for services of business information agency, providing market information, providing credit evaluation, etc. DUNS authorized Huaxia DUNS to use its registered trademarks to conduct business in China. Zhangyuan was a former DUNS franchise service provider who knew of the “Deng Bai Shi in Chinese (邓白氏)” mark and other marks but still signed a service contract with Baidu to promote its DUNS application agency services through Baidu keywords. At the time this case went to trail, Zhangyuan collected a total of RMB 179,991 (USD 27,500) service fees from 8 companies.

The MSA found that Zhangyuan used identical or similar trademarks to DUNS’s trademarks that were likely to cause confusion to the relevant public, infringed upon DUNS’s trademark right, and ordered Zhangyuan to immediately stop infringing activities and issued a fine of RMB 539,730 (USD 82,400).

Case 2: Asics “Tiger” trademark infringement

In January 2018, the Beijing Fengtai MSA (“Fengtai MSA”) found that the respondent Beijing Hongyuanlide Business Trade Co., Ltd. (“Hongyuanlide”) sold sneakers using Asics’s “Tiger” series trademarks without authorization. Fengtai MSA further found that Hongyuanlide signed a franchise contract with Quanzhou Aishikeshi Sports Equipment Co., Ltd. (“Quanzhou Aishikeshi”) as an agent to sell Asics “Tiger” series sneakers. During the Fentai MSA investigation, Hongyuanlide claimed that it did not know that the disputed sneakers were infringing goods and should be indeminified. Fengtai MSA found, however, that not only Quanzhou Aishikeshi and Hongyuanlide shareholders overlapped, but Quanzhou Aishikeshi also applied for trademarks similar to Asics’s registered trademarks but the applications were refused for registration by the CNIPA. Accordingly, Hongyuanlide’s actions amounted to intentional violation of the relevant laws and regulations because Hongyuanlide either actually knew or should have known the disputed sneakers were infringing goods, but still signed an agency deal with Quanzhou Aishikeshi to sell the disputed sneakers extensively. And upon Fengtai MSA’s findings of its infringing activities, Hongyuanlide intended to dodge from administrative penalty by claiming itself as an authorized agent. Fengtai MSA concluded that the indemnification clause could not apply to Hongyuanlide, and ordered Hongyuanlide to immediately cease all infringing activities. Fengtai MSA confiscated 6,687 pairs of sneakers and issued a quintuple fine of RMB 55.7 million (USD 8.5 million).

2. The Beijing IP Court held a press conference regarding trademark refusal appeal involving “deceptive” applications

On March 31, 2021, the Beijing IP Court held a press conference regarding trademark refusal appeal involving “deceptive” applications under Article 10(1)(vii) of the Chinese Trademark Law. In the past six years, more than half of all cases tried were trademark administrative disputes, and among them, trademark refusal appeal took the largest share at about 30,000 cases. One category of all trademark refusal appeals was trademarks refused applying the “deceptive” article, which accounted 3.1% of all trademark administrative disputes. In the last three years, the number of cases involving the “deceptive” article were 200 cases, 508 cases, and 374 cases, respectively. The court upheld the CNIPA’s decision 81.3% of the time. These refused trademarks had discrepancies between the mark itself and either the features of the goods, or the business features of the services. Some marks even expressly or impliedly “embedded” specific terms that may not have matched the goods’ quality or the origin of the goods.

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Weekly China Trademark News Updates

April 8, 2021

1. LEGO won RMB 30 million in a trademark infringement dispute

The Guangdong High Court rendered the final decision regarding the trademark infringement and unfair competition disputes between the “LEGO in Chinese (乐高)” mark owned by LEGO Juris A/S (“LEGO”) and the “Le Pin in Chinese (乐拼)” mark. The court held that the manufacturers of “Le Pin in Chinese (乐拼)” Guangdong Meizhi Zhijiao Technology Co., Ltd. (“Meizhi”) and other defendants infringed upon LEGO’s trademark right and their acts amounted to unfair competition. The court ordered Meizhi and other defendants to compensate LEGO’s economic loss and reasonable legal cost of RMB 30 million (USD 4.58 million).

