Weekly China Trademark News Updates

August 10, 2021

1. Additional document is required when requesting Well-Known Mark protection from Sept. 1

On August 6, 2021, the Trademark Office of the CNIPA issued a notice requesting that, from September 1, 2021, parties requesting well-known marks protections in opposition and invalidation actions must submit, along with the arguments of grounds, an Undertaking of Good Faith for Requesting Well-Known Marks Protection, signed and sealed by the interested party and its trademark agency and agent. The quintessential part of the content reads as follows:

1. We understand the relevant provisions of the Chinese Trademark Law, Regulations on the Implementation of the Chinese Trademark Law, Regulations on the Recognition and Protection of Well-Known Marks, and other laws and regulations on the recognition and protection of well-known marks, and have submitted materials as requested to follow the principle of good faith.
2. We guarantee that the relevant information and evidentiary materials in the opposition and invalidation documents are true, accurate, and complete, and there are no false circumstances such as forgery, alteration, concealment of evidence, instigation, bribery, and coercion of others to give false testimony.
3. We guarantee that there are no dishonest acts such as malicious collusion with the adversary, and no other acts of fraudulently obtaining protection of well-known trademarks by improper means.

Recently, many CNIPA issued documents are related to well-known marks. Among them, one of CNIPA’s replying letter to a suggestion raised in the National People’s Congress session specifically mentioned, “Currently, the CNIPA is organizing well-known marks information that has been administratively recognized and used continuously over the years, striving to establish and improve the well-known marks database, … which will, first, be opened to trademark administrative law enforcements to support law enforcement in various places, and will be opened to the public in a later time.” Meanwhile, the draft of the “Regulations on the Recognition and Protection of Well-known Marks” will be revised and promulgated as soon as possible.

Here are additional news regarding the new well-known mark protection requirements in Chinese:

http://sbj.cnipa.gov.cn/tzgg/202108/t20210806_333421.html#

https://www.cnipa.gov.cn/art/2021/7/27/art_516_166276.html?xxgkhide=1

https://www.cnipa.gov.cn/art/2021/7/27/art_516_166274.html?xxgkhide=1

2. Wrigley obtained a well-known mark recognition and successfully invalidated the “Yida Jiebai” trademark used on toothpaste and other products

Guangzhou Qiancai Cosmetics Co., Ltd. (“Qiancai”) was assigned the “Yida Jiebai” trademark on August 20, 2010. The trademark was filed on September 5, 2005 and approved on May 28, 2009 in class 3 “soap; toothpaste; shampoo; body lotion; cosmetics; washing powder; detergent” goods. On November 14, 2016, Wrigley cited its “Yida” (Extra in Chinese) to file an invalidation to the Trademark Review and Adjudication Board (“TRAB”) against the disputed trademark.

The original TRAB found that the disputed trademark’s registration violated Article 13 of the Chinese Trademark Law 2001, and invalidated the disputed trademark. Qiancai, unsatisfied, appealed to the Beijing Intellectual Property Court and the Beijing High Court successively.

Recently, the Beijing High Court made a final judgment and concluded that the evidence submitted by Wrigley can prove that the cited trademark has been continuously promoted and used by Wrigley before the filing date of the disputed trademark and has been well known among the relevant public on “non-medical chewing gum” goods. Both the disputed trademark “Yida Jiebai” and the cited trademark contained the word “Yida” and were similar in terms of composition and pronunciation, so the disputed trademark constituted a copy or imitation of the cited trademark. Products such as “toothpaste; soap” approved for use under the disputed trademark have a certain relevance to the “non-medical chewing gum” goods cited by Wrigley. Considering that the cited trademark was not an inherent term in Chinese, its distinctiveness was high, the registration of the disputed trademark was sufficient to confuse the relevant public to believe that the disputed trademark and the cited trademark had a considerable degree of association, which may damage the interests of Wrigley.

