Weekly China Brand Protection News

September 20, 2024

The Supreme People’s Court, upon review, has recognized “Ronghua Mooncakes in Chinese” as a distinctive name of a well-known product

The Supreme People’s Court of China issued a retrial judgment between the plaintiffs, Wing Wah Cake Shop Limited (“Hong Kong Wing Wah”), Dongguan Wing Wah Cake Shop Limited (“Dongguan Wing Wah”), and the defendants, an individual Su, Foshan City Shunde District Su Wing Wah Food Co., Ltd. (“Su Wing Wah”), and an individual Huang, regarding a trademark infringement and unauthorized use of distinctive names, packaging, and decoration of well-known goods dispute. The court ordered Su Wing Wah and Su to immediately stop the production and sale of the infringing products and to destroy the infringing goods, as well as to compensate for economic losses of CNY 500,000 (USD 68,500).

Cited Marks

Accused Infringing Products

The court found the following:

I. Regarding whether the accused infringing products infringed upon Hong Kong Wing Wah’s trademark rights

Hong Kong Wing Wah and Dongguan Wing Wah claimed the accused infringing products were mooncakes, identical to their Cited Marks’ approved goods. Upon comparing the packaging and decoration of the accused infringing products with the Cited Marks, it was found that the packaging and decoration of the infringing products used a design featuring peony flowers with leaves. The petals, stamens, and leaves of the peony were similar to those in registered trademark reg. no. 600301. Additionally, the infringing products’ packaging prominently featured a design of a peony with leaves, accompanied by a moon in the background, with the positioning and composition of the peony and moon being similar to those in registered trademarks with reg. nos. 1567181, 1567184, 1567182, and 1567183. Moreover, the “Fragrant Double-Yolk White Lotus Paste Mooncake” used a dark blue background with a yellow moon behind the peony, further resembling trademarks reg. nos. 1567182 and 1567183.

Su and Su Wing Wah used signs similar to Hong Kong Wing Wah’s Cited Marks as a prominent part of the packaging and decoration of the accused infringing products, serving as an identifier of the product’s origin. This unauthorized use capitalized on the distinctive features of Hong Kong Wing Wah’s Cited Marks, potentially causing the relevant public to mistakenly believe that the products originated from Hong Kong Wing Wah or that there was a specific connection between the products and the registered trademarks of Hong Kong Wing Wah. This amounted to the use of a mark similar to another party’s registered trademark on the identical type of product, misleading the public and infringed Hong Kong Wing Wah’s Cited Marks.

II. Regarding whether the accused infringing acts constituted unfair competition

First, Hong Kong Wing Wah provided substantial evidence to demonstrate that as early as the 1960s, it and its associated companies had been advertising their mooncake products in Hong Kong, linking the products with the corporate name “Wing Wah” and gradually using marks such as “Wing Wah,” “Wing Wah Mooncake,” and the “Full Moon and Flowers” design. In 1987, Hong Kong Wing Wah and its associated companies began establishing sales entities in mainland China. From then on, the company continuously promoted and sold its “Wing Wah Mooncakes,” starting in the Guangdong region.

Second, based on the duration, geographical reach, target market, and continuous promotion of the “Wing Wah Mooncake” brand, as well as the honors received by the product and its recognition as a well-known product, by 1997—when Su obtained  trademark and up to the time of the alleged infringement—Hong Kong Wing Wah’s “Wing Wah Mooncake” had already become a well-known product. The combination of the “Wing Wah Mooncake” text and the “Full Moon and Flowers” design, which Hong Kong Wing Wah and Dongguan Wing Wah Company had used on their packaging for many years, had become a distinctive identifier, clearly indicating the product’s origin. This combination had become a distinctive name and packaging decoration for a well-known product. Moreover,  in the packaging decoration indicates the source of goods and should be objectively considered as a well-known product name.

Third, in the mooncake market, both Hong Kong Wing Wah’s well-known “Wing Wah Mooncake” and products bearing the registered trademarks  owned by Su existed side by side. The public could differentiate between  and  the two brands. Therefore, both parties had an obligation to exercise a higher standard of care and responsibility in conducting their business, respecting the rights of each other and protecting the rights of consumers. Hong Kong Wing Wah should be allowed to continue using the “Wing Wah Mooncake” text in its traditional manner, while Su and Su Wing Wah were required to use their registered trademark  strictly according to its registration, which involved the use of the “Wing Wah” text inside a circle, with the text being a bold, stylized font, and placed within the circle.

In this case, the accused infringing products sold by Su and Su Wing Wah used the traditional Chinese characters for “Wing Wah” and “Wing Wah Mooncake” along with the peony and moon designs on their packaging and decoration, while using their registered trademark  in a less conspicuous location. Although Hong Kong Wing Wah could not invalidate the legitimate use of Su’s registered trademark, Su and Su Wing Wah altered the elements of their registered trademark by using “Wing Wah” or “Wing Wah Mooncake” in a form that was distinctly different from their registered trademark, thus changing the distinctive features of the registered trademark . This improper use constituted imitation of Hong Kong Wing Wah’s well-known product, leading to consumer confusion and causing the public to mistakenly believe that Su Wing Wah’s mooncakes were actually Hong Kong Wing Wah’s “Wing Wah Mooncakes.” Furthermore, the similarity of the peony, moon, and overall composition in Su Wing Wah’s packaging to Hong Kong Wing Wah’s “Full Moon and Flowers” design contributed to the confusion. The use of the registered trademark in an inconspicuous location was insufficient to distinguish the origin of the product. Therefore, the court ruled that Su and Su Wing Wah’s actions constituted unfair competition.

