Weekly China Brand Protection News

December 19, 2024

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

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

Disputed Mark

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

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

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

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

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

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

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

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

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