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Weekly China Trademark News Updates – August 31, 2021


Weekly China Trademark News Updates

August 31, 2021

1. Universal Pictures prevailed in the “Minions” copyright dispute with RMB 5.1 million in compensation

Recently, the Jiangsu High Court rendered a favorable decision for Universal Pictures against defendants Cangzhou Qianchixue Food Co., Ltd. (“Qianchixue”), Jingbaojiang, Jingshusong, Wangzi Beverage (Guangzhou) Group Co., Ltd. (“Wangzi”), Guangdong Tainiu Vitamin Beverage Co., Ltd. (“Tainiu”), Wuxi Weiwei in a copyright dispute involving the “Minions” copyright. The court affirmed the first instance court’s decision and ordered the defendants, except Wuxi Weiwei, to pay RMB 5 million (USD 788,400) altogether and ordered Wuxi Weiwei to separately spay RMB 100,000 (USD 15,458) in compensation to Universal Pictures.

Universal Pictures is a world-renowned film and television studio. After being released in China, the Minions film series gained enormous reputation. Without the authorization of Universal Pictures, Qianchixue mass-produced and sold dairy beverages with a graphic that was substantially similar to the “Minions” in large quantities. Before the alleged infringing products were put on the market, other beverage companies had obtained authorization to use the Minions image from Universal Pictures. Qianchixue’s infringing products affected the sales of licensed products by other legal licensees. The court ruled that although the alleged infringing image used by the alleged infringing product was slightly different from the artwork involved, it included many main original features of the Minions, which constituted as substantially similar.  Without the permission of Universal Pictures, Qianchixue used the involved artwork on the alleged infringing products, manufactured, sold, publicized and promoted the alleged infringing products, infringing the reproduction and distribution right of the involved artwork. The defendants Jingbaojiang and Jingshusong facilitated Qianchixue’s alleged infringing activities, which constituted as joint infringement. The defendants, Tainiu and Wangzi, as the trademark owners and licensees of the alleged infringing products involved in the case, had a close interest and cooperation relationship with Qianchixue, which constituted joint infringement. Wuxi Weineng sold the alleged infringing products online, which constituted as infringement, and was ordered to separately compensate Universal Pictures for RMB 100,000 (USD 15,458).

2. Slimming tea is not tea

Recently, the trial of the administrative dispute over the cancellation review of the trademark “Tai Tai” owned by Tai Tai Health Products (Hong Kong) International Group (hereinafter referred to as “Tai Tai Group”) was concluded. The “Tai Tai” trademark with registration numbers 8144227 (“Disputed Mark”) owned by the Tai Tai Group was approved for registration on May 21, 2011, for “tea, tea substitutes” goods. A third party filed a three-year non-use cancellation against the Disputed Mark on May 31, 2017, and the CNIPA ruled in favor of the third party to cancel the Disputed Mark. Tai Tai Group appealed to the Beijing High Court but on August 9, 2021, the Beijing High Court rendered a second instance judgment dismissing the appeal and affirmed the first instance judgment.

The Beijing High Court found that although Tai Tai Group provided evidence of use that Changzhou Kaigu Tea Food Co., Ltd., the licensee of the Disputed Mark, actually sold Tai Tai Sakura Five Elements Tea, Tai Tai Xiuxiu Tea (roudi slimming tea), Tai Tai Roudi Slimming Tea, Tai Tai Xiuxiu Slimming Tea products, these products are health products and were obviously different from the “tea, tea substitute” goods in terms of raw materials, functions, uses, consumer, etc., so using the Disputed Mark on the above-mentioned products could not be deemed as use on the “tea, tea substitute.”

In this case, the Beijing High Court clearly pointed out that “slimming tea” is a health product, not a “tea, tea substitute” goods under Subclass 3002, which has a guiding effect on similar cases. This decision also puts forward clearer requirements in regulating companies’ use of their trademarks.

3. The CNIPA rejected trademark applications for Olympian gold medalists’ name

Recently, the CNIPA issued the “Notice Regarding the Rejection of 109 Trademark Registration Applications including “YANG Qian,” “CHEN Meng,” and “QUAN Hongchan in accordance with the law,” announcing the rejection of the trademark registration of the Olympic gold medalists’ name by related enterprises and natural persons.

The main content of the announcement is as follows: individual enterprises and natural persons have maliciously registered the names of Olympic athletes such as “YANG Qian,” “CHEN Meng,” and “QUAN Hongchan” and related key words with specific meanings such as “Xing Ge” and “Tian Shen.” Submitting a trademark application with the purpose to seize or improperly use the reputation of others in the market, infringe on the rights of others’ names and their legitimate rights and interests caused negative social impact. In this regard, the CNIPA condemned such behavior and in accordance with the Article 10(i)(8) of the Chinese Trademark Law quickly rejected the 109 trademark applications (including one mark filed in multiple classes) including “YANG Qian,” “CHEN Meng,” and “QUAN Hongchan” marks. The CNIPA will, as always, maintain a high-pressure state in cracking down on malicious trademark squatting, and continuously strengthen the protection of the names of high-profile public figures including Olympic athletes. Applicants who seek improper interests and their entrusted trademark agencies shall be strictly dealt with in accordance with laws and regulations.

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