Last, to protect consumer rights and avoid confusion, the court required Su and Su Wing Wah, as operators in the same industry, to follow the principles of good faith, abide by the law, and respect commercial ethics. They were prohibited from using the “Wing Wah” or “Wing Wah Mooncake” text on mooncake products, packaging, or containers, or in mooncake-related transaction documents without adding additional identifiers to clearly distinguish the origin of their products. When referring to their mooncakes in advertising or communications, they must include identifying markers that differentiate their products from those of Hong Kong Wing Wah and Dongguan Wing Wah, ensuring that there is no confusion or association with Hong Kong Wing Wah and Dongguan Wing Wah’s products in the minds of the public.

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Weekly China Brand Protection News

September 14, 2024

First instance decision overturned! The second instance court found the accused infringing product did not infringe on the copyright of the “robocar poli” artwork

Recently, the Guangzhou Intellectual Property Court issued a final verdict in the case between ROIVISUAL Co., Ltd. (referred to as “ROIVISUAL”) and Foshan Chancheng Yinghao Toys Co., Ltd. (referred to as “Yinghao”) and Guangzhou Xiyangdian International Trading Co., Ltd. (referred to as “Xiyangdian”) regarding a dispute over copyright reproduction and distribution rights. The court overturned the first-instance judgment.

Cited Artwork’s 3D Design	Front view of the Cited Artwork
Disputed Artwork’s 3D Design	Front view of the Disputed Product

The first-instance court had ruled that the artistic work claimed by ROIVISUAL had originality in its overall design, external shape, and line combinations, qualifying it as an artwork protected under China’s Copyright Law. The copyright registration certificate for the artwork showed its completion date as January 8, 2010, and its first publication date as May 11, 2010. Based on information from Douban (online publication platform), the animation related to the artwork aired in South Korea on February 28, 2011, establishing that ROIVISUAL held the copyright.

Xiyangdian confirmed that the Disputed Product, a small police car walker, was sold by them, and Yinghao confirmed it was manufactured by them. Both parties agreed that Xiyangdian had purchased the product from Yinghao.

The first publication date of the Cited Artwork was May 11, 2010, which suggested that Yinghao had the possibility of accessing the Cited Artwork. While the Cited Artwork was a police car from the Korean animation “Robocar Poli,” and the Disputed Product was a small police car walker, both were anthropomorphized police cars. The court noted that despite limited ways to express facial features and vehicle functionality, the design of the Cited Artwork resembled Korean police cars from the mid-1980s with its blue-and-white color scheme. The Disputed Product, designed for the mainland Chinese market, also featured a blue (sky blue) and white color scheme with similar proportions. Although there were differences in the eyes, mouth, front bumper, and seating design, these variations were minor and did not change the overall aesthetic style. Thus, the court found substantial similarity between the two. The defendants were found to have infringed upon ROIVISUAL’s reproduction and distribution rights by manufacturing and selling a product substantially similar to the copyrighted Cited Artwork without authorization.

The second-instance court found, in contrast, that the comparison should follow the principle of “access + substantial similarity” and exclude common expressions in the public domain. The Cited Artwork was an anthropomorphized blue-and-white police car, while the Disputed Product was an anthropomorphized blue-and-white children’s police car walker. Upon comparison, the court noted that the similarities were limited to the blue-and-white color scheme and the anthropomorphized front. The major differences included: the Cited Artwork featured a closed body without a steering wheel, seat, or side mirrors (“ears”), with the letter “P” on the door, police lights protruding from the roof, eagle-eye headlights, and no handle at the rear, closely resembling a scaled-down police car; the Disputed Product had an open body with a steering wheel on top, a saddle seat, side mirrors (“ears”), no doors or “P” markings, integrated police lights, round headlights, and a rear handle, clearly resembling a children’s walker.

Based on an analysis of the overall and individual characteristics, despite some similarities, the designs were deemed distinctly different. Therefore, the court concluded that the Cited Artwork and the Disputed Product were not substantially similar.

As the two were not substantially similar, the Disputed Product did not infringe on the reproduction or distribution rights of the artistic work, and Yinghao and Xiyangdian were not liable for civil damages.

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Weekly China Brand Protection News

September 5, 2024

Descriptive use of “Xiongzai” indicating product shape does not constitute  trademark infringement

Recently, the Jinjiang Court of Fujian Province delivered a first-instance judgement in a trademark infringement case between Xiongzai Animation Co., Ltd. (“Xiongzai”) and Feilala Candy (Shanghai) Trading Co., Ltd. (“Feilala”) and the Baijie Central Park Store of Fujian Yonghui Supermarket Co., Ltd. in Quanzhou, Jinjiang provision (“Yonghui Supermarket”). The court held that the defendant’s use of the term “Xiongzai” on the names of its products during production and sales constituted legitimate use and did not infringe upon Xiongzai’s registered trademark rights.

Cited Marks

The court found that:

1. Feilala prominently displayed the “Fruit Flavor Forest” label in the center of the packaging for its “Fruit Flavor Forest Xiongzai Gummies, in Chinese” with the term “Xiongzai Gummies” in smaller font below, along with images of bears and fruits. The back of the packaging featured five bears, each corresponding to a different flavor, and the gummies themselves were bear-shaped.

2. According to Articles 48 and 59(1) of the Trademark Law, trademark use means using a trademark in commercial activities where it serves to identify the source of goods. Descriptive use of terms to indicate characteristics such as the shape, quality, main ingredients, function, purpose, weight, quantity, or other features of a product does not constitute trademark use under the law. In this case, the disputed product is bear-shaped gummies, and Feilala’s use of the term “Xiongzai” was intended to describe the product’s shape. This use aligns with the common practice of using animal names to label food and other related products in everyday life. The labeling did not exceed the scope of legitimate, reasonable use and would not lead the public into confusinf the source of the goods, thus constituting legitimate use. Therefore, the defendants’ use of the term “Xiongzai” on its product names during production and sales was deemed legitimate use and did not infringe upon Xiongzai’s exclusive rights to the registered trademark “Xiongzai.”

