Weekly China Trademark News Updates

January 18, 2021

1. The first instance court fined the “Supreme” mark squatter for RMB 8.5 million

On November 14, 2019, Chapter 4 Corp. (“Chapter 4”), owner of the famous “Supreme” skateboard and streetwear brand, filed an unfair competition lawsuit against Shanghai Jiao She International Trade Co., Ltd. and Zhejiang Outlet Plaza Co., Ltd. (the “Defendants”). The Zhejiang Intermediate Court found that Chapter 4’s “Supreme” brand had collaborated with Louis Vuitton, Nike, and Lacoste in China. And along with other facts that the CNIPA found, Chapter 4 was able to prove that the “Supreme” brand had been used in China. The court held that the “Supreme” mark had obtained certain influence and shall be protected under the Anti-unfair Competition Law. The court ordered the Defendants to immediately stop infringing activities, publish clarifying statements, eliminate negative impacts on the “Supreme” mark, and pay RMB 8.5 million (USD 1.3 million) to Chapter 4 for economic loss and reasonable costs.Although Chapter 4 has not yet had an exclusive Supreme store in China, the court found the “Supreme” mark and Chapter 4 established a strong association through collaborations, cross-border trading, media promotions, and celebrity endorsements prior to the alleged infringing activities and shall be legally protected. Under the Anti-Unfair Competition Law, a “mark that has obtained certain influence” can be protected prior and after the mark’s registration based on the rightsholder’s claims.

2. Qiao Dan Sports renamed to Zhong Qiao Sports

On December 30, 2020, eight years after Michael Jordan the American professional basketball player filed a name dispute against Qiao Dan Sports Co., Inc. (“Qiao Dan Sports”) and Shanghai Bai Ren Trade Co., Ltd. The Shanghai Second Intermediate Court’s first instance judgement ordered Qiao Dan Sports to publish clarifying statements regarding its relationship with Michael Jordan and issue a public apology. Specifically, the court ordered Qiao Dan Sports to stop using the “Qiao Dan in Chinese (“乔丹”)” part of its corporate name and its “Qiao Dan in Chinese (“乔丹”)” trademarks within 30 days of the effective date of this judgement. On January 12, 2021, Qiao Dan Sports renamed itself to Zhong Qiao Sports Co., Ltd.

The Shanghai Second Intermediate Court, in its judgment, found Qiao Dan Sports knew of Michael Jordan’s fame but still registered or licensed the “Qiao Dan in Chinese (“乔丹”)” trademark, the “Qiao Dan in Chinese (“乔丹”) and Design (a baseball mannequin)” trademark, and the “Qiao Dan in Chinese (“乔丹”) and 23” trademark. And without authorization from Michael Jordan, Qiao Dan Sports used the “Qiao Dan in Chinese (“乔丹”)” mark that was identical with the Chinese translation of Michael Jordan’s last name in sporting goods industry and as the distinctive part of its trade name. Further, Qiao Dan Sports promoted the “Qiao Dan in Chinese (“乔丹”)” brand through cable television, celebrity endorsement, the internet, newspaper, magazine, and outdoor billboards. These business activities were sufficient to confuse the public to associate Qiao Dan Sports with Michael Jordan. Such association was also one of the reasons that led part of the consumers decided to purchase Qiao Dan Sports products. These business activities allowed Qiao Dan Sports to ride on Michael Jordan’s influence when entering the market to obtain more market opportunities and monetary interests. Qiao Dan Sports’ use of the “Qiao Dan in Chinese (“乔丹”)” mark shall be deemed as infringing upon Michael Jordan’s name right.

3. The court ordered RMB 30.55 million punitive damages for infringing Wyeth LLC’s “Hui Shi in Chinese (惠氏)” trademark and “Wyeth” trademark

On December 25, 2020, the Zhejiang Intermediate Court held that Guangzhou Hui Shi Co., Ltd., Zeying CHEN, and Xiaoshen GUANG (jointly as the “Guangzhou Hui Shi”) jointly infringed upon Wyeth LLC.’s “Hu Shi in Chinese (惠氏)” trademark and “Wyeth” trademark’s exclusive rights. Considered Guangzhou Hui Shi’s obvious subjective bad faith, the court ordered treble punitive damages according to the China Trademark Law along with reasonable costs for RMB 30.55 million (USD 4.7 million).

Wyeth LLC.

Guangzhou Hui Shi Co., Ltd.

Guangzhou Hui Shi, in its rebuttal, responded that its six “Wyeth” and “Hui Shi in Chinese (惠氏)” trademarks were legally used prior to being invalidated by the CNIPA and shall not be seen as infringing upon Wyeth LLC.’s rights. Guangzhou Hui Shi further argued that although the CNIPA invalidated the six “Wyeth” and “Hui Shi in Chinese (惠氏)” trademarks, it had already obtained a license for the “Hui Shi Xiao Shi Zi in Chinese (惠氏小狮子)” trademark, which allowed itself to legally use the licensed trademark. The court reasoned that the exclusive trademark right for the six “Wyeth” and “Hui Shi in Chinese (惠氏)” trademarks shall be seen as to have never existed once invalidated. Hence, Guangzhou Hui Shi’s argument that it had legally used its six trademarks before the CNIPA invalidated the trademarks was invalid. As to the license agreement, the court found that the license agreement for the “Hui Shi Xiao Shi Zi in Chinese (惠氏小狮子)” trademark only showed Guangzhou Hui Shi as the general dealer for the greater China region on mother and baby related products. The license agreement omitted the trademark registration number, approved Classes, and licensed use. The license agreement was never recorded with the CNIPA. Such a license agreement cannot prove that Guangzhou Hui Shi had legally obtained a license agreement to use the “Hui Shi Xiao Shi Zi in Chinese (惠氏小狮子)” trademark. The court concluded that Wyeth LLC.’s long term promotions for the “Wyeth” and “Hui Shi in Chinese (惠氏)” trademarks had been known to the relevant public and obtained high fame. Relevant consumers were likely to be confused and believed that infringing goods labeled with identical or similar “Wyeth” or “Hui Shi in Chinese (惠氏)” marks had certain association with Wyeth LLC.

4. Another year with recorded new trademark applications and shortened examination timeIn

2020, 878 million new trademark applications were filed. The average trademark examination time has been shortened to four months. Compared with 2019, there were 6.43% more new trademark applications in 2020. With the shortened 4-month examination time, trademark registration process has also been shortened to 7 to 8 months.

5. 2020 saw a big increase in the number of trademark applications filed online

In 2020, 98.05% of the trademark applications were filed online. An increase of almost 17% from the 81.29% in 2016. The total active users in the CNIPA’s online trademark system have also increased to 178,802 users, 14 times more users than in 2016. By the end of 2020, trademark oppositions, invalidations, and three-year non-use cancelations can also be filed online.

6. The CNIPA continues making administrative trademark documents publicly available

The CNIPA has been publishing administrative judgments since 2017, there are about 900,000 decisions available up to date. By the end of 2020, more than 50 million trademark information is freely available for download on the CNIPA’s online trademark system. In 2020, the CNIPA began making trademark application refusal notifications and trademark opposition decisions publicly available through its online trademark system.

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