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Weekly China Trademark News Updates – April 27, 2021

2021-04-27

Weekly China Trademark News Updates

April 27, 2021

1. The Supreme People’s Court and the Beijing High Court issued 2020 intellectual property typical cases

On April 22, 2021, the Supreme People’s Court held press conference and released the People’s Court’s Intellectual Property Protection Plan 2021 to 2025, 2020 Top 10 Annual Intellectual Property Cases, and 2020 50 Intellectual Property Typical Cases. On the same day, the Beijing High Court also released its top 10 typical cases. We have selected the following cases for your reference.

a. “PENFOLDS in Chinese” recognized as an unregistered well-known trademark

Southcorp Brands Pty Limited (“Southcorp”) sued Huaian City Huaxia Manor Brewing Co., Ltd. and Hangzhou Zhengsheng Trading Co., Ltd. for infringing its registered trademark right for “PENFOLDS” and its right to the unregistered well-known mark for “PENFOLDS in Chinese.” The court found that Southcorp’s “PENFOLDS in Chinese” mark constituted as an unregistered well-known mark. Meanwhile, the defendants’ use of the “Penfunils” marks constituted as a similar mark to Southcorp’s “PENFOLDS” mark in terms of letter composition, order, and pronunciation. The court held that the defendants infringed upon Southcorp’s rights and ordered the defendant to compensate Southcorp’s economic lost and reasonable enforcement costs of RMB 1 million (USD 154,100).

The case number is (2018) Sue 01 Ming Chu No. 3450.

b. Michelin won in a trademark infringement retrial

Compagnie Generale Des Etablissements Michelin (“Michelin”) sued Ningbo Jaiqi Handicraft Co., Ltd. (“Jaiqi’) for trademark infringement. The Guangdong High Court found that the only differences between Micheline’s Cited Marks was its gestures, the rest of Michelin Man’s characteristics were identical, which suggested that the Michelin Man’s characteristics were the heart of its Cited Marks’ distinctiveness. Through long-term promotion and use, the Michelin Man’s characteristics grew more prominent and triggered the relevant public to associate Michelin upon seeing the Michelin Man.

Cited Marks

When comparing the disputed cartoon character with the Cited Marks, although the disputed cartoon character only had a smiling face, the component and details of the smiling face were nearly identical with the Cited Marks’ characteristics. Considering Michelin Cited Marks’ distinctiveness and fame, such smiling face was likely to cause the relevant public to associate the Michelin Man image presented in the Cited Marks and cause confusion. Thus, disputed smiling face shall be deemed as similar to the Cited Marks. Additionally, the disputed inflatable doll also closely reassembled the Michelin Man’s characteristics and shall be deemed as similar with the Cited Marks. The court concluded that Jaiqi infringed upon Michelin’s trademark rights and ordered compensation for economic loss and reasonable legal costs of RMB 100,000 (USD 15,416)

The case number is (2019) Yue Ming Zai No. 44.

c. The “YEEZY” mark was recognized as an influential trademark on shoes related goods

Mascotte Holdings, Inc., (“Mascotte”) entrusted by the famous American singer and producer Kayne West, filed an invalidation against the “YEEZY” mark with Reg. No. 11161428 (“Disputed Mark”) owned by Xiamen Yezhi Trading Co., Ltd. (“Yezhi”). The Beijing High Court as a second instance court held that the Disputed Mark constituted as using unfair means to preemptively register other’s prior used mark that had certain influence, and damaged Kanye West’s name right.

Disputed Mark

The Beijing High Court found that the mark “YEEZY” constituted as a prior used mark that had certain influence prior to the Disputed Mark’s application date. Mascotte submitted large amount of promotion materials and media reports as evidence proving that the “Nike Air Yeezy” shoes, as a collaboration product between Kanye West and Nike, Inc., had obtained relatively high fame prior to the Disputed Mark’s application day. Kanye West was a well-known music producer and rapper and “YEEZY” was his alias and nickname. His popularity had expanded from music and entertainment to shoes and other fields. The Disputed Trademark was registered in connection with shoes, clothing, socks, and other goods, which would easily confuse the relevant public that the goods bear the Disputed Mark was licensed or had certain association with Kanye West. Accordingly, the registration of the Disputed Mark damaged Kanye West’s name right.

The case number is (2019) Jing Xing Zhong No. 3273.

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