Weekly China Brand Protection News

May 7, 2024

1. Michelin prevailed in a trademark infringement dispute involving the “Mizhilian in Chinese” mark

The Compagnie Generale des Etablissements Michelin (“Michelin”) owns the registered trademarks “MICHELIN” and “Michelin in Chinese.” The said trademarks had been recognized as well-known marks multiple times. Since 1900, Michelin has published the “Michelin Guide” for restaurants around the world, and the restaurants included in it are recognized as Michelin restaurants. In 2008, Michelin began to use “Mizhilian in Chinese” as the Cantonese translation of “MICHELIN” and has issued the “Mizhilian Guide in Chinese” for a long time. A catering company in Shanghai used the “Mizhilian in Chinese” logo during its business activities without authorization and promoted on its website: “My name is ‘Mizhilian in Chinese.’ In Hong Kong, ‘Mizhilian in Chinese’ means Michelin… …”. Its business scale has expanded rapidly, with 500 stores opened across the country in the past five years. Michelin then filed a lawsuit in court, claiming that this Shanghai catering company had infringed on its well-known marks. The first instance court held that Michelin’s “MICHELIN” and “Michelin in Chinese” trademarks are well-known trademarks, and “Mizhilian in Chinese” is the Cantonese translation of “MICHELIN.” The Shanghai catering company used the “Mizhilian in Chinese” logo without authorization that infringed Michelin’s trademark right. The court ordered the Shanghai catering company to stop the infringement and compensate Michelin RMB10 million (USD1.4 million). The Shanghai catering company appealed. The Hubei High Court found that when judging whether the relevant languages have a translation relationship, not only is it necessary to consider the corresponding language habits and regional differences, but also to respect the current market situation. Foreign trademarks can have multiple different Chinese translations. The “MICHELIN” trademark can be translated as “Michelin in Chinese,” but Michelin also translated it into Cantonese as “Mizhilian in Chinese” and issued the “Mizhilian Guide in Chinese.” After long-term use and publicity, “Mizhilian in Chinese,” “MICHELIN” and “Michelin in Chinese” have formed a stable language correspondence. The Shanghai catering company claimed in its promotion that “’Mizhilian in Chinese” means Michelin in Hong Kong dialect and that it deliberately took advantage to the goodwill of the “MICHELIN” and “Michelin in Chinese” trademarks and intentionally caused consumer confusion. The appeal was dismissed, and the lower court’s decision affirmed.

2. A judicial punishment case for bad faith litigation involving the “Chang Gao Dian Xin in Chinese” mark

Houfu Qitian Digital Technology Co., Ltd. (“Houfu Qitian”) was approved to register the 12 “Chang Gao Dian Xin in Chinese” trademarks in September and October 2022. In November 2022, Houfu Qitian and its affiliated company Changgao Dianxin International Trading Co., Ltd. jointly filed a lawsuit in court, claiming that Changgao Dianxin Technology Co., Ltd.’s use of the “Chang Gao Dian Xin” logo constituted trademark infringement and unfair competition. The Changsha Intermediate Court found that Houfu Qitian has applied for registration of 129 trademarks in just 8 months since its establishment in March 2021, covering 24 classes, and it cannot prove that it has the intention to use. After Changgao Dianxin Technology Co., Ltd. announced it will change its company name due to its listing, Houfu Qitian immediately applied to register the 12 “Chang Gao Dian Xin in Chinese” trademarks and filed a lawsuit demanding a huge compensation of RMB10 million (USD1.4 million). During the trial, all 12 “Chang Gao Dian Xin in Chinese” trademarks have been declared invalid by the CNIPA. The first instance court held that Houfu Qitian and its affiliated company Changgao Dianxin International Trading Co., Ltd. knew that the trademark involved in the case was registered through improper means, but still maliciously filed a trademark lawsuit to demand huge sums of money for the purpose of obtaining illegal benefits. Its action violated the principle of good faith and filed the lawsuit in bad faith and abused its intellectual property rights. The court fined Houfu Qitian and its affiliated company RMB100,000 (USD14,135). Houfu Qitian and Changgao Dianxin International Trading Co., Ltd. petitioned for reconsideration. The Hunan High Court dismissed the petition and affirmed the first instance decision.

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