Weekly China Brand Protection News

March 13, 2024

1. The use of the right holder’s trademark on a mobile map is a trademark use

Recently, the Guang’an Intermediate Court concluded a trademark infringement dispute between Sichuan Jibang Trading Co., Ltd. (“Jibang”) and Yuechi County Yumin Gas Station (“Yumin Gas Station”). The court determined that Yumin Gas Station’s use of the “Zhongchuan Petroleum in Chinese” logo on the mobile map constituted a trademark infringement of “Zhongchuan Petroleum and Design” with reg. no. 21415831 of Jibang. The use should be stopped, and Yumin Gas Station should compensate Jibang for economic losses and reasonable expenses paid to stop the infringement totaled RMB50,000 (USD7,000).

Cited Mark

The court found that: First, Yumin Gas Station used the name “Zhongchuan Petroleum Yumin Agricultural Machinery Gas Station” in the mobile phone map to attract customers through the mobile phone map. Car owners often use mobile phone maps for navigation when driving, and passing vehicles can know where to refuel through the mobile phone map. At the same time, when refueling, car owners often want to have guaranteed oil quality and choose branded gas stations to refuel. The prominent use of the words “Zhongchuan Petroleum in Chinese” in the name plays a role in indicating the source of goods or services. Therefore, the use of “Yumin Gas Station” is a trademark use.

Second, the “Zhongchuan Petroleum in Chinese” used by Yumin Gas Station on the mobile map and the registered trademark of Jibang have the same composition and arrangement order, and can be regarded as the same trademark. Yumin Gas Station did not provide the time when it applied for trademark registration and the time when it used the registered trademark at the beginning of its establishment or earlier than Jibang. It used the “Zhongzhou Petroleum in Chinese” or “Zhongchuan Petroleum in Chinese” logo and had a certain impact, which was not in compliance with the requirements. It did not fulfill the elements of prior use defense. Yumin Gas Station used the same trademark as the registered trademark on the same goods without the permission of the trademark registrant, which infringed the trademark right of Jibang, and it should bear corresponding legal liability.

2. Bosch prevailed in a trademark infringement and unfair competition lawsuit

Recently, the Sichuan High Court concluded a second instance lawsuit for trademark infringement and unfair competition against Robert Bosch Co., Ltd. (“Bosch”), Bosch (China) Investment Co., Ltd. (“Bosch China”), Sichuan Bosch New Ventures Trading Co., Ltd. (“Sichuan Bosch”), Chengdu Yiluxing Petrochemical Co., Ltd. (“Yiluxing”), an individual Zheng, an individual Sun, Chengdu Maxto New Energy Lubricating Materials Co., Ltd. (“Maxto”). The court found that the defendants’ behaviors constituted an infringement of Bosch’s and Bosch China’s trademarks “BOSCH”, the design “”  and “Bosch in Chinese.” The court ordered that Sichuan Bosch, Yiluxing, and individuals Zheng and Suns should immediately stop infringement and jointly compensate the plaintiff for economic losses of RMB3 million (USD417,000). As a co-manufacturer of the accused infringing products, Maxto should be jointly and severally liable for RMB 150,000 (USD20, 870).

Cited Marks

The court found that: First, Sun and Zheng, as natural persons, implemented the use of “Bosch Xinchuang”, “” and “Bosch Zhenyu” by establishing Sichuan Bosch, Yiluxing, Yongxing Business Department, and Yuanji Business Department. The act of using the accused infringing marks and producing and selling the accused infringing products has combined to form an intrinsically linked joint infringement. Maxto, together with Sun and Zheng, Yiluxing, and Sichuan Boschs jointly produced and sold some of the accused infringing products. The above acts all have the function of identifying the source of goods and are trademark uses.

Second, compared the allegedly infringing mark “” with the cited mark “,” both are circular graphic with the same structure. Only the direction of the graphic within the circle is different. They constituted similar. “Bosch Xinchuang in Chinese” and “Bosch Zhenyu in Chinese” are similar to the trademark “Bosch.” The Cited marks has formed a corresponding relationship with “Bosch in Chinese” through its use and promotion in China. Therefore, the use of “Bosch Xinchuang in Chinese” and “Bosch Zhenyu in Chinese” will also cause confusion among the relevant public about the source of the goods.

Third, the goods approved for use by the plaintiff’s trademark and the accused infringing products are both in motor vehicles and are related in terms of consumer targets, sales channels, etc. The relevant public generally believes that they have a specific connection and could easily cause confusion. They constitute similar goods. The defendants’ behaviors constitute trademark infringement.

In addition, the word trademarks “Bosch in Chinese” and “BOSCH” have a high reputation in their fields through the long-term operation of Bosch and Bosch China. Bosch Xinchuang was registered in 2016. As a competitor in the same field, it registered “Bosch in Chinese” as part of its corporate name and used it in its business activities. Its registration was enough to confuse the relevant public and to lead the public to mistakenly believe that the allegedly infringing products it produced and sold originated from Bosch or Bosch China, or believe that there was a specific connection with Bosch or Bosch China. Their acts constitutes unfair competition.

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