Weekly China Trademark News Updates

August 24, 2021

1. An individual was sentenced to three years in prison for Illegal manufacturing the “Ferrero in Chinese” mark

On August 18, 2021, the Shanghai No. 3 Intermediate Court made a first-instance judgment on the case of defendant Liu illegally manufacturing the registered trademark of “Ferrero in Chinese” and unpacking and repacking the genuine products for sale. Liu was sentenced to three years in prison, suspended for five years, and fined RMB 300,000 (USD 46,200).

Defendant Liu, without the permission of the registered trademark right holder of “Ferrero in Chinese,” purchased 96 and 30 pieces of Ferrero chocolate products with low unit price with his brother for the purpose of obtaining illegal profit. Liu entrusted others to illegally manufacture packaging materials such as labels, bottom cards, plastic boxes, bottom brackets, outer packaging cartons, tapes, etc. with registered trademarks “Ferrero in Chinese.” Liu then hired workers to repackage the purchased chocolates with counterfeit packaging materials into products labeled with “Ferrero in Chinese” such as 8 pieces, 16 pieces, 24 pieces, 32 pieces and other high-unit-price chocolate products and sell them for profit.

From July to September 2020, the public security bureau successively seized more than 490,000 items suspected of counterfeiting Ferrero chocolate’s packaging, involving more than 800,000 “Ferrero in Chinese” related trademarks. The seized products were identified as not authorized by the right holder but used a mark identical to the right holder’s registered trademark. Upon random inspection, the 30-piece “Ferrero” hazelnut wafer chocolates produced abroad have the same features with the products produced by Ferrero. The 96 pieces, 48 pieces, and Collection96, etc. are all produced by Ferrero. The single chocolate balls inspected showed no shape, structure, and main raw materials difference from those produced by Ferrero. After auditing, from July 2018 to July 2020, Liu and others entrusted others to forge packaging materials bearing the registered trademark of “Ferrero in Chinese” for more than 5.65 million copies, worth more than RMB 1.7 million (USD 261,735). On July 13, 2020, Liu was arrested and confessed the above-mentioned criminal facts.

The Shanghai No. 3 Intermediate Court found that Liu entrusted others to forge 5.65 million copies of the registered trademarks of “Ferrero in Chinese” without the authorization of the right holder with the actual payment for the of more than RMB 1.7 million (USD 261,735). The circumstances were particularly serious and Liu’s behavior constituted the crime of illegally manufacturing registered trademark logos. In a joint crime, the defendant Liu was the principal offender and should be liable for all the crimes in which he participated. Liu truthfully confessed the facts of the crime upon arrest so his sentence can be reduced accordingly. Liu voluntarily pleaded guilty, obtained compensation through his family members to compensate the right holder, and paid a fine before the court, so a lenient sentence was appropriate.

2. The “JEEP” mark was cited to invalidate the “JCEIP” mark

The Beijing Higher Court made a second instance judgment on the invalidation of the trademark “JCEIP” with registration no. 11775571, dismissed the CNIPA’s appeal request, and upheld the first instance court’s decision that Wei Xiqin’s disputed trademark constituted as a similar trademark on the same or similar goods to the cited mark owned by Fiat Chrysler America Co., Ltd. (“Fiat”).

Disputed Mark	Cited Mark 4 – 7	Cited Mark 8	Cited Mark 9

The Beijing Higher Court found that the approved “shoes; hats; socks” goods for the disputed mark were basically the same as the “shoes; hats” approved for use under the Cited Marks 4 to 9 in terms of functions, uses, production departments, sales channels, and consumer groups, which constituted as identical or similar goods. The disputed mark was a word mark consisting of the letters “JCEIP”. The Cited Marks 4 to 8 were word marks consisting of the letters “JEEP.” The Cited Mark 9 was a word mark consisting of “JEEP in Chinese”. Compared with the Cited Marks 4 to 8, the Disputed Mark was similar in terms of text composition, pronunciation, and overall appearance, and constituted as a similar mark. Although the Disputed Mark was different from the Cited Mark 9, according to the evidence submitted by Fiat, the Cited Marks 4 to 9 were used on clothing, shoes and other goods, and had obtained a certain degree of popularity. A relatively stable correspondence was established between “JEEP” and “JEEP in Chinese”, so the Disputed Mark and the Cited Mark 9 constituted as similar marks. Considering the degree of similarity between the Disputed Mark and the Cited Marks and the relevance of the goods used, if the Disputed mark and the Cited Marks 4 to 9 were used together on identical or similar goods, where the relevant public paid only general attention, they would easily be confused and misidentify the source of the goods. Thus, the Disputed Mark and the Cited Marks 4 to 9 constituted as similar marks used on identical or similar goods. Accordingly, the judgment of the first instance court that the registration of the Disputed Mark violated Article 30 and Article 31 of the Chinese Trademark Law 2014 should be affirmed.

3. The CNIPA publicly solicits opinions on the “General Trademark Violation Judgment Standards“

To strengthen trademark management, improve trademark enforcement guidance, and unify enforcement standards, the CNIPA has drafted the “General Trademark Violation Judgment Standard (Draft for Comment),” which will be publicly soliciting opinions until October 1, 2021.

The “General Trademark Violation Judgment Standard (Draft for Comment)” stipulates ten general trademark violations, including: Violation of Article 6 of the Chinese Trademark Law, that is, must use a registered trademark but failed to use it; violation of Article 10(i) of the Chinese Trademark Law, that is, use logos that are not allowed to be used as a trademark; violation of Article 14(5), that is, use the words “well-known mark” during business activities; violation of Article 49(i) of the Chinese Trademark Law, that is, in the process of using the registered trademark, the registrant changes the registered trademark, registrant’s name, address or other registration matters by himself; violation of Article 52 of the Chinese Trademark Law, that is, uses unregistered trademarks as registered trademarks; violation of Article 3 of the Several Rules on the Regulation of Trademark Registration, that is, applying for trademark registration in bad faith and etc.

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