Weekly China Trademark News Updates

January 25, 2021

1. RMB 76.4 million (USD 11.8 million) damages ordered against Amazon

Beijing Yanhuang Yingdong Technology Development Co., Ltd. (“Yanhuang”) sued Amazon.com, Inc.’s Chinese subsidiary, Amazon Connect Technology Services (Beijing) Co., Ltd. and a Chinese data center and cloud technology provider, Beijing Sinnet Technology Co., Ltd. (“Sinnet”) (together as the “Defendants”) before the Beijing High Court for infringing its registered trademark “AWS,” which may cause confusion to the relevant public as to the source of goods or services. The Beijing High Court held that the Defendants were jointly liable for trademark infringement. The Defendants shall immediately stop using the “AWS” mark, pay Yanhuang RMB 76.4 million (USD 11.8 million) for economic loss, reasonable legal costs of RMB 260,000 (USD 40,000), and publish a public statement to eliminate any impact caused by their

Parts of the allegedly infringing marks	Yanhuang’s registered trademarks

In determining the damages, the Beijing High Court referenced Sinnet’s 2017 Annual Report that states the profit for “cloud computing and related services” was RMB 764 million (USD 118 million). The court also accounted for the allegedly infringing marks’ contribution to all the Defendants’ operation profit margin. Together, the court determined a 5% profit (RMB 38.2 million (USD 5.9 million)) as the base of the damages to be ordered. Upon considering the Defendants knew of Yanhuang’s registered trademarks “AWS” but still chose to infringe upon Yanhuang’s exclusive trademark rights and filed jurisdiction challenge in bad faith, the court doubled the 5% profit base and ordered the Defendants to pay a punitive damage of RMB 76.4 million (USD 11.8 million).

2. “MICHELIN” successfully invalidated “MEI QI LIN in Chinese (“美其淋”)

The Beijing High Court held, in its final judgment for this case, that the mark “MEI QI LIN in Chinese (美其淋)” Reg. No. 12963409 in Class 32 (“Disputed Mark”) for beer, juice, soda, soy drink, and other goods filed by Anhui Haozhou City Sihai Pharmaceutical Co., Ltd. (“Sihai Pharmaceutical”) infringed upon the exclusive trademark right of the well-known mark “MICHELIN” Reg. No. 136402 in Class 12 owned by Compagnie Générale des Etablissements Michelin (“Michelin”) and shall be invalidated.

The Beijing High Court found that although the Disputed Mark designated “beer, non-alcoholic fruit drinks, juice” and other goods in Class 32 were different from the approved goods for “tires” for Michelin’s “MICHELIN” mark, Michelin and its founder have provided restaurant related services before the Disputed Mark’s application date through restaurant introductions and guides in the famous “Michelin Red Guide” or the “Michelin Guide.” The relevant consumers were likely to associate the Disputed Mark with Michelin’s “MICHELIN” mark when seeing the Disputed Mark used on “juice, non-alcoholic fruit drinks” related goods. Such use of the Disputed Mark would further harm the close association between Michelin’s “MICHELIN” mark and tire related goods, dilute the “MICHELIN” mark’s distinctiveness, and damage Michelin’s interests.

3. Shell prevailed against Bei Ke in a trademark infringement and unfair competition case for RMB 5.5 million

Shell Brand International AG and Shell (China) Co., Ltd. (together as “Shell”) sued Bei Ke Lubricant (Beijing) Co., Ltd. (“Bei Ke”) before the Beijing Intellectual Property (“IP”) Court alleging trademark infringement and unfair competition. The Beijing IP Court held that Bei Ke infringed upon Shell’s exclusive trademark right and unfairly competed with Shell by using a trade name similar to Shell’s trade name for company registration. Bei Ke’s use was likely to cause confusion to the relevant public that both companies were associated. The Beijing IP Court ordered Bei Ke to immediately stop all infringing and unfair competition activities and pay statutory damages of RMB 5 million (USD 772,000) and reasonable legal cost of RMB 500,000 (USD 77,200). 

4. Adisco ordered to pay Adidas RMB 500,000 in damages

Adidas AG and Adidas International Marketing B.V. (together as “Adidas”) sued Putian Adisco Trading Co., Ltd. (“Adisco”) and two other individuals for infringing Adidas’ famous three stripes logo. The first instance court found that Adisco’s mark consisted of three stripes and “adisco” that was likely to cause relevant consumers to confuse or mistaken that Adisco’s goods were associated with Adidas. The court held that Adisco infringed upon Adidas’ trademark right and ordered RMB 500,000 in damages. The second instance court, the Liaoning High People’s Court, affirmed the first instance court’s rulings. The second instance court further found that although consumers can distinguish the sources of Adisco’s goods from Adidas’ goods by the price differences, such differences would no longer present once consumers wore the sneakers, that is, the likelihood of confusion may still rise after the point of sales. Adisco’s practice was likely to encourage others to infringing trademark rights by attaching various means to the goods itself that ultimately damage the trademark rightsholder’s legitimate rights.

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