The court acted as the second instance court found that the “Le Pin in Chinese (乐拼)” mark used by Meizhi was highly similar to the “LEGO in Chinese (乐高)” mark in terms of color combination, presentation, and overall appearances, which was likely to cause confusion to the relevant public and weakened the distinctiveness of “LEGO in Chinese,” and damaged LEGO’s market reputation.

Meizhi had been copying LEGO’s products for more than four years, infringed upon 8 of LEGO’s registered trademarks and 1 influential trade name. Between September 11, 2017 and April 23, 2019, Meizhi’s infringing products collected unjustifiable income of RMB 330 million (USD 50 million). Added the sales records provided by Taobao, it can be reasonably presumed that “Le Pin in Chinese (乐拼)” products collected over RMB 500 million (USD 76 million) unjustifiable income. Consider the industrial profit, the overall profit of the infringing products is over RMB 160 million (USD 24.4 million).

The court ordered a high damage not only because Meizhi had obvious bad faith in copying and imitating LEGO’s trademarks, but also Meizhi’s long-term, extensive, and high-profited infringements on LEGO’s trademarks.

2. Friso diapers are not made by Friso?

Frieslandcampina Nederland B.V. (“Friesland”) won a trademark infringement and unfair competition lawsuit against Mei Su Jia Er (H.K.) Ltd. (“Mei Su Jia Er”), and Fujian Mengya Baby Goods Trading Co., Ltd. (“Mengya”). The second instance court Fujian High Court held that Mei Su Jia Er infringed upon Friesland’s “Mei Su Jai Er in Chinese (美素佳儿)” and “FRISO” trademarks by using “Mei Su Jai Er in Chinese (美素佳儿)” and “friso Mei Su Jai Er in Chinese (美素佳儿)” marks on baby diapers

What’s noteworthy is that the Fujian High Court raised the damages from RMB 580,000 (USD 88,000) to RMB 2.08 million (USD 320,000). More than tripled the damages ordered by the first instance court. The Fujian High Court reasoned that the infringing products shared similar sales channel and targeted consumers with the approved goods under Friesland’s cited marks. Such use was likely to cause confusion among the relevant public as to the source of goods. Moreover, the defendants were baby goods manufacturers and should have known about Friesland’s fame but insisted on using marks similar to Friesland’s cited marks. Such acts constituted subjective bad faith in copying, imitating, and plagiarizing other’s trademarks. Considering the above, the damages ordered by the first instance court was too low to cover Friesland’s economic loss and reasonable legal costs.

 3. Bulgari won against fake Serpenti jewelry trademark dispute

The Beijing Intellectual Property Court recently held that the “snake head design” mark owned by an individual Liu with reg. no. 15911982 (“Disputed Mark”) infringed upon Bulgari S.P.A.’s (“Bulgari”) copyright and should be cancelled. The court found that Bulgari’s Serpenti design was a pictorial and unique design that can be protected under the Chinese Copyright Law as an artwork. Bulgari submitted sufficient evidence proving that it enjoys copyright for the snake head design before the Disputed Mark’s application date. Moreover, Bulgari’s evidence showed that Liu once owned a business related to “purse,” which overlapped with Bulgari’s scope of business and suggested that Liu may or should’ve known about Bulgari’s Serpenti design. Considering both the Disputed Mark and Bulgari’s Serpenti design have drawn ideas from snake head, the overall appearance, composition, visual effect, and expression were all similar, the Disputed Mark constitutes as a similar mark to Bulgari’s Serpenti design.

