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Weekly China Brand Protection News – May 15, 2024


Weekly China Brand Protection News

May 15, 2024

1. 2023 Typical Cases of Trademark Opposition and Invalidation

The CNIPA has recently released 10 typical trademark opposition and adjudication cases in 2023, including:

  1. “Huangta Plaster in Chinese” trademark opposition case. The CNIPA found that the “Huangta Plaster” mark has a certain degree of fame after long-term use by the opponent. The opposed mark and the cited mark have the same text composition. The oppose mark’s designated services in Class 35 and the cited mark’s approved goods in Class 5 constituted as similar. Additionally, the opposed mark applicant and the opponent are from the same town. The registration of the opposed mark is likely to cause confusion to the relevant public.
  1. “A Mere Touch of Green in Chinese” trademark opposition case. The CNIPA found that the opponent’s “A Mere Touch of Green in Chinese” dance poetry drama has a high reputation and influence. The opponent, as a business operator in the same industry, applied for the opposed mark designating “music performances; providing musical and dance performance in performance venue” constitutes as bad faith filing of the opponent’s mark.
  1. “Slow Flying Angel in Chinese & MAN FEI ANGEL & Design” trademark opposition case. The opponent cited prior marks but the CNIPA did not find mark similarity. However, considering that “Slow Flying Angel in Chinese” is usually a friendly term for children with intellectual disabilities, autism, or learning difficulties, the CNIPA proactively applied Article 10(1)viii of the Trademark Law in finding that the use of the opposed mark on “spirits (beverages); liquor” and other goods is likely to have adverse social impacts.
  1. “Baishuifan in Chinese” trademark opposition case. The CNIPA found that prior to the application of the opposed mark, the “Baishuifan Radish in Chinese” mark had been used as a local agricultural product geographical indication product. Although the opposed party argued that the goods it sold came from that place, but it is not a local grower, so it is not reasonable for it to register the geographical indication name of local agricultural products as a trademark.
  1. “DEMARSON” trademark invalidation case. This case regulates the act of multiple related entities hoarding trademarks through hidden relationships, and improves the accuracy and deterrence of combating bad faith trademark hoarding.
  1. “Fenghua Beauty in Chinese” trademark invalidation case. This case clarifies the applicable requirements for well-known trademark recognitions, and moderately reduces the burden of proof based on the specific circumstances of the case. This case is not only in line with the dynamic changes in trademark fame, but can also reduce the cost of trademark protection and encourage trademark owners to pay attention to trademark management.
  1. “MASTRO’S STEAKHOUSE M & Design” trademark invalidation case. This case determined that the respondent’s application for registration of the disputed mark was in fact an application by a trademark agency using the camouflage of its affiliated company in exploiting a loophole. Such action violates Article 19(4) of the Trademark Law.
  1. “100,000 Whys in Chinese & 100,000 WHYS & Design” trademark invalidation case. This case comprehensively considered factors such as the historical origins, continued use, and influence of the well-known book brand “100,000 WHYS in Chinese” among the relevant public. This case provided an accurate determination as to whether the registration of a well-known book title as a trademark violates the distinctiveness clause, affirming the legitimacy and legality of the trademark owner’s use of the disputed trademark, and maintaining the validity of trademark rights.
  2. 9. 8 series cases of invalidations against “Platinum Selection in Chinese.” When applying Article 15(2) of the Trademark Law, the CNIPA examiners did not stick to the evidence materials in individual cases but conducted an overall analysis of related cases. Comprehensive consideration should be taken to achieve the unification of legal effects and social effects.

2. Quadruple punitive damages awarded for infringement after reaching settlement 

A Xiamen company is the registrant of the “Yanzhiwu in Chinese” and “Wanyan in Chinese”, and sued the defendant a Changzhou food factory who produced and sold products under marks “Yanzhiwo in Chinese” and “Wanyan in Chinese” for trademark infringement.

The first instance court found that the “Yanzhiwo in Chinese” mark used on the outer packaging of the accused infringing product and the plaintiff’s “Yanzhiwu in Chinese” mark were both composed of Chinese characters, with only one character difference between “wu” and “wo.” The pronunciations of them are highly similar, which constitutes similar marks. Given the plaintiff’s Yanzhiwu in Chinese brand enjoys a high reputation in the field of bird’s nest products, the accused infringing mark “Yanzhiwo in Chinese” can easily cause confusion among the relevant public, who may believe that the accused infringing product originates from the plaintiff or there are some specific relationships with the plaintiff. The “Wanyan in Chinese” logo used on the outer packaging of the accused infringing product is visually indistinguishable from the plaintiff’s “Wanyan in Chinese” mark, which constitutes as identical marks. Therefore, the defendant used marks identical with the plaintiff’s registered trademarks on the same goods without authorization, which constituted an infringement of the plaintiff’s trademark right, and should be liable to stop the infringement and compensate for damages.

Regarding whether punitive damages can be applied against a defendant and how the amount of damages is determined. The court verified that, the defendant was sued by the plaintiff in another case for the same infringements and they reached settlement. The settlement letter clearly stipulated that “the defendant promised not to produce or sell products that infringed the exclusive rights of the plaintiff’s registered trademarks of ‘Yanzhiwu in Chinese’ and ‘Wanyan in Chinese’” and voluntarily assumed liability for infringement. Under this circumstance, the defendant continued to carry out trademark infringement production and online promotion activities, and established a sales channel in cooperation with another agent, making it easy for the infringing products to be placed elsewhere. Combined with factors such as the defendant’s false statements in the lawsuit, it can be determined that its subjective intention to infringe is obvious and circumstance is serious. The plaintiff also voluntarily selects to first apply punitive damages, so punitive damages should be applied in this case.

The plaintiff claimed that the amount of RMB26,500 (USD3,663) in said settlement case between the two parties should be used as the base for punitive damages, and that the amount of punitive damages should be RMB100,000 (USD13,825) as quadrupled. Based on factors such as the intentionality of the defendant’s infringement, the moderateness of the compensation base, and the false statements, the first instance court supported the plaintiff’s claim that punitive damages should be quadrupled. The court specifically stated that the calculation method should be quadrupled by RMB26,500 and the total should be RMB106,000. The plaintiff only claimed RMB100,000, which is the plaintiff’s disposal of its own right and this court shall respect such claim.

In addition, regarding the final amount of compensation that the right holder should receive, in addition to punitive damages RMB100,000, it should also receive the base compensation RMB26,500 itself. At the same time, considering the plaintiff’s reasonable rights protection expenses, the court ordered the defendant to compensate the plaintiff for economic losses and reasonable expenses to stop the infringement, totaling RMB150,000.

The defendant was dissatisfied and appealed. After trial, the second instance court affirmed the compensation amount and affirmed the lower court’s decision.

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