3. Additionally, the inherent distinctiveness of the term “Xiongzai” is relatively low, and the corresponding exclusivity as a registered trademark is weaker. The protection should be reasonable and appropriate, and it should not exclude or restrict others from using the term “Xiongzai” within its inherent meaning. Otherwise, it would result in an undue monopoly over the term, harming the legitimate rights and interests of other business entities.

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Weekly China Brand Protection News

August 29, 2024

1. A bad faith registration of the well-known “BENTLEY” mark invalidated despite being registered for over five years

The Beijing IP Court recently concluded an administrative dispute case regarding the invalidation of the “BENTLEY” mark with reg. no. 7631725 (“Disputed Mark”), involving the plaintiff Aucera.SA, the defendant CNIPA, and the third party Bentley Motors Limited. The court ruled to reject the plaintiff’s litigation request.

The key issue in this case was whether the application and registration of the Disputed Mark violated Article 13, Paragraph 2 of the 2001 Trademark Law. The Beijing IP Court held that the evidence submitted by the third party can prove that, prior to the Disputed Marks’ application date, the cited trademark had been widely recognized by the relevant public in the “automobile” category due to long-term promotion and use, reaching the status of a well-known trademark. Moreover, according to the evidence, besides the Disputed Mark in this case, the plaintiff had also applied for several trademarks such as “BENTLEY,” “B and Logo,” and “Bentley in Chinese” across multiple classes, including classes 9, 10, and 14, indicating that the plaintiff’s purpose in registering the Disputed Mark was questionable. Therefore, the third party’s request to invalidate the Disputed Mark, registered on November 21, 2010, should not be restricted by the five-year limit.

The Disputed Mark is identical in text, pronunciation, and meaning to the cited trademark “BENTLEY” with reg. no. 862360, constituting a copy and imitation of the cited trademark. Although the goods designated for use under the Disputed Mark in Class 18, such as “wallets; card cases (wallets),” do not fall under the same class as the “automobiles” under Class 12, for which the cited trademark is well-known, considering the well-known status of the third party’s cited trademark, the use of the Disputed Mark on “wallets; card cases (wallets)” is likely to cause the relevant public to associate it with the third party’s cited trademark. This could unjustly leverage the goodwill established by the third party through long-term business operations, potentially harming the third party’s interests. Therefore, the application and registration of the Disputed Mark violated Article 13, Paragraph 2 of the 2001 Trademark Law and should be declared invalid.

2. Repeated registration of Youku animation program and character names harms Youku’s legal rights and constitutes unfair competition; trademark agency’s acceptance of illegal commissions constitutes contributory infringement

Youku Information Technology (Beijing) Co., Ltd. (“Youku”) introduced the animated IP “Tina & Tony” produced and distributed by Riki Co. Ltd. of Russia to China and began broadcasting it on the Youku children’s channel on November 23, 2018, while also promoting and marketing the series. Starting from December 13, 2018, Ding (an individual), through the Shandong Weicheng Intellectual Property Service Co., Ltd. (“Weicheng”), applied in three batches to register 69 trademarks that were identical or similar to the program and character names of the “Tina & Tony” animation series. After Youku filed oppositions and invalidation requests against some of these trademarks, Ding still did not cease the registration attempts. Youku filed a lawsuit in the Linyi Intermediate Court in Shandong, claiming that Ding’s actions and Weicheng constituted unfair competition and sought joint compensation from the defendants for economic losses and reasonable expenses totaling CNY 2 million (USD280,700).

After a first-instance trial, the Linyi Intermediate Court found that:

1. Ding’s actions constituted unfair competition. Youku is the producer of the “Tina & Tony” animation series and its derivatives, as well as the copyright holder of the series’ name logo and character images, which are considered artistic works. Youku enjoys related rights protected under the Anti-Unfair Competition Law based on the animation series and the “Tina & Tony” English and Chinese names, character names, and images, making Youku the appropriate plaintiff in this case. Youku has the right to commercialize the elements of the involved animation IP. The Chinese version of “Tina & Tony” has been broadcast on Youku’s children’s channel since November 23, 2018, and has gained significant market recognition through Youku’s promotion and marketing efforts. The program’s name, character images, and names have achieved a certain level of recognition and notoriety among the relevant public, qualifying them as identifying marks under Article 6, Paragraph 1 and 4 of the Anti-Unfair Competition Law. Since December 13, 2018, Ding applied in three batches to register 69 trademarks that were identical to the program and character names of the aforementioned animation series, especially after some of the trademarks in the first batch were rejected or invalidated by the CNIPA. Despite this, Ding continued to register trademarks identical to the program and character names of the animation series, which clearly demonstrates an intention to copy and imitate another’s well-known marks to gain unfair benefits, violating the principle of good faith and causing significant damage to Youku, while also disrupting fair market competition. Therefore, Ding’s actions constitute unfair competition.

2. Weicheng’s actions constituted contributory Weicheng, as a professional trademark agency, was involved in the entire process of Ding’s trademark applications, objections, and invalidations. Despite knowing that Ding’s commissioned trademarks violated relevant provisions of the Trademark Law, Weicheng continued to accept the commission, constituting aiding infringement and making Weicheng jointly liable with Ding.

In conclusion, the first-instance court ruled that Ding must immediately withdraw or cancel all pending or registered trademarks identical or similar to Youku’s animation program names, character names, and character images. Furthermore, Ding was ordered to stop bad faith trademark registrations. The court also ordered Ding to pay Youku CNY 200,000 in compensation for economic losses and reasonable expenses, with Weicheng jointly responsible for CNY 100,000 of the compensation.