Infringing Mark	Bulgari’s Serpenti Jewelry

4. Research report on electronic data evidence guidelines for trademark adjudication cases

In order to standardize evidence collection, proof of evidence, and examination of electronic data in trademark adjudication cases, the CNIPA initiated the research on the “Rules of Electronic Data Evidence in Trademark Adjudication Cases” in 2020. The parties and their agents and the examiner of trademark adjudication can refer to the rules for evidence collection, proof of evidence, and cross examination of electronic data. At the same time, the CNIPA will closely track the status of electronic data evidence submission and acceptance, so to gradually improve the “Guidelines for Electronic Data Evidence in Trademark Adjudication Cases” that will be the basis for the “Rules for Electronic Data Evidence in Trademark Adjudication Cases.”

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Weekly China Trademark News Updates

March 29, 2021

1. China National Intellectual Property Administration initiates special action against bad faith filings

On March 15, 2021, the CNIPA issued the Special Action Plan for Cracking down on Malicious Preemptive Trademark Registration (“Action Plan”) specifically aims to crack down on trademark squatting, seeking unjustified interests, disrupting trademark registration management order, and actions causing significant adverse social impact. Some of the noticeable focal points in the Action Plan for foreign trademark owners are crack down on “squatting relatively famous public figure’s name, famous works or character name” and “squatting relatively famous or inherently distinctive trademark or other commercial marks, damage other’s prior rights.”

The complete Action Plan in Chinese can be found at 国家知识产权局关于印发《打击商标恶意抢注行为专项行动方案》的通知.

2. The Shanghai IP Court recognized the mark “Peppa Pig in Chinese (小猪佩奇)” as a well-known mark

Entertainment One UK Limited (“Entertainment One”) sued an individual CHEN and Shanghai Xunmeng Information Technology Co. Ltd. (“Xunmeng”) for trademark infringement. The Shanghai IP Court recognized the mark “Peppa Pig in Chinese (小猪佩奇)” as a well-known mark in favor of Entertainment One and ordered Xunmeng to pay damages of RMB 30,000 (USD 4,500).

Infringing Mark

The Shanghai IP Court found that CHEN used “Peppa Pig in Chinese (小猪佩奇)” and the Peppa Pig design on its online store and on its infringing products, which constituted an imitation of Entertainment One’s mark “Peppa Pig in Chinese (小猪佩奇)” and infringed upon its trademark rights. In its findings, the court recognized the mark “Peppa Pig in Chinese (小猪佩奇)” as a well-known mark upon its findings that Entertainment One submitted sufficient evidence to support its request to recognized that the mark “Peppa Pig in Chinese (小猪佩奇)” has achieved well-known status in Class 9 in connection with animation and electronic publications (downloadable) and enjoyed high fame and good-well. The court ordered CHEN to pay compensation and reasonable costs to Entertainment One based on the nature, duration, scope, and consequence of the infringement. Regarding Xunmeng, the court found that Xunmeng had removed the infringing product links and without evidence proving its connection with CHEN, Entertainment One’s infringing claim against Xunmeng cannot be established.

For more information regarding well-known mark recognition, we have prepared the following well-known mark series for your reference.

• Well-Known Mark Recognition in China Part I
• Well-Known Mark Recognition in China Part II
• Well-Known Mark Recognition in China Part II

 3. “B.duck Yellow Duck” won RMB 2.4 million in a trademark infringement case

The Shandong High Court ordered Lixun Group Co., Ltd. (“Lixun”) and other defendants to pay Duckling Clothing (Fujian) Co., Ltd. (“Duckling”) economic loss and reasonable cost of RMB 2.4 million for trademark infringement.

