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Weekly China Trademark News Updates
February 8, 2021
1. BP’s Helio logo recognized as a well-known mark against China Fuel
BP P.L.C. (“BP”) appealed the unfavorable decision of an invalidation petition ruled by the CNIPA regarding the sunflower design mark owned by China National Fuel Group Co., Ltd. (“China Fuel”) in Class 4 with Reg. No. 7916482 (“Disputed Mark”). On the appeal, the Beijing Intellectual Property (“IP”) Court held that BP’s cited mark shall be recognized as a well-known mark on industrial oil, greases, fuel, and other related goods. The Disputed Mark constituted as an imitation of BP’s prior mark and shall be invalidated.
BP’s Cited Mark 1
BP’s Cited Mark 2
China Fuel’s Disputed Mark
In its ruling, the Beijing IP Court concluded that BP’s evidence supported its petition recognizing BP’s registered trademarks (Reg. Nos. G763249 and G744047) (“Cited Marks”) as well-known marks on industrial oil, greases, fuel, and other related goods before the Disputed Mark’s application date. The court found that 1) the composition, design, and overall appearances between the Cited Marks and the Disputed Mark were similar, 2) China Fuel adopted the gradian style design found on the Cited Marks onto the Disputed Mark in actual use, which can be regarded as intentionally causing confusion, and 3) China Fuel situated in the same industry as BP and should have known about the fame of the Cited Marks but China Fuel failed to refrain from using a similar mark. Accordingly, the Disputed Mark was an imitation of the Cited Marks. The Disputed Mark’s use on fuel and gas related goods were highly similar or closely associated with the goods that made the Cited Marks well-known. The Disputed Mark’s registration and use was likely to cause confusion to the public and damage BP’s interest.
2. Peppa pig energy saving desk lamp ruled as trademark infringement
Entertainment One UK Limited (“Entertainment One”) sued Shanghai Xunmeng Information Technology Co., Ltd. (“Shanghai Xunmeng”) for infringing its exclusive trademark right by selling “Peppa pig energy saving desk lamp” on Pinduoduo e-commerce platform before the Shanghai IP Court.
Peppa Pig Energy Saving Desk Lamp
The Shanghai IP Court found that Entertainment One’s “Xiao Zhu Pei Qi (Peppa pig in Chinese)” trademark in Class 9 for “computer game software (recorded), and electronic publication (downloadable)” related goods has enjoyed relatively high fame and goodwill through continuously promoting and using the mark on animations and electronic publication goods. The “Xiao Zhu Pei Qi (Peppa pig in Chinese)” trademark shall be recognized as a well-known mark. The packaging of “Xiao Zhu Pei Qi (Peppa pig in Chinese)” desk lamp sold by Shanghai Xunmeng imitated and copied the “Xiao Zhu Pei Qi (Peppa pig in Chinese)” trademark owned by Entertainment One, which was likely to mistake the public, infringed upon Entertainment One’s exclusive trademark right, and damage its interest.
3. Paris Baguette in Chinese (巴黎贝甜) recognized as unregistered well-known mark
Ai Si Bi Xi Investment Co., Ltd. (ASBX) is the operator of the famous bakery “Paris Baguette” or “Paris Baguette in Chinese (巴黎贝甜).” ASBX sued Beijing Bali Beitian Enterprise Management Co., Ltd. (“Beijing Beitian”) in the Beijing Intellectual Property (“IP”) Court for infringing its unregistered well-known mark right by registering numerous “Ba Li Bei Tian in Chinese (芭黎贝甜)” marks and promoting the marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” on Beijing Beitian’s website.
|Cited Marks||Disputed Marks|
The Beijing IP Court found that ASBX’s evidence supported its petition to recognize the marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” reached well-known status among relevant consumers as unregistered well-known marks. Beijing Beitian used “Paris Baguette in Chinese (巴黎贝甜)” prominently on its WeChat public account and website caused relevant public associated “Paris Baguette in Chinese (巴黎贝甜)” with Beijing Beitian. Such use was sufficient to mistake the source of services and infringed upon ASBX’s interests on the unregistered well-known marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜).” Meanwhile, ASBX’s unregistered marks “Paris Baguette” and “Paris Baguette in Chinese (巴黎贝甜)” had relative high fame when Beijing Beitian was established. Under such circumstance, Beijing Beitian’s registration and use of the mark “Ba Li Bei Tian in Chinese (芭黎贝甜),” that was highly similar to the unregistered mark “Ba Li Bei Tian in Chinese (巴黎贝甜),” as its trade name was likely to cause confusion among the relevant public and violated the Chinese Anti-unfair Competition Law. The Beijing IP Court ordered Beijing Beitian to immediately stop any infringing activities and pay damages and reasonable legal costs of RMB 1.5 million (USD 231,600).
4. Building a high-standard market system and strengthening intellectual property protection
The General Office of the Communist Party Central Committee of China and the General Office of the State Council have issued the “Action Plan for Building a High-Standard Market System,” which calls for strengthening intellectual property rights protection. According to this action plan, it will formulate and promulgate judicial interpretations on several issues concerning the applicable law of punitive damages for intellectual property infringement, and strictly implement the punitive compensation system for infringements against malicious infringement, long-term and continuous infringement, and trademark infringement.
This action plan also aims to promote formulation and revision of local regulations such as trademark agency management measures, geographical indication product protection regulations, and official mark protection measures. Research and formulate rules for the protection of intellectual property rights in the field of pharmaceutical patent protection, cross-border e-commerce intellectual property protection regulations, and publish guidelines for corporate intellectual property protection and country-specific guidelines for intellectual property protection.
Finally, the action plan aims to optimize the application and examination procedures for patents and trademarks, improve examination efficiency, and reduce examination time. Establish and improve the evaluation and management system of intangible assets such as patents and trademarks.
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