Both Youku and Weicheng appealed to the Shandong High Court. The key points of dispute in the second instance were:

1. Whether Youku is a proper party to the lawsuit. The Shandong High Court found that Youku introduced the involved series of animations to China and broadcasted them on the Youku children’s channel. As the producer or filing unit of the series and its derivatives, Youku had engaged in promotion and marketing. These facts confirm that Youku is the rights holder of the identifying marks under protection by the Anti-Unfair Competition Law related to the “Tina & Tony” series, including character names and images. Therefore, Youku is entitled to file a lawsuit and is a proper party in this case.

2. Whether Weicheng’s actions constituted contributory Ding commissioned Weicheng to handle the applications for all 69 involved trademarks. After CNIPA decided to reject eight of the trademarks in the first batch due to infringement of prior copyrights, Weicheng, knowing that the commissioned trademark applications violated the Trademark Law, still accepted the commission to handle further trademark applications. The first-instance court’s determination that Weicheng’s actions constituted aiding infringement and held them responsible was appropriate.

3. Whether the compensation amount determined by the first-instance court was appropriate. In this case, neither party provided evidence to prove the actual damages Youku suffered from the infringement or the benefits Ding and Weicheng gained from the infringement. Given that Youku claimed statutory damages, the first-instance court considered factors such as the notoriety and commercial value of the identifying marks, the infringement circumstances and intent of Ding and Weicheng, and Youku’s costs of rights protection. The court’s decision to award CNY 200,000 in damages, with Weicheng jointly liable for CNY 100,000, was appropriate. Additionally, Youku’s claim that the first-instance court unfairly allocated most of the litigation costs to Youku was unfounded. The court awarded CNY 200,000 in compensation out of the CNY 2 million claimed, the cost allocation is reasonable and should be upheld.

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 Brand Protection News

August 22, 2024

A Court found that the “MUJI in Chinese” trademark and service name have gained high recognition on retail services

Ryohin Keikaku Co., Ltd. (“Ryohin Keikaku”) and MUJI (Shanghai) Co., Ltd. (“MUJI Shanghai”) sued Beijing Cotton Field Textile Products Co., Ltd. (“Beijing Cotton Field”), Beijing Wuyinliangping Investment Co., Ltd., (“Beijing Wuyinliangping Investment”) and Beijing Wuyinliangping Home Furnishing Products Co., Ltd. (“Beijing Wuyinliangping Home Furnishing”), etc. for trademark infringement and unfair competition.

Ryohin Keikaku is the owner of the “ ” trademark in Class 35. It also registered “” in Classes 16, 20, 21, 25, and 35. It authorized MUJI Shanghai to use its registered trademarks in mainland China. Meanwhile, Beijing Cotton Field registered multiple “Wuyinliangping in Chinese” trademarks in Class 24, and  and also registered the “Wuying Workshop in Chinese” and “Natural Mill” trademarks in Classes 16, 24, 25, and 35.

The court found that:

Regarding trademark infringement:

In Class 20, the trademark “MUJI in Chinese” with reg. no. 4471268 owned by Ryohin Keikaku is approved for use on goods in Class 20, including pillows. Meanwhile, the trademark No. 1561046 “Wuyinliangping in Chinese” owned by Beijing Cotton Field is approved for goods in Class 24, including cotton fabrics and pillowcases. The accused infringing U-shaped pillow’s label indicates the product name as a neck pillowcase, but in reality, it is sold as a pillowcase with a filled pillow inside. Therefore, the accused U-shaped pillow is not just a separately sold pillowcase but is sold as a complete product with both pillowcase and pillow insert, thus falling under the category of pillows, a product covered by the Ryohin Keikaku’s trademark with reg. no. 4471268. As a result, the production by Beijing Wuyinliangping Investment and the sale by Dongtai Derun of the accused infringing U-shaped pillow infringes on Ryohin Keikaku’s trademark right. Additionally, the accused infringing long pillow is listed on the invoice as “Muji pillow in Chinese,” which functions as a trademark use by indicating and identifying the source of the product. The use of the “Wuyinliangping in Chinese” mark on the same or similar goods by Dongtai Derun without authorization is likely to cause confusion and misidentification, constituting infringement.

In Class 21, the accused infringing heat-resistant gloves, classified as household utensils, are similar to the products under Ryohin Keikaku’s trademark with reg. no. 4471267 in Class 21, which includes “cleaning tools (hand-operated), brooms,” due to similarities in function, purpose, and target consumers. Therefore, the use of the “Wuyinliangping in Chinese” mark on the accused infringing heat-resistant gloves exceeds the approved scope of the trademark with reg. no. 14621213, constituting infringement.

In Class 16, Beijing Cotton Field and Dongtai Derun used the “Wuyinliangping in Chinese” mark on the packaging of their accused infringing non-woven baby wipes (wet wipes) and non-woven multipurpose wipes (soft wipes). These products significantly overlap with the “tissues, wet wipes” covered by Ryohin Keikaku’s trademark No. 4471270 in terms of function, purpose, sales channels, and target consumers. Therefore, the accused infringing behavior infringes on Ryohin Keikaku’s exclusive rights to its registered trademark with reg. no. 4471270 in Class 16 for “tissues.”

In Class 25, the use of the “Wuyinliangping in Chinese” mark on the sales invoice for the accused infringing slippers by Dongtai Derun constitutes an infringement of trademark with reg. no. 4833852.

Finally, in Class 35, Dongtai Derun provides retail services for daily necessities. The purpose, content, method, and target of these services are highly similar to “promotional services (for others)” covered by Ryohin Keikaku’s trademarks with reg. nos. 4471277 and 16240403 “Wuyinliangping in Chinese.” The only distinction is between promoting others’ products and selling products, which is not easily distinguishable for the average consumer. During the provision of these retail services, Dongtai Derun used the same “Wuyinliangping in Chinese” mark on store signs, in-store promotional posters, cashier counter backgrounds, shopping bags, shopping baskets, and promotional posters, which is likely to confuse the relevant public and constitutes trademark infringement.