In its findings of trademark infringement, the court found that the yellow duck design work used in the Involved Mark was originally completed in 1948 and has reached relatively high fame through promotions. Duckling has been using the yellow duck design on shoes and clothing related goods as a commercial mark since at least 2019. And because the image used on the shoes and clothing goods by Duckling was nearly identical to the original work completed in 1948, the yellow duck’s fame can be reflected to the Involved Mark. Therefore, although the yellow duck design work was approved only in 2020 as a registered trademark, given the fame of its original work, the Involved Mark have certain fame since its registration and can be used to distinguish the source of goods. The first instance court erred in finding that the Involved Mark lacked distinctiveness and lack fame. Moreover, the alleged infringing goods are identical to the Involved Mark’s approved goods. The overall composition, appearances, and the overall appearance of the alleged infringing marks and the Involved Mark was similar. Despite there were differences between the alleged infringing marks and the Involved Mark, since the Involved Mark carried high fame and high distinctiveness, the relevant consumer would not be able to distinguish the alleged infringing mark with the Involved Mark. Lixun’s use of the infringing marks on the infringing goods would cause confusion as to the source of goods or that the two companies have affiliations. Lixun infringed upon Duckling’s trademark right.

Note, although Lixun claimed that it had obtained authorization from the copyright owner to use the duck design, the court found Lixun altered the duck design. Moreover, Lixun was only authorized to use the brand and the duck design was not registered as a trademark. Since Duckling had the exclusive rights to use the trademark, and the Involved Mark was highly similar to the original work, Lixun’s alteration of the duck design and prominently use the design as a trademark on its goods showed objective bad faith in free riding Duckling’s Involved Trademarks. Lixun also failed to submit evidence proving that it has been using the infringed mark on the infringing goods prior the Involved Mark’s application date. Accordingly, Lixun’s prior use rebuttal cannot be established.

Consider the fame of the yellow duck, the objective bad faith, nature, scope, and consequence of the infringement, the court ordered Lixun and other defendants to pay Duckling for economic loss and reasonable cost of RMB 2.4 million (USD 366,800).

The case number is (2020) Lu Min Zhong No. 3127.

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Weekly China Trademark News Updates

March 22, 2021

1. China’s First!  Brita won against an infringer who abused the administrative proceedings

Brita GMBH (“Brita”) sued Shanghai Kangdian Industrial Co., Ltd. (“Kangdian”) for trademark infringement and unfair competition and requested for economic loss and reasonable legal costs.

The court found Kangdian infringed upon Brita’s trademark rights by labeling marks that were identical or similar to Brita’s “BRITA” or “BI RAN DE in Chinese (碧然德)” trademarks on its product testing reports, product packaging, and brochure, and by selling its products through WeChat and online platforms. Kangdian self-claimed itself on its WeChat account and online stores as “BI RAN DE Official Flagship WeChat” and “BRITA BI RAN DE Official WeChat Mini Program,” and widely promoted Brita’s brand stories and advertisements. Kangdian’s conducts amounted to unfair competition. The court also found that Kangdian squatted Brita’s trademarks and abused trademark opposition proceeding amounted to unfair competition. Specifically, Kangdian filed trademark applications for marks identical or similar to Brita’s trademarks in Classes related to Brita’s products. Subsequently, Kangdian utilized its trademark rights in trademark opposition and invalidation proceedings to disrupt and hinder Brita’s use of its trademark rights. The court reasoned that Kangdian’s trademark infringements and unfair competition conducts were only parts of its extensive and comprehensive infringing conducts. Kangdian’s purpose was to free riding on Brita’s popular goodwill and create impediments to interfere with Brita’s general business operations, progressively destroy Brita’s competitive advantage while raising its own competitive edge. Kangdian acted with obvious bad faith.

The case number is (2017) Hu 0112 Min Chu No. 26614.

2. Louis Vuitton recognized as a well-known mark

Louis Vuitton Malletier (“LV”) sued Guangzhou Ruiwang Leather Co., Ltd. (“Ruiwang”) and Rui Wang (together as the “Defendants”) for trademark infringement.

