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Weekly China Trademark News Updates
January 19, 2023
1. The CNIPA released a notice on public opinion consultation on the “Draft Amendment to the China Trademark Law (Draft for Comment)”
On January 13, 2023, the CNIPA released the “Draft Amendment to the China Trademark Law (Draft for Comment)” to solicit opinions. The amendments involved in the Draft Amendment mainly include prohibition of repeated registration, shortening of the publication period to two months, compulsory transfer of bad faith squatted trademarks, and increased penalties for bad faith registered trademarks, cancel non-registration appeal, added requirement of trademark use or commitment to use, and the system of voluntarily explanation of use of trademarks every 5 years after trademark registration, etc.
2. The State Council Information Office held a Press Conference on Intellectual Property Work in 2022
On January 16, 2023, the State Council Information Office held a press conference to introduce the work related to intellectual property in 2022. In 2022, there were 6.177 million registered trademarks. The CNIPA completed adjudicating 169,000 trademark opposition cases, completed 412,000 various trademark review and appeal cases, and received 5,827 Madrid trademark international registration applications submitted by domestic applicants. As of the end of 2022, the number of valid trademark registrations in China are 42.672 million.
3. “Shiseido in Chinese” was recognized as a well-known mark and granted cross-class protection
Jingmen Shiseido Gypsum Industry Co., Ltd. (“Jingmen Shiseido”) is the registrant of the trademark “Shiseido Gypsum in Chinese” with reg. no. 11485383 (“Disputed Mark”). Shiseido Co., Ltd. (“Shiseido”) filed an invalidation against the Disputed Mark. The CNIPA invalidated the Disputed Mark. Jingmen Shiseido appealed the CNIPA decision to the Beijing IP Court.
The Beijing IP Court found that the evidence submitted cannot prove that Shiseido’s Cited Mark (“Shiseido in Chinese” with reg. no. 135757) had reached the level of a well-known before the application date of the Disputed Mark. The Beijing IP Court vacated the CNIPA’s invalidation decision. The CNIPA and Shiseido appealed to the Beijing High Court. The Beijing High Court found that advertisements published in newspapers and magazines, ranking data of the world’s top 500 brands and other materials submitted by Shiseido can prove that the Cited Mark was approved and registered on cosmetics as early as 1980, and has a high reputation worldwide before the application date of the Disputed Mark. The Cited Mark has been used and publicized extensively in China for a long period of time and has won many honors. Its sales performance is relatively remarkable in the cosmetics industry. Moreover, before and after the filing date of the Disputed Mark, several effective judgments have determined that the Cited Mark is a well-known trademark used in class 3 for cosmetics. Combined with the evidence submitted, it was sufficient to determine that the Cited Mark has been widely known to the relevant public in China on “cosmetics” products and has reached the level of well-known. The Disputed Mark is composed of Chinese characters “Shiseido Gypsum in Chinese,” and the Cited Mark is composed of Chinese characters “Shiseido in Chinese.” The Disputed Mark completely includes the Cited Mark. The two marks were similar in terms of text composition, pronunciation, meaning, etc., which have constituted a copy and imitation of the Cited Mark. Although there were differences between the goods such as “alabaster; plaster of Paris; gypsum; gypsum board” used by the Disputed Mark and “cosmetics” for which the Cited Mark is well-known for, the Cited Mark has reached the level of well-known and the Disputed Mark’s distinctive part was identical with the Cited Mark. Under such circumstances, the relevant public would easily believe that the Disputed Mark has a considerable degree of connection with the Cited Mark when purchasing the goods approved to use under the Disputed Mark, thereby weakening the distinctiveness of the Cited Mark or improperly taking advantage of the market reputation of the Cited Mark. The market reputation of Shiseido’s well-known Cited Mark may be damaged. Accordingly, the Beijing High Court invalidated the Disputed Mark.
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