Weekly China Trademark News Updates

April 25, 2023

Summary of the Supreme People’s Court’s Annual Trademark Cases

On April 23, 2023, the Supreme People’s Court released the summary of its annual intellectual property cases, among them, there are civil and administrative trademark cases as follows.

(1) Civil trademark cases

 A trademark owner shall not prohibit others from legitimate use of the place names in a trademark

In the retrial, the applicants Xiaoling Wu, Wenping Liu and the respondent Zou Xue’e Tofu Workshop in Nanmiao, Yuanzhou District, Xue’e Zou, Gensheng Gao Vegetable Stall in Chengxi, Yuanzhou District, Gao Gensheng, Yu Zhulan Bean Products Stall in Chengxi, Yuanzhou District, and Yu Zhulan trademark infringement and unfair competition case ((2021) Zui Gao Fa Min Shen No. 7933), the Supreme People’s Court pointed out that if a registered trademark contains a geographical name, the trademark owner shall not prohibit business owners within the area marked by the geographical name from using the geographical name in good faith and legitimately.

Prior administrative punishment does not affect the determination of civil infringement liability

In the retrial trademark infringement and unfair competition case between Nanfang Pump Co., Ltd. and the respondent Yongan Nanfang Science and Technology Pump and Valve Business Department (“Nanfang Pump) ((2021) Zui Gao Fa Min Shen No. 6419), the Supreme People’s Court pointed out that in a trademark infringement case, even if the alleged infringement had been subject to administrative punishments and its evidence can reflect the fact and actual implementation of the infringement, the people’s court shall consider the interest party’s claims and relevant evidence in the infringement case to determine the actual circumstances of the infringement and its corresponding infringement liability.

Application of the statute of limitations in trademark infringement cases

In the said “Nanfang Pump Industry” trademark infringement case, the Supreme People’s Court pointed out that if there was no evidence to prove the starting time of the statute of limitations, and the accused infringer has not raised a defense against the statute of limitations, the people’s court should not directly apply Article 18 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Dispute Cases which stipulates that the accused infringer does not need to bear compensation liability.

(2) Administrative trademark cases

One should reasonably avoid other people’s prior trademarks when applying for a trademark

In the retrial case, the applicant Shenzhen Xiangli Arts and Crafts Furniture Co., Ltd., the respondent Beijing Hongwen Boya Traditional Hardwood Furniture Co., Ltd., and the appellant of the second instance, the CNIPA, an administrative dispute over a request for invalidation of trademark rights ((2022) Zui Gao Fa Xing Zai No. 1) the Supreme People’s Court pointed out that the interest parties who knew of the prior trademarks used by others based on their business operations but did not reasonably avoid them, and still applied for the disputed marks that were similar to other trademarks on identical or similar goods that violated the principle of good faith. Such disputed marks shall not be registered.

Determination of the distinctiveness of English trademarks

In an administrative trademark rejection appeal dispute between the retrial applicant Nuoausi and the respondent the CNIPA ((2022) Zui Gao Xing Zai No. 4), the Supreme People’s Court pointed out that to determine whether an English trademark is distinctive, it should consider the common understanding of the relevant Chinese public for the goods or services designated by the mark as the standard, judging from the element and meaning of the overall composition, considering the degree of association between the mark itself and the goods or services designated for use, and whether it can play a role in distinguishing the source of goods or services when used.

The effect of administrative regulations on judging similarity of goods and services

In the trademark invalidation retrial case between the applicant Hebei Huatuo Pharmacy Pharmaceutical Chain Co., Ltd., the respondent Huatuo Sinopharm Co., Ltd., and the first-instance defendant the CNIPA ((2021) Zui Gao Xing Zai No. 76), The Supreme People’s Court pointed out that when determining whether goods and services are similar, it is necessary to consider the state’s management regulations for the manufacture, sales and related services of such goods in order to maintain the relevant market order, and consider the effect of such regulation on goods sales channels, service methods, and impact on consumer groups, etc. The situation of long-term stable market order formed by such regulations should be taken as an important consideration.

Determination of a registered trademark that damages the name right of foreign natural persons

In the trademark invalidation retrial case between the applicant Manolo Blahnik, the respondent the CNIP and, Yuzhou Fang ((2021) Zui Gao Xing Zai No. 75), the Supreme People’s Court pointed out that foreign natural persons such as well-known designers use and promote their name as the brand of the product. Before the application for registration of the disputed trademark, its name has a certain popularity among the relevant public in mainland China, the disputed mark completely contains the name of the natural person, and the relevant public believes that the disputed mark referred to the natural person, or that the goods marked with the disputed mark were authorized by such natural person, or that there were special association with that natural person, such disputed mark’s registration damaged the natural person’s name right.

The effect of the trademark registrant’s earlier trademarks on the approval and registration of its later trademarks

In the trademark invalidation retrial case between the applicant Guangdong Goodwife Technology Group Co., Ltd. and the respondent CNIPA and Foshan Kaidaneng Enterprise Management Consulting Co., Ltd. ((2022) Zui Gao Xing Zai No. 3), the Supreme People’s Court pointed out that whether a trademark can be registered should be judged in accordance with the relevant provisions of the Trademark Law, and the prior well-known trademark owned by the trademark registrant cannot be the obvious reason for the registration of the later-filed trademarks.

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