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Weekly China Trademark News Updates – August 23, 2022

2022-08-23

Weekly China Trademark News Updates

August 23, 2022

1. The “Honeysuckle in Chinese” trademark infringement case reversed: the original meaning of a mark in the public domain cannot be exclusively owned by an entity or an individual

On June 24, 2022, the Zhongshan Intermediate Court of Guangdong reversed a first instance judgment and found that the use of the “Honeysuckle in Chinese” logo on the toilet fragrance products produced by the defendant Jiangxi Chuangmei Industrial Co., Ltd. (“Chuangmei”) did not constitute an infringement of the exclusive trademark right of the plaintiff Shanghai Bili Cosmetics Co., Ltd. (“Bili”).

Bili is the owner of the “Honeysuckle in Chinese” trademark with reg. no. 603857. The toilet fragrance produced by Chuangmei was marked with the words “Honeysuckle in Chinese” in a large font horizontally on its label, and the words “Cong Meichen” were marked above the words “Honeysuckle in Chinese” in a smaller font size. Bili sued Chuangmei for trademark infringement and required Chuangmei to immediately stop the production and sale of the infringing goods.

The second instance court found that the “Honeysuckle in Chinese” mark with reg. no. 603857 involved in this case directly represented the main raw materials of the goods and other characteristics, and the trademark owner could not monopolize the original meanings of the trademark signs that belonged to the public domain. When Chuangmei used the word “Honeysuckle Toilet Fragrance in Chinese” on the accused infringing toilet fragrance, it also marked its own registered trademark of “Cong Meichen” above the word “Honeysuckle in Chinese.” “Honeysuckle” usually refers to the name of a plant, which has the effect of clearing away heat and detoxification, toilet fragrance is a generic trade name, and the main ingredient of the alleged infringing toilet fragrance is honeysuckle extract. Under this circumstance, Chuangmei’s use of the words “Honeysuckle toilet fragrance” on the alleged infringing product was not used as a trademark of its own products, and the use was only to illustrate or describe the characteristics of its own products. In the user guide or product description, Chuangmei did not directly use the “Honeysuckle in Chinese” mark with reg. no. 603857, nor did it prominently use the word “Honeysuckle in Chinese.” The existing evidence was not enough to prove that Chuangmei maliciously used the “Honeysuckle in Chinese” trademark owned by Bili. The use of the word “Honeysuckle Toilet Fragrance in Chinese” on the toilet fragrance products produced by it was not a trademark use of other people’s descriptive trademark in order to describe the use of its own products, which was a legitimate use of trademarks. Chuangmei’s actions did not constitute an infringement of the exclusive right of Bili’s registered trademark.

2. Wuhan Yihuiyin Technology Co., Ltd. v. Guangzhou Yinuo Catering Management Co., Ltd., Qiao Wenlong, Yin Liangliang regarding trademark infringements and unfair competition disputes

On May 20, 2022, the Guangzhou Intellectual Property Court rendered a second instance judgment over trademark infringement and unfair competition disputes between Wuhan Yihuiyin Technology Co., Ltd. (Yihuiyin) and Guangzhou Yinuo Catering Management Co., Ltd. (Yinuo), Qiao Wenlong and Yin Liangliang, and ordered the defendants to compensate the plaintiff for economic losses and reasonable expenses totaling RMB 1 million (USD146,000).

The first instance court found that the “Yihetang” and “” logos used by Yinuo in the franchise contracts and authorized franchisees in store decoration and operation were identical to Yihuiyin’s prior trademarks “Yihetang” and “” in terms of goods and services and trademark composition. The use of the accused infringing goods can easily cause confusion and misunderstanding, which constituted trademark infringement. Meanwhile, the evidence submitted by Yihuiyin can prove that the overall design of its milk tea cup decoration, store signboard, store decoration, and clerk clothing constitutes “decoration with certain influence.” The decoration elements of the stores and goods used by the stores operated by the franchisees of Yinuo were basically identical to those of Yihuiyin. Yinuo’s actions caused confusion to the source of services and constitute unfair competition.

The second instance court found that: taking into account that the defendant, Yinuo, had malicious intentions of taking advantage, and aggressively launched business to attracting investment and franchising without a valid trademark registration. Such actions constituted as infringement from the source and the scale of its infringements were large, caused severe damages, the second instance court increased the amount of compensation from the RMB300,000 (USD43,824) to RMB1 million (USD146,000).

3. CNIPA working group joined platform-based trademark agency to carry out “counseling” supervision

In recent years, while the platform-based trademark agencies have brought technological innovation and facilitated trademark services, there have also been irregular operations. The CNIPA selected some platform-based trademark agencies as samples and provided guidance to effectively regulate agency service behavior.

In the governance of platform-type trademark agencies, the CNIPA has improved the supervision efficiency through all-round “counseling” inspection and supervision. In view of the business model and main risks of platform-based trademark agencies, guide them to establish and improve working mechanisms such as bad faith application screening, bad faith application notification, conflict of interest review, and online application de-duplication verification.

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