Weekly China Trademark News Updates

April 4, 2023

1. Nokia was awarded RMB 3 million in compensation based on its famous but discontinued product name and decoration

The Guangdong High Court recently concluded a final judgment on a trademark infringement and unfair competition case between Nokia Corporation (“Nokia”) and Shenzhen Nuoyaxin Technology Group Co., Ltd. (“Nuoyaxin”). The court ordered Nuoyaxin to compensate Nokia for economic losses and reasonable expenses totaling RMB3 million (USD 435,951).

Regarding whether the alleged infringing acts constitute trademark infringement, the court found that: first, Nuoyaxin used “,” “,” “,” and “” marks on the alleged infringing products, websites, WeChat accounts, Weibo, and exhibition businesses activities. Said marks constituted identical or similar goods with approved goods under Nokia’s Cited Mark. Second, the distinctive parts of the “” and “” marks were “Nuoyaxin” and “NOAIN,” which constitute similar with “Nokia in Chinese” and “NOKIA” in Nokia’s registered trademark “” in terms of font, letter, letter composition, font structure, and overall word orders, and it was likely to cause confusion among the relevant public. The distinctive part of the “” mark is “NOAIN,” which was only one letter different from the distinctive part of Nokia’s “NOKIA” mark. Moreover, the two marks constitute similar in terms of letter composition, visual effects and pronunciations. The “” mark was similar to Nokia’s “NOKIA” mark in terms of composition, font, and overall appearances, which was likely to cause confusion among the relevant public. Combining the fact of Nokia’s highly famous trademark, Nuoyaxin’s acts shall be held as infringing on Nokia’s trademark right. Due to the characteristics of mobile phone products and the acceptance of new mobile phone products by relevant consumers, it is determined that compared with traditional industry products, mobile phone gateway products will not lose their high market popularity and influence in a relatively short period of time. Therefore, the discontinuation of the cited products was insufficient to negate the fame of its product name and decoration. Consider that Nokia’s “NOKIA” mark had been recognized as a well-known mark, under the circumstances that the trademark and the goods were basically identical, there was direct influence regarding the trademark’s fame and the product name. Accordingly, existing evidence can prove that prior to the alleged infringing acts, the name and decoration of the cited products “Nokia in Chinese 5310” fell into “product name and decoration with certain influence” under the Anti-Unfair Competition Law. Second, Nuoyaxiun’s manufacturing and sales of “Nuoyaxin in Chinese 5310i” cell phone was similar to Nokia’s  “Nokia in Chinese 5310” series phones in terms of Chinese characters, English letters, and numbers. In terms of mobile phone decoration, the two products were highly similar in terms of mobile phone shape, body color, decorative strips, overall layout and design style of buttons, which would cause confusion among relevant consumers when they pay general attentions to the two products. What’s more, Nuoyaxin knew about Nokia’s fame in the mobile phone industry but still manufactured and sold “Nuoyaxin 5310i” products that were similar to Nokia’s “Nokia in Chinese 5310” series phones in terms of product name and decoration,mixed up “Nuoyaxin 5310i” and “Nokia in Chinese 5310” in its promotions, and prominently displayed “Classic Remake” in its promotions. These acts caused confusion among the relevant public to believe that “Nuoyaxin 5310i” products and Nokia’s “Nokia in Chinese 5310” products had special associations. Nuoyaxin had subjective bad faith in free riding Nokia’s fame. Accordingly, it should be determined that Nuoyaxin’s manufacture and sale of the “Noah 5310i” mobile phone constitutes unfair competition.

2. The registrant’s failure to use its registered trademark allows alleged infringers to escape from paying compensation for economic loss

In March 2023, the Shandong High Court concluded a trademark lawsuit between Jiyuan Xinyuan Beverage Co., Ltd. (“Xinyuan Beverag”), Beijing Yanjing Beverage Co., Ltd. (“Yanjing Beverage”), Beijing Yanjing Beer Group Co., Ltd. (“Yanjing Beer”), etc. The court reversed the first-instance judgment that ordered Yanjing Beverage to compensate Xinyuan Beverage for economic losses and reasonable expenses of stopping the infringement totaling RMB300,000 (USD43,579), and ordered Yanjing Beverage and Yanjing Beer to compensate Xinyuan Beverage for the reasonable expenses of RMB40,000 (USD5,810) paid to stop the infringement.

On July 28, 2013, Xinyuan Beverage registered the “” mark with reg. no. 10759984 in class 32 for mineral water (beverage), water (beverage), etc. Yanjing Beverage admitted that it produced the accused infringing products, that is, “Yanjing Super Body Energy in Chinese” drinks. The bottle sticker of the accused infringing products was marked with the “Yanjing” trademark but in a small font, and “Super Body Energy in Chinese” was used in a prominent position in the middle of the bottle sticker, there was a lightning pattern between “Super Body in Chinese” and “Energy in Chinese,” and there was a “TM” sign on the upper right corner of “Super Body Energy in Chinese.”

The court found that the accused infringing products and the approved goods of consumer water (beverage), etc. of the cited mark constituted similar. The accused infringing products prominently used “Super Body in Chinese” that was identical to the cited mark. The acts of Yanjing Beverage and Yanjing Beer constitute using identical mark with Xinyuan Beverage’s registered trademark on similar goods, which was likely to cause confusion among the relevant public as to the source of goods, or was likely to cause the relevant public to believe that there were exiting associations between the source of the cited mark. These acts infringed upon Xinyuan Beverage’s trademark right. Although the accused infringing products were labeled with “Yanjing in Chinese” mark, it was not enough to influence the trademark infringement findings.

Regarding civil liability issues, the court cited Article 64 of the Trademark Law which stipulates that where a registered trademark registrant is requesting compensation, where the accused infringer rebut that the registrant failed to use the registered trademark, the court can request the registrant to provide evidence of actual use of the registered trademark three years prior to the requested date. If the registrant cannot provide actual use of its registered trademark three years prior to the requested date and cannot prove other losses due to the infringing acts, the accused infringer shall not be liable for compensation. In this case, Xinyuan Beverage claimed its exclusive trademark right over the “Super Body in Chinese” mark with reg. no. 10759984, but the actual use of such mark was an altered-font version of the “Super Body in Chinese” mark “.” Such altered-font was another registered trademark of Xinyuan Beverage. Thus, Xinyuan beverage’s evidence cannot be seen as actual use of its registered trademark. Xinyuan Beverage also used the simplified Song font style “Super Body Energy in Chinese” in the form of a transparent buoy in the center of its product bottle, but the font size of the four characters “Super Body Energy in Chinese” was exactly the same, and the word “Super Body in Chinese” was not prominently used. This method of use cannot be regarded as the use of the registered trademark involved. Therefore, the evidence submitted by Xinyuan Beverage cannot prove that it has actually used the trademark involved in the previous three years. Yanjing Beverage and Yanjing Beer did not have to bear the liability of compensating for their economic losses. However, since the acts of Yanjing Beverage and Yanjing Beer violated the trademark rights involved in the case, they should still compensate Xinyuan Beverage for the reasonable expenses paid to stop the infringement such as notarization, entrusted lawyers, etc. The court determined that Yanjing Beverage and Yanjing Beer should compensate Xinyuan Beverage for reasonable expenses of RMB40,000 (USD5,810) to stop the infringement.

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