Weekly China Trademark News Updates

December 27, 2023

1. Reversal of the second instance judgment! Invalidation of the “Puma” design similarity trademark case

Recently, the Beijing High Court made a final judgment on a trademark invalidation case between the appellant Puma Europe Co., Ltd.  (“Puma”) and the respondent the CNIPA, and the third party in the original trial, Rujun Zuo.

Disputed Mark

Cited Marks

The Beijing High Court found that the Disputed Mark and the Cited Marks are both design marks, and they are similar in design style, composition elements, visual effects, etc. At the same time, according to the advertisements, media reports, sales data, annual income statement, profit and loss statement and other documents submitted by Puma, it can be proved that before the application of the Disputed Mark, each Cited Mark has a certain degree of popularity on “shoes” and other goods. Rujun Zuo, as a competitor in the same industry, should have known about the said information, but failed to fulfill his obligation to reasonably avoid it and still filed for many marks, including the Disputed Mark on identical or similar goods. Such filings could not be regarded as a coincidence. If the Disputed Mark and the Cited Marks are used on identical or similar goods at the same time, it would easily cause the relevant public to mistakenly think that the two were series of trademarks of the same market entity, or that there was some kind of relationship between the two trademark holders, which may lead to misidentification of the source of goods. The difference between the Disputed Mark and the Cited Marks was not enough to eliminate confusion and misunderstanding among the relevant public, and the evidence on record was not sufficient to prove that the Disputed Mark can be distinguished from the Cited Marks after use.

2. The 3D trademark of Panerai is legal and valid, and the unauthorized manufacture and sale of similar wristwatch products constitute an infringement

The Tianhe District Court of Guangzhou rendered a trademark infringement and unfair competition case between the plaintiff, Officine Panerai AG (“Panerai”), and the defendant, holding that the defendant should immediately stop the production and sale of the infringing products and compensate Panerai for the economic loss and the reasonable costs for a total of RMB650,000 (USD90,930).

Allegedly infringing goods

Cited Marks and Panerai’s products

The court found that the defendant operated an online store to sell watches, including the allegedly infringing products. The allegedly infringing goods were identical to the goods authorized for use of Panerai’s 3D trademark. Upon comparison, the shapes and sizes and proportions of the cases, crowns and lugs of the allegedly infringing goods were similar to the relevant elements of the Cited Marks as a whole, and the hands and numerals displayed in the dials of the allegedly infringing goods were similar to those of the said trademarks, which had a close resemblance. The said goods infringed the Panerai’s trademark right by using the product shape similar to its 3D marks without the Panerai’s authorization. The defendant as the production and sale of infringing goods should be held liable for infringement and damages.

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