Weekly China Trademark News Updates

January 11, 2023

1. The CNIPA and all levels of courts held a seminar on authorization and confirmation of trademark rights

Recently, the Trademark Office of the CNIPA and three levels of courts held a seminar on authorization and confirmation of trademark rights. Around 40 participants from the Trademark Office of the CNIPA, the Department of Treaty and Law of the CNIPA, the Beijing Intellectual Property Court, the Beijing High Court, and the Supreme People’s Court attended this seminar.

Issues regarding the feasibility of closing the door of litigation evidence in the non-use cancellation review cases, avoiding improper expansion of the application of the change of circumstances, definition of the “legality” of trademark use, and acceptance of coexistence agreements from affiliated companies were extensively discussed through analysis from various angles and interest, and by incorporating cases and relevant legal regulations, and parts of the issues discussed reached consensus.

We will continue to pay close attention to the trends of the Trademark Office and the courts on issues related to the evidence of use, change of circumstances, and coexistence agreements.

2. The Beijing High Court invalidated the stylized Crocodile mark by overturning the first instance decision

Against the mark “ ” in class 25 applied in May 2006 by Cartelo Crocodile Pte Ltd (“Cartelo”) with the address of Samoa and registered in March 2017 through oppositions and opposition appeal, Lacoste of France and Crocodile Garment Limited of Hong Kong (“Crocodile Garment”) filed invalidation actions respectively in July 2017 and April 2018. The then TRAB found Lacoste’s “” caused no confusion whilst invalidated the “” mark for similarity with Crocodile Garment’s “”, “”, “” marks.

Cartelo was unsatisfied with the decision and appealed to the Beijing IP Court.

The Beijing IP Court found that: the Disputed Mark is a Design mark. The Cited Marks were combinations of Design with letters and/or numbers, where letters or numbers took a bigger portion of the mark, or were brighter than the Design. Therefore, among the Cited Marks, parts other than the Design also constituted distinctive parts that has strong distinctiveness. There were relatively large differences between compositions and overall visual effect of the Cited Marks and the Disputed Mark. What’s more, comparing Designs alone, although the Disputed Mark consisted of a crocodile design while all Cited Marks include a crocodile design, there are certain differences between the two in terms of body shape, tail shape, mouth features, and body image depiction. Thus, the Disputed Mark and the Cited Marks do not constitute similar marks.

Both the CNIPA and Crocodile Garment appealed the Beijing IP Court decision. The Beijing High Court found that both the Disputed Mark and the Cited Marks consisted of a left facing crocodile design. The Cited Marks consisted of a left facing crocodile design with letters, where the crocodile design and the letters “CORCODILE” were its distinctive parts. Regardless of overall comparison or comparison of the distinctive parts, the Disputed Mark and the Cited Marks were relatively similar in terms of design composition, design style, meaning, and overall visual effect, which constituted similar marks. The evidence on file submitted by Cartelo was not sufficient to prove that the Disputed Mark had been used to a certain degree of popularity before the filing date of each Cited Marks, and had formed a stable one-to-one correspondence relationship with Cartelo in the field of goods approved to be used by the Disputed Mark and can be sufficiently distinguished from each Cited Marks.

The Disputed Mark and the Cited Marks constituted similar marks on identical or similar marks. Thus, the CNIPA did not err in its decision and this court affirmed the CNIPA’s decision and vacated the first instance decision.

3. Louis Vuitton successfully invalidated the “Bei Er Wei Deng in Chinese” mark through litigation

A Hong Kong resident registered a word mark “Bei Er Wei Deng in Chinese” (“Disputed Mark) in traditional Chinese characters in class 23 in February 2009. Louis Vuitton Malletier (“Louis Vuitton”) filed an invalidation action against the Disputed Mark in June 2019, claiming its well-known marks “Lu Yi Wei Deng in Chinese” (Louis Vuitton in Chinese) in class 18 and class 25 (“Cited Marks).  The CNIPA found no violation of well-known mark or absolute grounds, and rendered a decision in December 2020 to sustain the Disputed Mark.

Louis Vuitton appealed to the Beijing IP Court.

The Beijing IP Court found that the evidence can prove that the Cited Mark 1 reached the degree of well-known in mainland China for “luggage” in class 18 prior to the filing date of the Disputed Mark, constituted as a well-known mark. The Disputed Mark and the Cited Marks constituted similar in terms of word composition and pronunciation. The Disputed Mark copied and imitated the Cited Mark. The Disputed Mark’s use on “yarn and worsted wool” overlapped with “luggage” in consumers. These goods have certain associations.

Meanwhile, the Cited Mark 1 have been registered for more than 30 years, Louis Vuitton has been selling luggage related goods labeling “Lu Yi Wei Deng in Chinese” for many years. The Disputed Mark’s registrant should have known Louis Vuitton and its more famous Cited Mark 1, and should reasonably avoid filing to register the Disputed Mark. Considering comprehensively the market reputation accumulated by the Cited Mark 1 before the filing date of the Disputed Mark and the continuous use of the Cited Mark 1 by Louis Vuitton, when the relevant public sees the Disputed Mark, it was easy to think of the well-known Cited Mark 1. Based on this association, the relevant public may mistakenly believe that the Disputed Mark was related to Louis Vuitton or the Cited Mark 1, thereby misidentifying the source of the goods. Even if there was no misidentification of the source of the goods, such association will destroy the close association between the Cited Mark 1 and the goods provided by Louis Vuitton, thereby weakening the distinctiveness of the Cited Mark 1and causing damage to the legitimate interests of Louis Vuitton , which violated the provisions of Article 13, Paragraph 2 of the 2001 China Trademark Law.

In view of the fact that the Cited Mark 1 has been recognized as a well-known mark and the rights and interests of Louis Vuitton have been protected, the court will no longer comment on whether the Cited Mark 2 in class 25 constituted as a well-known trademark according to the principle of determining well-known trademarks on demand.

The CNIPA appealed and the Beijing High Court found that: the Cited Mark 1 has become well-known prior to the filing date of the Disputed Mark, constituted as a well-known mark in luggage related goods. Both the Disputed Mark and the Cited Mark 1 included the fanciful words of “Wei Deng in Chinese.” The Disputed Mark and the Cited Mark 1 constituted similar in terms of word composition and pronunciation. The Disputed Mark copied and imitated the Cited Mark 1. The approved goods of worsted wool, etc. under the Disputed Mark overlapped with luggage related goods approved under the Cited Mark that Louis Vuitton was famous for in terms of sales channels and consumes. Considering the above, it can be deducted that the registrant of the Disputed Mark knew that the Cited Mark 1 was more famous on luggage related goods and should have reasonably avoid filing trademark applications similar to the Cited Mark 1. However, that the registrant of the Disputed Mark insisted on filing the Disputed Mark that was highly similar to the Cited Mark 1 on goods highly similar under the Cited Mark 1’s approved goods. The registrant of the Disputed Mark showed obvious intention to take advantage of the Cited Mark 1’s fame. The use of the Disputed Mark on “worsted wool” would easily cause confusion and misunderstanding among the relevant public and damage Louis Vuitton’s interests. The first instance decision was affirmed.

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