Weekly China Trademark News Updates

July 20, 2022

1. The Shanghai High Court: strengthen commercial logos protection and serve to ensure trademark brand development strategy

On July 13, the Shanghai High Court held a press conference to release the “Opinions on Strengthening Intellectual Property Trial Work in the New Era to Provide Strong Judicial Services and Guarantee for the Construction of a Strong Intellectual Property City.“

The Opinions has 23 articles in four sections, of which the second section proposes specific measures to strengthen judicial protection of intellectual property rights and service guarantee for the construction of Shanghai’s “Five Centers” from the perspective of impartial justice. To us, Article 6 in Section 2 is worth particular notice:

6. Strengthen the protection of commercial logos and serve to ensure trademark brand development strategy. Severely crack down on trademark violations of counterfeit face masks, disinfectants and other anti-epidemic materials during the pendemic prevention and control period, increase damages and compensation for civil infringement in accordance with the law, and increase penalties for crimes. Strengthen judicial protection of famous and high-quality brands in accordance with the law, increase infringement costs, and ensure the implementation of trademark and brand development strategies. …Increase the judicial protection of geographical indications, accurately understand the rules for distinguishing the legitimate use of geographical names and geographical indications from infringements, and promote the organic integration of geographical indications with the development of industries with special characteristics, ecological civilization constructions, and rural revitalizations. …Properly handle conflicts between trademark rights and prior rights such as copyrights, enterprise name rights, and influential product (service) names, and resolutely curb bad faith trademark registration and trademark hoarding that are not intended for use in a scientific and reasonable manner, define the boundaries and protection scope of trademark rights.

2. The State Council held a press conference on intellectual property-related work statistics in the first half of 2022

The State Council Information Office held a press conference on July 12 in Beijing on the statistics of intellectual property-related work in the first half of 2022. The data shows that as of the end of June, China had 3.906 million valid invention patents, 40.545 million valid registered trademarks, more than 19,000 market entities approved to use special signs for geographical indications, and a total of 74,000 applications for the registration of integrated circuit layout designs.

Of particular concern is the expansion of the geographical indication industry. As of the end of June 2022, there were more than 19,000 market entities approved to use special signs for geographical indications in China, an increase of more than 6,000 year-on-year. The scope of the pilot reform of special marks for geographical indications has been expanded from 12 provinces to 20 provinces, involving 1,951 products, accounting for 82.9% of the total number of domestic geographical indication protection products.

The number of market entities using special signs for geographical indications has continued to increase, and the application and approval procedures for the use of special signs have been continuously optimized, which have played an important role in driving the development of local industries with special characteristic and promoting rural revitalization.

Recently, the General Affairs Office of the China National Intellectual Property Administration (CNIPA) released the “Notice on Launching the Second Batch of Reform Pilots for the Approval of the Use of Special Signs for Geographical Indications and Continuing to Deepen the First Batch of Reform Pilots,” with a view to further enhancing the facilitation of applications for the use of special signs for geographical indication products, continue to reduce the approval cycle in order to more efficiently meet the needs of geographical indication manufacturers to use the marks, so that the results of the pilot benefit a wider range of market players.

3. Zegna prevail in the second instance court to revoke both the first instance judgment and CNIPA decision

CONSITEX S.A., the owner of trademarks “ZEGNA,” “Ermenegildo Zegna,” and “Zegna” in China, filed an invalidation action against “JOHNZEGN” registered on “school bags, backpacks, pocket wallets, etc.” in Class 18 based on both relative and absolute grounds.

Neither the TRAB nor the Beijing IP Court supported Consitex, so Consitex appealed to the Beijing High Court.

The Beijing High Court has recently rendered the second instance judgment supporting the relative grounds and ruled to invalidate the disputed mark.

Regarding the marks’ similarity, the court found that:

First, the Disputed Mark’s approved goods constituted as identical or similar to the “handbag” approved for use for the Cited Mark 1, the “wallets” approved for use for the Cited Mark 2, and the “folders (leather)” approved for use for the Cited Mark 3 in terms of function and use, target consumers, and sales channels.

Second, the Disputed Mark is a word mark consisted of “JOHNZEGN,” of which “JOHN” is a common English name and “ZEGN” has no fixed meaning. The Cited Marks 1 to 3 were “ZEGNA,” “Ermenegildo Zegna,” and “Zegna” respectively. In comparison of the said marks, it can be seen that the “ZEGN” part of the Disputed Mark and the Cited Mark 1 to 3 differ only in an individual letter in text composition, and it was completely included in the Cited Mark 2. If they were used together on the same or similar goods as mentioned, it would be easy to cause the relevant public to be confused or mistaken regarding the source of the goods.

Third, according to the ascertained facts, before the Disputed Mark’s application date, the trademarks “Ermenegildo Zegna” and “Zegna” under the name of Consitex had obtained certain fame in China for “wallets” and other goods in Class 18. “Zegna” has formed a stable corresponding relationship with its Chinese translation “Jie Ni Ya in Chinese,” and the Disputed Mark’s registrant not only applied for the registration of the Disputed Mark that was similar to the said Cited Marks on identical or similar goods, but also used “Jie Ni in Chinese” in its corporate name without providing a reasonable explanation. Taking the above factors into consideration, it should be determined that the Disputed Mark and the Cited Marks 1 to 3 have constituted similar trademarks used on the same or similar goods. The first instance judgment erred and should be corrected. The relevant lawsuit claims of CONSITEX S.A. were established and this court supported their claims in accordance with the law.

It is noteworthy that, during the second instance court proceeding, the Disputed Mark had been published as being cancelled due to three-year non-use.

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