Although Wrigley filed the invalidation after five years from the registration date of the disputed trademark, there were provisions in the Chinese Trademark Law for the time limit for filing invalidation. “For malicious registration, the owner of a well-known trademark is not subject to the five-year time limit.” The evidence submitted by Wrigley can prove that the cited trademark had reached a well-known status on the “non-medical chewing gum” goods before the application of the disputed trademark was filed. The original registrant of the disputed trademark should be aware of Wrigley’s cited trademark, and the application for registration of the disputed trademark completely contains the cited trademark, which could hardly be considered as to have a subjective goodwill. Therefore, Wrigley’s invalidation of the disputed trademark should not be subject to the five-year time limit.

In summary, the Beijing High Court found that the registration of the disputed trademark violated Article 13 of the Trademark Law 2001, and affirmed the first instance court’s decision.

3. Reversal of the second instance trial found Ralph Lauren not infringing

Guangzhou Aichi Leather Co., Ltd. (“Aichi”), the owner of the “POLO” mark with reg. no. 3301575 in class 18 “wallets, school bags, small wallets, handbags, travel bags (cases), etc.”, sued Ralph Lauren to the Chaoyang People’s Court of Beijing, requesting an order to stop the infringement and compensate for economic losses and other legal expenses.

The Chaoyang People’s Court of Beijing found that Ralph Lauren’s prominent display or independent use of “POLO” on the alleged infringing products and tags could easily cause relevant consumers to be confused and misidentify the source of the goods, which infringed on Aichi’s trademarks rights. Considering factors such as the location, scale, quantity, and duration of the stores operated by Ralph Lauren, the unit price of the alleged infringing goods, and the degree of subjective fault of Ralph Lauren, the Chaoyang People’s Court of Beijing ordered Ralph Lauren to compensate Cichi for economic losses of RMB 3 million (USD 462,900).

Ralph Lauren appealed to the Beijing Intellectual Property Court. The court recently made a final judgment in favor of Ralph Lauren’s appeal request, revoked the first instance judgment and dismissed Aichi’s request. The court found that: although the word “POLO” was embroidered or highlighted on some of the goods, from the perspective of the specific usage and usage scenarios of the alleged infringing mark, the said allegedly infringing goods were all displayed and sold at Ralph Lauren shops, and all labeled with “RALPH LAUREN” and “Ralph Lauren Trading (Shanghai) Co., Ltd.”, which clearly indicated the provider of the alleged infringing goods. On the contrary, Aichi did not provide evidence of use of the disputed trademark on the allegedly infringing goods and that its trademark had obtained certain influence through use. Therefore, when consumers entered Ralph Lauren stores to purchase related goods, they will clearly recognize that the goods they bought were from Ralph Lauren without associating them with Aichi, or mistakenly believing that there is specific relationship between the two entities. Accordingly, the use of the alleged infringing mark would not cause the relevant public to confuse or mistake the source of the goods.

As far as the subjective intention of taking advantage of other’s goodwill, the evidence in the case proved that Ralph Lauren’s registration of multiple “POLO” and “POLO RALPH LAUREN” trademarks in multiple related classes, and the extensive promotion and use of “POLO” and “RALPH LAUREN” on clothing and other goods has established a stable correspondence between the “RALPH LAUREN” logo with Ralph Lauren and its affiliates and has gained a certain degree of popularity and influence. However, Aichi did not provide evidence to prove its use of the disputed trademark on the allegedly infringing goods and that its trademark had obtained certain influence through use. Therefore, Ralph Lauren’s selling of the allegedly infringing goods in its stores did not have subjective bad faith in taking advantage of Aichi’s goodwill.

Accordingly, although Aichi had the right to claim rights as the legal rightsholder of the disputed trademark, Ralph Lauren’s use of the alleged infringing mark will not cause market confusion. The Chaoyang People’s Court of Beijing erred in its findings and should be amended.

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