Disputed Mark	Cited Mark

The Defendants argued that the Disputed Mark with Registration Number 11724660 and other involved marks were valid trademarks. The Defendants further argued that this case shall not be docketed because this was not a trademark infringement case but an administrative dispute over trademark registration. The court applied Article 11 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Well-Known Mark Protection (“Interpretation”) in its findings, which states that if a registered trademark used by the defendant violates the provisions of Article 13 of the Chinese Trademark Law and the plaintiff’s well-known trademark is copied, imitated, or translated, which constitutes an infringement of the trademark right, the people’s court shall legally order the defendant to cease using that mark according to the plaintiff’s request. In this case, LV submitted sufficient evidence to prove that before the Disputed Mark’s application date, LV’s Cited Mark had achieved well-known status. The Disputed Mark’s use on handbags and purses were identical in nature to the Cited Mark’s approved goods of bags, backpack, handbags, fur, artificial leather, suitcase, etc. The Disputed Mark were also identical to the LV’s Cited Mark in terms of font style. Both marks’ design and overall appearance were also highly similar. The Disputed Mark constituted as a copy of the Cited Mark. Moreover, LV’s Cited Mark had been used in China for years and had achieved well-known status. Under such circumstances, the Disputed Mark’s use was likely to cause the relevant public to be confused as to the source of goods and associate the Disputed Mark with LV’s well-known mark, dilute LV’s market reputation and damage LV’s interests. The second instance court ruled in favor of LV and ordered a damage of RMB 500,000 (USD 76,800).

The case number is 2019 Yue Min Zhong No. 1857.

We have published three articles on well-known mark recognition in China in the following links for your reference.

• Well-Known Mark Recognition in China Part I
• Well-Known Mark Recognition in China Part II
• Well-Known Mark Recognition in China Part III

 3. The Supreme People’s Court released Typical Cases of Punitive Damages in Intellectual Property Infringement

The Supreme People’s Court (“SPC”) recently released the Typical Cases of Punitive Damages in Intellectual Property Infringement to guide lower courts in applying the Interpretation of the SPC on Applying Punitive Damages in Intellectual Property Infringement Adjudications (“Interpretation”), and ensure proper implementation of the “Interpretation.” Among the released cases, we found the following Adidas case to be noteworthy.

Adidas sued Guoqian Ruan and Yongyi Ruan (“Defendants”) for trademark infringement and to immediately stop infringement, destroy infringing goods, and pay economic loss and reasonable legal costs.

The court found that Adidas’ “Adidas” trademark series enjoyed high fame through long term use and promotion in China. The Defendants owned Rui An Zhengbang Shoes Co., Ltd. (“Zhengbang”) that manufactured shoes labeled “Adidas” marks infringed upon Adidas’s trademark rights. The local Market Supervision Administration’s record for punishing Zhengbang multiple times for infringing Adidas’s trademark rights proved that Zhengbang had obvious bad faith. For this reason, the court supported Adidas’s claim for treble punitive damages and reasonable costs and ordered the Defendants to pay RMB 1.07 million (USD 164,400) in damages.

The case number is (2020) Zhe 03 Min Zhong No. 161.

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Weekly China Trademark News Updates

March 8, 2021

1. The Supreme People’s Court issued judicial interpretations regarding intellectual property punitive damages

On March 3, 2021, the Supreme People’s Court issued the Interpretation of The Supreme People’s Court on the Application of Punitive Damages in Adjudicating Infringement of Civil Intellectual Property Infringement Cases (“Interpretation”). The Interpretation stipulates the scope of the application of punitive damages, defines the terms “intentional infringement” and “serious circumstances,” and provides methods for calculating base and reasonable multiples of punitive damages. The Interpretation is aimed at guiding lower courts on application of punitive damages aimed at punishing serious intellectual property infringement conducts.

2. FDENDI won against unauthorized used in an outlet shopping center

On March 4, 2021, the Shanghai High Court held that Shanghai Yilang International Trade Co., Ltd. (“Yilang”) and Capital Outlets (Kunshan) Commercial Development Co., Ltd. (“Capital”) infringed upon FENDI S.R.L.’s (“FENDI”) trademark right and amounted to unfair competition. Yilang and Capital were ordered to pay FENDI RMB 350,000 (USD 54,000) for economic loss and reasonable legal cost.