Regarding unfair competition:

According to the evidence, before the establishment of Beijing Cotton Field, the trade name and retail service name of Muji Shanghai already had significant recognition and market influence. The two Beijing companies used the same trade name as Muji Shanghai to attract franchisees. In the retail services provided by the online and offline stores opened by the Beijing companies, the “MUJI in Chinese” and “Wuyinliangping in Chinese” marks were frequently used in a non-standard manner. Additionally, the two Beijing companies labeled their products with their company name, which could easily lead the relevant public to mistakenly believe that there was a specific connection between the two Beijing companies and Ryohin Keikaku or Muji Shanghai, causing confusion. Based on the evidence, the court found that the purpose of Beijing Wuyinliangping Investment and the later-established Beijing Wuyinliangping Home Furnishing in using “Wuyinliangping in Chinese” as their trade name was largely to capitalize on the existing influence of Muji Shanghai’s trade name and the well-known “MUJI in Chinese” retail service name, rather than simply making fair use of the authorized trademark “Wuyinliangping in Chinese” with reg. no. 1561046.

In summary, the court found that the unauthorized use of the “Wuyinliangping in Chinese” name by the Beijing Wuyinliangping companies led to public confusion and constituted unfair competition.

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Weekly China Brand Protection News

August 13, 2024

“Scraping off codes” (removing barcodes and QR codes) infringes upon the rights of both producers and consumers, constituting unfair competition

OPPLE Lighting Co., Ltd. (“OPPLE”) sued an individual and their operated sole proprietorship, claiming that the removal of barcodes and QR codes from packaging and products infringed on OPPLE’s trademark rights and constituted unfair competition.

OPPLE conducted a notarized preservation of evidence of a carton of goods, which contained 30 OPPLE-branded LED downlights, a box of OPPLE-branded switches (with 10 individually packaged items), and a box of sockets (with 10 individually packaged items). The court found that: 1. The barcode printed on the outer packaging of the carton was removed. 2. The barcode printed on the outer packaging of the sockets was removed, but the individual packaging still displayed complete information about the brand, manufacturer, and warranty, with some individual packages bearing a barcode. 3. The QR code on the LED downlight products was removed, but the outer packaging box containing the products bore the “OPPLE” and “OPPLE Lighting in Chinese” trademarks, product parameters, barcodes, and QR codes, with a label next to the QR code stating “Scan to activate warranty, verify authenticity, and enjoy worry-free after-sales service,” along with information on product parameters, warranty period, brand, and manufacturer. 4. The outer packaging box and individual packaging bags for the switches were intact, with the “OPPLE” and “OPPLE Lighting in Chinese” trademarks, product parameters, barcodes, and QR codes printed on them. A label next to the QR code also stated, “Scan to activate warranty, verify authenticity, and enjoy worry-free after-sales service,” along with information on product parameters, warranty period, brand, and manufacturer.

First Instance Court – the Jianghan District Court held that:

1. No Trademark Infringement: OPPLE acknowledged that the products purchased from the defendant’s store were genuine. The OPPLE trademark was clearly visible on the products, even though some products or packaging were missing QR codes and barcodes. This did not constitute an infringement of trademark rights, as the origin of the products could still be identified from the products or packaging. According to the “Trademark Rights Exhaustion ” principle, OPPLE has the right to sell its products. But agreements between OPPLE and its distributors about not selling across regions do not grant the right to restrict others from reselling products purchased from distributors. In this case, the defendant’s product listings on WeChat and offline sales involved genuine OPPLE products, with manufacturer and after-sales information provided, which would not confuse consumers about the product’s origin. Therefore, OPPLE’s claim of trademark infringement was not upheld.

2. No Unfair Competition: First, the parties involved are not competitors in the same industry. The defendant operates as a retailer, not a manufacturer, and sells genuine OPPLE products. The sales revenue flows to OPPLE, and the defendant’s sales did not diminish OPPLE’s market share, meaning the two parties do not have a competitive relationship under competition law. Second, regarding the products in question, the items sold were genuine, and consumers could verify authenticity and apply for after-sales services using the brand information, barcodes, and QR codes on the individual or packaging boxes. The defendant’s act of removing codes does not inherently affect consumer rights. OPPLE’s distribution management system does not impact consumers, and OPPLE also lacked sufficient evidence to prove that this act negatively affected the company’s reputation or violated business ethics. Therefore, the court did not support OPPLE’s claim of unfair competition.

OPPLE appealed the decision.

Second Instance Court – the Wuhan Intermediate Court held that:

First, the Anti-Unfair Competition Law targets competitive actions, and the existence of a competitive relationship, especially in the same industry, is not the only prerequisite for determining whether a certain behavior constitutes unfair competition. With economic development and the innovation of business models, service divisions have become increasingly refined. Competition not only exists among operators engaged in identical services with direct substitution relationships, but also among operators with overlapping, interdependent, or otherwise related relationships. Therefore, the competitive relationship should be broadly interpreted. Here, OPPLE and the defendant, as operators in different stages of the same market, still have a competitive relationship.

Second, sale of products with removed QR codes or barcodes infringes upon OPPLE’s rights. Although OPPLE loses control over its products once they enter the market, if the condition of a product sold with permission changes, such as being damaged, continuing to sell it may cause consumers to misunderstand the product’s quality, harming OPPLE’s reputation. In this case, the product’s original packaging was damaged, and the QR codes set by OPPLE were removed, compromising the product’s integrity and leading to the loss of key information, which infringes upon OPPLE’s rights. The manufacturer’s QR code tracking system should be respected as long as it does not harm third-party interests.

