Weekly China Trademark News Updates

April 13, 2021

1. Selected CNIPA administrative enforcement guiding cases

Case 1: Dun & Bradstreet trademark infringement

In March 2019, Shanghai Huaxia Dun & Bradstreet Information Consulting Co. Ltd., (“Huaxia DUNS”) filed a trademark infringement complaint with the Shanghai Chongming District Market Supervision Administration (“MSA”) against Shanghai Zhangyuan Information Technology Co., Ltd. (“Zhangyuan”). The Dun & Bradstreet Corporation (“DUNS”) registered “Deng Bai Shi in Chinese (邓白氏),” “Deng Bai Shi Bian Ma in Chinese(邓白氏编码),” and various trademarks in China in Classes 35 and 36 for services of business information agency, providing market information, providing credit evaluation, etc. DUNS authorized Huaxia DUNS to use its registered trademarks to conduct business in China. Zhangyuan was a former DUNS franchise service provider who knew of the “Deng Bai Shi in Chinese (邓白氏)” mark and other marks but still signed a service contract with Baidu to promote its DUNS application agency services through Baidu keywords. At the time this case went to trail, Zhangyuan collected a total of RMB 179,991 (USD 27,500) service fees from 8 companies.

The MSA found that Zhangyuan used identical or similar trademarks to DUNS’s trademarks that were likely to cause confusion to the relevant public, infringed upon DUNS’s trademark right, and ordered Zhangyuan to immediately stop infringing activities and issued a fine of RMB 539,730 (USD 82,400).

Case 2: Asics “Tiger” trademark infringement

In January 2018, the Beijing Fengtai MSA (“Fengtai MSA”) found that the respondent Beijing Hongyuanlide Business Trade Co., Ltd. (“Hongyuanlide”) sold sneakers using Asics’s “Tiger” series trademarks without authorization. Fengtai MSA further found that Hongyuanlide signed a franchise contract with Quanzhou Aishikeshi Sports Equipment Co., Ltd. (“Quanzhou Aishikeshi”) as an agent to sell Asics “Tiger” series sneakers. During the Fentai MSA investigation, Hongyuanlide claimed that it did not know that the disputed sneakers were infringing goods and should be indeminified. Fengtai MSA found, however, that not only Quanzhou Aishikeshi and Hongyuanlide shareholders overlapped, but Quanzhou Aishikeshi also applied for trademarks similar to Asics’s registered trademarks but the applications were refused for registration by the CNIPA. Accordingly, Hongyuanlide’s actions amounted to intentional violation of the relevant laws and regulations because Hongyuanlide either actually knew or should have known the disputed sneakers were infringing goods, but still signed an agency deal with Quanzhou Aishikeshi to sell the disputed sneakers extensively. And upon Fengtai MSA’s findings of its infringing activities, Hongyuanlide intended to dodge from administrative penalty by claiming itself as an authorized agent. Fengtai MSA concluded that the indemnification clause could not apply to Hongyuanlide, and ordered Hongyuanlide to immediately cease all infringing activities. Fengtai MSA confiscated 6,687 pairs of sneakers and issued a quintuple fine of RMB 55.7 million (USD 8.5 million).

2. The Beijing IP Court held a press conference regarding trademark refusal appeal involving “deceptive” applications

On March 31, 2021, the Beijing IP Court held a press conference regarding trademark refusal appeal involving “deceptive” applications under Article 10(1)(vii) of the Chinese Trademark Law. In the past six years, more than half of all cases tried were trademark administrative disputes, and among them, trademark refusal appeal took the largest share at about 30,000 cases. One category of all trademark refusal appeals was trademarks refused applying the “deceptive” article, which accounted 3.1% of all trademark administrative disputes. In the last three years, the number of cases involving the “deceptive” article were 200 cases, 508 cases, and 374 cases, respectively. The court upheld the CNIPA’s decision 81.3% of the time. These refused trademarks had discrepancies between the mark itself and either the features of the goods, or the business features of the services. Some marks even expressly or impliedly “embedded” specific terms that may not have matched the goods’ quality or the origin of the goods.

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