Weekly China Trademark News Updates

February 15, 2022

1. LEGO successfully enforced its minifigures 3D trademark

Recently, the Huadu District Court of Guangzhou, Guangdong rendered a trademark infringement decision in favor of LEGO against Guangzhou Zhongnuo Trading Co., Ltd. (“Zhongnuo”) and Shen Xiaoyu for using the “LEGO” logo and LEOG’s minifigures logo on school bags, stationery boxes, and wallets, which infringed LEGO’s prior trademark rights. LEGO’s “LEGO” and “LEGO in Chinese” marks were recognized as well-known trademarks by the Beijing High Court in 2017 on toy products. LEGO also owns the “LEGO” mark and the minifigures 3D trademark on school bags, backpacks, etc. in Class 18.

Reg. No. 4912052	Reg. No. 10461954

The court found that the accused infringing goods were schoolbags, stationery boxes and wallets, which were the same or similar to the approved use scope of LEGO’s trademarks No. 4912052 and No. 10461954, and the accused infringing logos were used on the front of the goods, hang tags, zipper pullers, shoulder straps, sewing labels, etc., which carried the function of identifying the source of goods. After comparison between the infringing logos and LEGO’s registered trademarks, the accused infringing logos are identical or similar to LEGO’s trademark with reg. no. 4912052. Comparing the alleged infringing logo with LEGO’s trademark with reg. no. 10461954, the composition elements, design style, and visual effects were similar, which constitutes as similar. Although the defendant claimed that the pattern used on the accused infringing goods was the same as its own artwork “Robots and Small Yellow Minions,” the court found that the pattern to be similar to the LEGO’s trademark with reg. no. 10461954. What’s more, the trademark with reg. no. 10461954 has been registered since December 14, 2013. The completion date of the artwork “Robots and Small Yellow Minions,” however, was on October 10, 2015. The defendant used evidence created after LEGO’s prior right, which cannot be supported. The court ruled in favor of LEGO and ordered the defendant to pay LEGO’s economic losses and reasonable legal costs of RMB130,000 (USD20,471).

2. The CNIPA cracks down on trademark squatting related to popular keywords used during the 2022 Beijing Winter Olympics

On February 14, 2022, the CNIPA issued the “Notice on Combating the Malicious Squatting of “Bing dun dun,” “Gu Ailing,” and Other Trademarks.” Prior to the start of the 2022 Beijing Winter Olympics, the CNIPA have been cracking down on squatted trademark applications and registrations based on its mascot “Bing Dun Dun” and other famous athletes. So far, 427 of such squatted applications or registrations have been rejected or invalidated.

The CNIPA attaches great importance to the protection of intellectual property rights during the 2022 Beijing Winter Olympics and the 2022 Beijing Winter Paralympics by carrying out special campaigns against malicious trademark squatters. In addition to protecting the trademarks applied by the Beijing Winter Olympics Organizing Committee, and the names of popular athletes such as “Gu Ailing” and others, the CNIPA cracked down on other bad faith trademark squatters by rejecting bad faith applications of “Bingdundun” and “Gu Ailing” and some 429 other applications. The CNIPA also invalidated 43 other registered trademarks sua sponte, including “Xue dun dun” and “Gu Ailing.”

3. The CNIPA’s Q&As regarding its ruling based on “bad faith trademark registration not for the purpose of use” of the Chinese Trademark Law

The CNIPA released a series of Q&As regarding its ruling based on “bad faith registration not for the purpose of use” of the Chinese Trademark Law. We have selected a few of the important Q&As for your attention.

a. What is the difference between “bad faith registration not for the purpose of use,” “taking advantage of famous brands,” and “taking advantage of hot topics”? How does the CNIPA determine “not for the purpose of use” and “bad faith”?

It is generally believed that bad faith registration can be roughly divided into two types according to the interests infringed. One is bad faith registrations, namely, “taking advantage of famous brands,” and “taking advantage of hot topics,” and squatting others’ goodwill, civil rights, and legitimate rights and interests. The other type is “bad faith registration not for the purpose of use,” that is, “batch applications” and “occupation of resources” to disrupt or impact the general trademark registration and trademark registration management.

The Trademark Examination and Adjudication Guide (“Guide”) clarifies that the “bad faith registration not for the purpose of use” in the first paragraph of Article 4 of the Chinese Trademark Law refers to applicants who submitted a large number of trademark applications not based on the needs of production and business activities, lacking genuine intention to use, improperly occupied trademark resources, and disrupted the order of trademark registration. Here, “bad faith” refers to the intention to applying for a large number of trademarks not for the purpose of use and its intention to profit from such large profits, which is not the same as the “bad faith” in “bad faith squatting.” Bad faith squatting such as taking advantage of famous brands” and “taking advantage of hot topics,” and if such bad faith only damages the civil interests of a specific subject and does not involve damage to public interests, it does not belong to “bad faith registration not for the purpose of use.” Of course, if the number of trademarks registered in bad faith was relatively large, which caused trademark resources to be improperly occupied, and the order of trademark registration to be disturbed, Article 4(1) of the Trademark Law shall be applied. The so-called “not for the purpose of use” means that when the applicant applies for the registration of the trademark, he has neither the actual purpose of using the trademark nor the act of preparing to use the trademark, or based on a reasonable inference, there is no possibility of actually using the trademark.

b. Do I need to submit evidence of use to file an application for trademark registration? How to understand the two exceptions to which Article 4 of the Trademark Law does not apply?

China adopts a first-to-use trademark system, which does not require submission of evidence of use. Thus, it is not required to submit evidence of use when filing a trademark application.

The legislative intent of Article 4 of the Chinese Trademark Law is to regulate bad faith applications and hoarding of registrations that are “not for the purpose of use,” and to enhance the use obligations of registrants. The “Guide” clarifies that “the applicant applies for a trademark that is identical or similar to its registered trademark for defensive purposes” and “the applicant applies for a trademark in advance for a future business with realistic expectations” are the two exceptions. “Application for defensive purposes” mainly refers to applications that are identical or similar to its core brand on goods or services other than its main business, in order to prevent others from damaging the goodwill built on its core business and brand. “Applies for a trademark in advance for a future business with realistic expectations” mainly considers that in actual commercial activities, there is a certain time lag from business planning to actual publicity, promotion, and market launch of related products or services, and some market players have trademark filing plans in advance to prevent possible squatting or to avoid possibility of infringing other’s prior rights and interests.

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