Third, a sale of products with removed codes infringes on consumers’ rights. Although serial numbers or QR codes added by the manufacturer beyond national production standards are meant to track the distribution path of products, maintain pricing systems, and support business models, and are not directly related to production standards or quality assurance, removing the codes merely separates the product from OPPLE’s tracking system. As in this case, OPPLE still has ways to identify whether a product is genuine and must continue to provide warranty services for genuine products. However, from OPPLE’s evidence on requiring consumers to distinguish authenticity and after-sales service, selling products with removed QR codes is not conducive to protecting consumers’ right to know and obviously increases consumers’ time and costs for communication, thus infringing on their rights.

Finally, based on the above analysis, the defendant’s sale of products with removed QR codes or barcodes violates the second paragraph of Article 2 of the Anti-Unfair Competition Law. Although the defendant initially provided evidence showing that the products were sourced from OPPLE’s distributors, the packaging and pricing of products with removed codes were significantly different from those without removed codes. The defendant should have known that the products being sold had codes removed and is not exempt from liability even if they proved the products were legally obtained and identified the provider.

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 Brand Protection News

August 7, 2024

1. A couple who held shares in multiple operating entities maliciously attached themselves to the goodwill of the “Skechers in Chinese” mark, and the court applied punitive damages amounting to CNY 7 million

The Beijing High Court has issued a second-instance judgment regarding the review of the cancellation of the “EDISON and Design” mark with reg. no. 11027501. The case involved the plaintiff Edison Opto Corporation (“Edison”), the defendant CNIPA, and the third party Eaton Electrical Holdings Limited. The court upheld the registration of the disputed trademark.

Edison is the registrant of the “” mark with reg. no. 11027501, which is approved for use on products in Class 9, including “light-emitting diodes (LEDs).” In addition to the disputed trademark, Edison has also applied for the “” mark with reg. no. 3538213, the “” with reg. no. 11694379, and the “” mark with reg. no. 8126475, which are identical or similar to the disputed trademark, on Class 9 goods.

The second-instance court found that Edison had provided evidence showing the commercial use of the disputed trademark. Edison submitted trademark licensing agreements indicating that it had authorized Dongguan Edison Optoelectronics Co., Ltd. and Yangzhou Edison Optoelectronics Co., Ltd. to use the disputed trademark during the specified period. Purchase and sales contracts signed by these companies and third parties displayed the disputed trademark and the product name “LED module,” supported by bank receipts, invoices, etc. Screenshots from notarized WeChat articles from “Edison Optoelectronics” and the “Guangzhou International Lighting Exhibition” also showed the disputed trademark and related lighting products, with publication dates within the specified period, along with exhibition contracts and photos as evidence. Screenshots from notarized reports on relevant online media displayed the disputed trademark and LED lighting content. Special audit reports, product certificates, etc., also showed the disputed trademark. Despite the similarity between the disputed trademark and the “” mark, there was a distinction in the closing of the upper left corner of the letter “D,” and the marks shown in the evidence could be linked to the disputed trademark.

Considering all the evidence, it was proven that the disputed trademark had been promoted and sold on “LED modules” and other lighting products during the specified period. Although “LED module” is not a standardized product name, based on its function, usage, production department, sales channels, and consumer target, it belongs to the category of “light-emitting diodes (LEDs).” Thus, the evidence proved the genuine, lawful, and effective commercial use of the disputed trademark on “light-emitting diodes (LEDs).” Given that “light-emitting diodes (LEDs)” and the products for which the disputed trademark is approved, such as “light-emitting diodes, semiconductor components, photoelectric sensors, light dimmers (electrical),” belong to the same or overlapping classes in the CNIPA Goods and Services Classification, they constitute similar products. Therefore, the evidence supported maintaining the registration of the disputed trademark on all the products. Edison’s appeal was upheld by the court.

2. Court recognizes “Vienna Hotel in Chinese” as a well-known trademark, grants cross-class protection

The Guangdong High Court issued a final judgment in the trademark infringement dispute between Shenzhen Vienna International Hotel Management Co., Ltd. (“Shenzhen Vienna”) and Li. The court ordered Li to immediately cease the infringing activities and to pay Shenzhen Vienna a total of CNY 100,000 (USD14,000) in compensation for economic losses and reasonable expenses incurred in stopping the infringement.

In this case, Shenzhen Vienna’s registered trademark with reg. no. 7412838 is approved for services in Class 43, such as restaurants, hotels, bars, cafes, and accommodation (hotels, boarding houses), while the accused infringing goods include mattresses, pillows, bed frames, etc., which fall under Class 20 furniture goods. The two do not belong to the same goods or service items and differ in function, use, sales channels, and target consumers.

The second-instance court held that the no. 7412838 mark owned by Shenzhen Vienna consists of both graphic and textual elements, with the text “Vienna Hotel in Chinese” being the distinctive part. The accused mark “Vienna Hotel in Chinese” is identical to the distinctive part of the no. 7412838 mark. Li used the accused mark on goods that are not the same or similar to those for which Shenzhen Vienna’s well-known trademark with reg. no. 7412838 is approved. Considering the distinctiveness and reputation of the well-known trademark involved and the extent to which the relevant public overlaps, it can be concluded that the relevant public is likely to establish a considerable connection between the accused mark and Shenzhen Vienna’s well-known trademark. This association is sufficient to weaken the distinctiveness of the well-known trademark, falling under the circumstances of “misleading the public, causing possible damage to the interests of the registrant of the well-known trademark” as stipulated in Article 13(3) 3 of the Trademark Law, and also constitutes “other damage to the exclusive right to use a registered trademark” as stipulated in Article 57(7).