Parts of FENDI’s Cited Marks

The Shanghai High Court found that Yilang’s independent use of the mark “FENDI” on its signboard was intended to demonstrate itself as the business operator and management of the mark “FENDI,” which fell into the scope of protection of FENDI’s exclusive trademark right in Class 35 in connection with business operation and business management related services. Yilang’s conduct constituted as trademark infringement. Meanwhile, “FENDI,” as a trade name, had obtained certain fame on the market and was known by the public. Yilang’s independent use of the mark “FENDI” on its signboard without authorization constituted as using FENDI’s business name without authorization and amounted to unfair competition. As Yilang’s operation management, Capital shall be held jointly liable for aiding Yilang’s said trademark infringement and unfair competition for using the mark “FENDI” without authorization.

The case number is (2019) Hu Min Zai No. 5.

 3. The mark “YEEZY” is recognized as an influential trademark on shoes related goods

The Beijing High Court held that the mark “YEEZY” with Reg. No. 11161428 (“Disputed Mark”) owned by Xiamen Yezhi Trading Co., Ltd. (“Yezhi”) constituted as using unfair means to preemptively register other’s prior used mark that had certain influence, and damaged Kanye West’s name right.

The Disputed Mark

The Beijing High Court found that the mark “YEEZY” constituted as a prior used mark that had certain influence prior to the Disputed Mark’s application date. “YEEZY” was Kanye West’s alias and nickname. Kanye West was a well-known music producer and rapper. His popularity had expanded from music and entertainment to shoes and other fields. The Disputed Trademark was registered in connection with shoes, clothing, socks, and other goods, which would easily confuse the relevant public that the goods bear the Disputed Mark was licensed or had certain association with Kanye West. Accordingly, the registration of the Disputed Mark damaged Kanye West’s name right.

The case number is (2019) Jing Xing Zhong No. 3273.

4. Thinking about selling refurbished Siemens products? Think again

Siemens (China) Co., Ltd. (“Siemens”) sued Xiamen Xing Rui Da Automation Equipment Co., Ltd. (“Xin Rui Da”) for trademark infringement alleging Xing Rui Da purchased and refurbished its digital module and control module with self-printed “SIEMENS” marks for sale. Both the first instance court and the second instance court held that selling refurbished secondhand products did not infringe upon Siemens’ trademark right, however, re-printed Siemens’ trademark without authorization constituted as infringement.

Part of Siemens’ Cited Marks

The first instance court found that Xin Rui Da did not infringe Siemens’ trademark right for purchase and sell refurbished Siemens’ products because the refurbished Siemens products were not substantially altered, which would not affect the consumers’ post-sales experience. Neither would the low-priced refurbished products constituted as a trademark infringement. However, Xin Rui Da printed the “SIEMENS” trademarks without authorization and sold counterfeit “SIEMENS” digital output module constituted trademark infringements. The first instance court ordered Xin Rui Da to compensate Siemens’s economic loss of RMB 200,000 (USD 31,000) and the second instance court affirmed.

The case number is (2019) Min 02 Min Chu No. 875.

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Weekly China Trademark News Updates

March 1, 2021

1. Criminal intellectual property offense can now be sentenced up to 10 years in jail

The eleventh amendment of the China Criminal Law will come into force on March 1, 2021. Among the amendments regarding intellectual property protections, service trademarks protections were freshly added, crack down on copyright infringement were strengthened, the types of criminal penalty for trade secret infringement were supplemented, and the maximum intellectual property sentence were increased to 10 years in prison across the board.

