Weekly China Brand Protection News

February 20, 2025

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

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

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

Disputed Mark	Cited Mark

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

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

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

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

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

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

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

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

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

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