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Weekly China Brand Protection News

August 2, 2024

A couple who held shares in multiple operating entities maliciously attached themselves to the goodwill of the “Skechers in Chinese” mark, and the court applied punitive damages amounting to CNY 7 million

The Wenzhou Intermediate Court made a first-instance trademark infringement and unfair competition judgment between the plaintiff, Skechers U.S.A., Inc. II (“Skechers”), against the defendants Zhenjiang Sikaiqi (Sketchers in Chinese) Shoes & Apparel Co., Ltd. (“Zhenjiang Sikaiqi”), Hengfeng Zhuxuan Shoe Business of Wenling City (“Hengfeng”), Yitu Trading Co., Ltd. of Wenling City (“Yitu”), Jiang Zhuquan, Wenzhou Walaishen Shoes & Apparel Co., Ltd. (“Walaishen”), Jin Xuehong, and five other defendants. The court ordered the seven defendants to immediately cease trademark infringement and unfair competition activities and to jointly compensate Skechers for economic losses and reasonable expenses related to rights protection, totaling CNY 7 million (USD 970,887).

The infringing products, packaging boxes, tags, certificates, after-sales service commitment cards, promotional screens in stores, WeChat, and TikTok used the allegedly infringing marks “SHKFCELVS,” “SKECHERS,” “斯凯奇,” “”, “”, “”, “D’LITES”, “”, “” and several logos similar to Skecher’s registered trademarks.

The infringing products’ shoeboxes and certificates were labeled with the names and addresses of Zhenjiang Skechers and Walaishen, indicating their roles as manufacturers. Therefore, Walaishen was identified as the manufacturer of the infringing products. Hengfeng, operated by Jiang Zhuquan, sold the infringing products in its offline and online TikTok stores. Yitu operated Hengfeng as an offline store whose business scope includes shoe sales, with Jiang Zhuquan as the sole shareholder. Thus, Yitu jointly committed the infringement.

Jiang Zhuquan, as the controlling shareholder of Zhenjiang Sikaiqi, Walaishen, and Yitu, and the operator of Hengfeng, had a common intent to infringe and objectively collaborated in the production and sale of infringing products. Jiang Zhuquan and Jin Xuehong, being spouses, established various business entities such as Zhenjiang Sikaiqi and Hong Kong Sikaiqi Fashion (International) Co., Ltd., while Jin Xuehong established Sikaiqi Shoes & Apparel Group Co., Ltd. and participated in production activities, jointly infringing Skechers’ goodwill. They also received large payments through personal accounts, participating in infringement activities with the other companies.

The six defendants used “Sikaiqi Shoes & Apparel Group Co., Ltd.” and “Zhenjiang Sikaiqi Shoes & Apparel Co., Ltd.” without permission on infringing products, packaging boxes, tags, certificates, and promotional screens in stores, leading to public confusion and constituting unfair competition. The decoration of Skechers’ “D’LITES” series shoes had gained a certain level of influence through extensive promotion. The six defendants used similar decorations without authorization, causing public confusion and unfair competition.

Regarding the compensation amount, based on data obtained by the court, Skechers cited illegal business earnings of CNY 23 million as the basis for calculating compensation, with a profit margin of 10%. The six defendants’ profits from infringement were CNY 2.3 million (23 million × 10%), used as the basis for calculating punitive damages. Considering the defendants’ subjective intent, the circumstances of the infringement, and the significant losses caused to Skechers Company through extensive online and offline sales, the punitive damages were set at twice the profit amount. Thus, the six defendants were ordered to jointly compensate Skechers a total of CNY 7 million (USD 970,887) (CNY 2.3 million + CNY 2.3 million × 2 + CNY 100,000).

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Weekly China Brand Protection News

June 20, 2024

1. RMB 640 million Compensation Sets Record! Final Verdict in Favor of Geely’s Against WM Motor for Trade Secret Infringement

The appellants, Zhejiang Geely Holding Group Co., Ltd. and Zhejiang Geely Automobile Research Institute Co., Ltd. (“Geely”), along with the appellant, WM Motor Manufacturing Wenzhou Co., Ltd. (“WM Wenzhou”), and the appellees, WM Motor Technology Group Co., Ltd. (“WM Group”), WM Smart Mobility Technology (Shanghai) Co., Ltd. (“WM Smart Mobility”), and WM New Energy Vehicle Sales (Shanghai) Co., Ltd. (“WM”), were involved in a trade secret infringement dispute. Dissatisfied with the civil judgment made by the Shanghai High Court (“First Instance Court”) on September 5, 2022 (“First Instance Judgment)”, they appealed to the Supreme People’s Court (“SPC”).

On April 25, the SPC rendered a final verdict that overturned the First Instance Judgment, ordering WM to immediately cease disclosing, using, or allowing others to use Geely’s new energy vehicle chassis application technology and the related twelve sets of automotive chassis component drawings and digital model trade secrets. WM was also ordered to compensate Geely for economic losses amounting to RMB 6.4 billion (USD 896 million) and reasonable expenses of RMB 5 million (USD 700,000) incurred to prevent the infringement.

Since 2016, nearly 40 senior executives and technical personnel from Geely’s affiliated automobile companies have resigned and subsequently joined WM and its associated companies. Among them, 30 people left in 2016 and immediately joined WM. In 2018, Geely discovered that WM, with the aforementioned former employees as inventors or co-inventors, applied for 12 utility model patents involving the new energy vehicle chassis application technology and the related twelve sets of automotive chassis component drawings and digital model technology secrets (“Disputed Trade Secrets”), which they had accessed and mastered at Geely. Moreover, WM’s and its affiliated companies, without legitimate technological sources, quickly manufactured and launched the WM EX series electric vehicles, suspected of infringing Geely’s involved technical secrets. Geely filed a lawsuit with the Shanghai High Court, requesting that WM be ordered to stop infringing the involved trade secrets and to compensate for economic losses and reasonable expenses for rights protection, totaling RMB 2.1 billion (USD 294 million).

The SPC’s second instance judgment found that the trade secrets involved in this case possess substantial commercial value and that Geely had taken reasonable measures to maintain the confidentiality of these secrets, their acts warrant legal protection.