2. New Balance could not invalidate “Xin Bai Lun in Chinese”

The Beijing High Court affirmed the first instance court decision to maintain the “Xin Bai Lun in Chinese” mark with Reg. No. 4100879 in Class 35 (“Disputed Mark”) owned by Guangzhou Xin Bai Lun Enterprise Management Co., Ltd. (“Xin Bai Lun”). In its decision, the court reasoned that the cited marks owned by New Balance, namely, “New BALANCE” (“Cited Mark 1”) with Reg. No. 175153 and “NEW BALANCE” (“Cited Mark 2”) with Reg. No. 748744 were English marks, and there were obvious differences in the Chinese meaning, compositions, pronunciations, and overall appearances between the Cited Marks and the Disputed Mark. Thus, New Balance’s claims that “New Balance” had established association with “Xin Bai Lun in Chinese” and the Disputed Mark constituted as a similar mark used on identical or similar goods could not be supported.

Disputed Mark

Cited Mark 1	Cited Mark 2

New Balance’s other claims against Xin Bai Lun were also not supported by the court including prior trade name right, prior specific name right of famous goods, prior non-registered trademark right, other provisions stipulated in Article 31 and 41 of the 2001 China Trademark Law.

The case number is (2020) Jing Xing Zhong No. 6686.

3. JEEP stroke out “JEEPIN and Ji Pin Hui in Chinese”

The Beijing High Court held that the mark “JEEPIN and Ji Pin Hui in Chinese (集品会)” with app. No. 12130235 in Class 25 (“Disputed Mark”) filed by Fujian Ji Pin Decoration Design Engineering Co., Ltd. (“Ji Pin”) was a similar mark used on identical or similar goods to the prior marks owned by FCA US LLC.

Disputed Mark

Cited Mark 1-4	Cited Mark 5	Cited Mark 6

The court reasoned that the Disputed Mark was a combination mark of English “JEEPIN” and Chinese “Ji Pin Hui in Chinese” filed in Class 25 for clothing related goods. The first five cited marks owned by FCA US LLC all consists of “JEEP” or “Jeep” in Class 25 for clothing related goods. Compared to the first five cited marks, the Disputed Mark constituted similar marks in composition, meaning, and overall appearance. The sixth cited mark “JEEP in Chinese (吉普)” in Class 25 for clothing relate goods had established one-to-one corresponding association with “JEEP.” Thus, the Disputed Mark constituted as similar mark with the sixth cited mark. Moreover, FCA US LLC submitted sufficient evidence to prove that its “JEEP” trademarks had obtained high fame through widespread promotions and uses. The court concluded that when the Disputed Mark and the cited marks one to six used on similar goods were likely to cause consumers who paid general attention to be confused in believing that the source of goods was identical or that the providers were specifically affiliated.

The case number is (2020) Jing Xing Zhong No. 4647.

4. Rockwool International won against the “ROCKWELL” mark

The Shanghai IP Court vacated the appeal filed by Shandong Xin Rui Yu New Thermal Insulation Material Co., Ltd. (“Xin Rui Yu”) against Rockwool International A/S (“Rockwool”) and affirmed the first instance decision in favor of Rockwool that ordered Xin Rui Yu to immediately stop all infringing conducts and pay RMB 1.95 million (USD 300,000) to Rockwool for economic loss and reasonable legal costs.

The court concluded that Xin Rui Yu’s use of the “ROCKWELL” and “Luo Ke Wei in Chinese (洛克威)” marks and registration of “www.cnrockwel.com” domain name infringed upon Rockwool’s exclusive registered “ROCKWELL” trademark right. The court reasoned that Xin Rui Yu intentionally changed its corporate name to “Luo Ke Wei in Chinese (洛克威)” and used “ROCKWELL,” highly similar to “ROOKWOOL,” as its trade name. Using mark similar to Rockwool’s corporate name as its corporate name and trade name was likely to cause confusion to the public and amounted to unfair competition. Moreover, Rockwool submitted sufficient evidence in support of its claims during the first instance. In contrast, Xin Rui Yu failed to submit contracts executed during operation, account books, etc. as requested by the court without justified reasons, which constituted as obstruction to produce evidence. Accordingly, the first instance court’s findings based on Rockwool’s claims and evidence were appropriate.

The case number is (2020) Hu 72 Ming Zhong No. 372.

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