Regarding whether WM Motor infringed on Geely’s trade secrets, the second instance judgement found, based on the available evidence, that WM not only obtained all of Geely’s involved trade secrets through improper means but also illegally disclosed some of these secrets by applying for patents. Additionally, WM used all of the trade secrets to manufacture the chassis and chassis components for the WM EX series electric vehicles (including EX5, EX6, and E5). WM’s acts constitute an infringement on Geely’s trade secrets.

Regarding the determination of damages, the SPC stated:

Before the revised Anti-Unfair Competition Law came into effect in April 2019, punitive damages could not be applied, only compensatory damages. For the period prior to the revised 2019 Anti-Unfair Competition Law, the infringing profit, which is the compensatory damage amount, was calculated to be RMB 24.9 million (average price of EX series RMB 175,200/vehicle × sales from 2018 to April 2019 of 8,873 vehicles × profit margin of 20% × contribution rate of Geely’s involved trade secrets to the vehicle sales profit of 8%).

For the infringing profit from May 2019 onward (which is both the compensatory damage amount and the base for calculating punitive damages), the amount was calculated to be RMB 204 million (average price of EX series RMB 175,200/vehicle × sales from May 2019 to the first quarter of 2022 of 72,860 vehicles × profit margin of 20% × contribution rate of Geely’s involved trade secrets to the vehicle sales profit of 8%). Double the said amount equal to punitive damages (RMB 204 million × 2 = RMB 408 million), and adding the compensatory damages for the same period, the total is RMB 612 million (RMB 408 million + RMB 204 million ).

The combined total of these amounts results in WM Motor being ordered to compensate Geely for economic losses of RMB 604 million.

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Weekly China Brand Protection News

June 13, 2024

1. RMB 8 million in damages against infringers of the “Martian in Chinese” mark that is recognized as well-known

Recently, the Guangdong High Court made a second-instance judgment on the trademark infringement and unfair competition dispute case between Martian Kitchenware Co., Ltd. (“Martian”) and Zhongshan Jiamei Electric Technology Co., Ltd. (“Jiamei”), an individual Zhou, Guangzhou Shuaifeng Kitchen Appliance Co., Ltd. (“Shuaifeng”), Shenzhen Leman Kitchen Appliance Co., Ltd. (“Shenzhen Huoxingren”), and Beijing Siyuan Bio Technology Development Co., Ltd. (“Siyuan”). The court found that the defendants’ acts constitute trademark infringement and were ordered to immediately stop infringing on Martian’s Cited Marks. Zhou, Shuaifeng, Shenzhen Huoxingren, and Siyuan were ordered to compensate Martian a total of RMB 8 million (USD1.10 million), and Jiamei shall bear joint and several liability for compensation within RMB 5 million (USD689,000).

Cited Marks

Disputed Marks

The court found that first, since 2015, Martian’s “Martian in Chinese” mark has been recognized as a famous brand product in Zhejiang Province and a famous trademark in Zhejiang Province. From revenue to profits, advertising investment, honorary awards, various media reports, etc., it reflects the popularity and influence of the “Martian in Chinese” mark on integrated stove among consumers, which is enough to prove that when the “Martian Pioneer in Chinese” mark was filed, the “Martian in Chinese” mark had reached a well-known status in kitchen appliances, especially integrated stoves.

Second, the defendants argued that the “Martian Pioneer in Chinese” was a registered trademark and did not constitute infringement. The court held that, based on good faith and business morals, even if the defendants use a registered mark, considering well-known mark status provide better, stronger, and wider protection scope, the court can determine whether to recognize the Cited mark as well-known based on the circumstance of this case. The court found that it is necessary to recognize the Cited Mark as well-known mark in order to stop the defendants’ infringement activities.

Third, the “Martian Pioneer in Chinese” mark and the distinctive part of other “Martian Pioneer in Chinese” marks constitute a copy of the well-known trademark “Martian in Chinese.” Moreover, when comparing the disputed mark with the Martian’s Cited Marks, it contains an “M” figure with a circular background that is similar to Martian’s trademark and completely contains Martian’s trademark. The use of the disputed marks constitutes trademark infringement.

2. Unauthorized modified Casio watch constitutes trademark infringement

Recently, the Liaoning High Court concluded a second-instance trademark infringement and unfair competition dispute between CASIO Computer Co., Ltd. (“Casio”) and an individual Chen and an individual Han. The court found that Chen and Han infringed Casio’s trademark rights and ordered them to immediately stop their infringement of Casio’s Cited Marks and compensate or economic losses and reasonable expenses of RMB 600,000 (USD82,800).

Cited Marks

The court found that: First, Chen and Han sold non-original watch cases and watch straps (including watch buckles), as well as finished watches modified with non-original watch cases and watch straps (including watch buckles). However, when it promoted, offered to sell, and sold the allegedly infringing goods on platforms such as WeChat Moments, Bilibili, Little Red Book, Dewu, Xianyu, and online stores, it did not clearly inform the relevant consumers of the fact that the accessories used for modification were not original nor authentic.

Second, Chen and Han directly stated in some product names such as “Casio G-SHOCK Black Gold GA110/700/400/5600/GMA Ice Tough Glacier Transparent Case Strap,” which did not contain the word “modification.” In the “Purchase Instructions” of some product sales pages, it clearly stated that “Our store is all original and authentic,” and pasted a label with the words “Steady G-SHOCK” on the back of the finished watches sold. Even some of the accessories sold (including the modified finished watch accessories) directly carried the trademark in question, misleading the relevant public regarding the source of the products. Chen and Han’s acts constitute trademark infringement.

Third, Chen and Han promoted, offered to sell, and sold Casio high-end products that are modified from low-end Casio models, or modified Casio product styles into third-party product styles, or attached third-party logos, which damaged the goodwill of Casio’s cited marks. These acts constituted trademark infringement.

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