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Weekly China Trademark News Updates
July 21, 2021
1. The Beijing High Court rejected a retrial petition filed by Beijing Wuyinliangpin against MUJI
On July 13, 2021, the Beijing High Court rejected a retrial petition filed by Beijing Miantian Textile Co., Ltd. (“Beijing Miantian”) against Muji (Shanghai) Commercial Co., Ltd. and Beijing Chaoyang Third Branch of Muji (Shanghai) Commercial Co., Ltd. (together as “MUJI”).
Beijing Miantian owns registered trademarks “Wuyinliangpin in Chinese” with registration numbers 1561046 and 7494239 in class 24 for “cotton textiles and towels.” These two trademarks were licensed to Beijing Wuyinliangping Investment Co., Ltd. for use in China. Ryohin Keikaku Co., Ltd. owns the following registered trademarks in China, the “MUJI” trademark with registration number 3545164 in class 24, the “Wuyinliangping in Chinese” mark in class 16 with registration number 4471270, in class 35 with registration number 4471277, and the “Wuyinliangping in Chinese and MUJI” mark in class 35 with registration number 1707559. Ryohin Keikaku Co., Ltd. licensed the said trademarks to MUJI for use in China. Beijing Miantian sued MUJI alleging that MUJI’s use of the “Wuyinliangpin in Chinese” mark on store signboard, header of the shopping receipt, and shopping bags infringed upon its registered trademarks “Wuyinliangpin in Chinese” with registration numbers 1561046 and 7494239 in class 24 for “cotton textiles and towels.”
The court found that MUJI’s use of the “Wuyinliangpin in Chinese” mark on its signboard shall be considered as use on selling general merchandise goods. The use of the “Wuyinliangpin in Chinese” logo on the header of the shopping receipt was the unified format of the shopping receipt provided by the store when selling goods, and did not specifically point to towels, quilts or other specific products. Such use still constituted as trademark use in providing general merchandise sales services. Except for the “Wuyinliangpin in Chinese and MUJI” logo on the outside, no other words were printed on the body of the disputed shopping bag. From the appearance, the disputed shopping bag cannot be seen to have a specific connection with the goods approved for use under the disputed trademarks in this case. Meanwhile, MUJI was authorized by its parent company, Ryohin Keikaku Co., Ltd., the right to use the “Wuyinliangpin in Chinese” trademark with registration number 4471270 in class 16 for packaging paper bags and other goods. The court found that MUJI’s use of the disputed trademarks on its store signboard, head of the shopping receipts, and shopping bags were trademark use in the process of sales services, which were not identical with or similar to the disputed marks’ approved goods and did not constitute as infringing on the disputed marks’ exclusive rights.
2. Huawei prevailed in the “Huawei Ark” trademark dispute
On July 5, the Beijing High Court rejected the second instance appeal between the CNIPA and Huawei and affirmed the first instance court’s decision.
Huawei Technologies Co., Ltd. (“Huawei”) applied for the “Huawei Ark” trademark with application number 37348881 on April 8, 2019 in class 38 for information transmission related services. The CNIPA cited “Huaxun Ark and design” with registration numbers 16987741, 21723380, and 22485505 and “Huaxun Ark” with registration number 31713645 in refusing the “Huawei Ark” from registration. Huawei appealed to the first instance court the Beijing IP Court.
|Huawei Ark||Huaxun Ark|
The Beijing IP Court found that the “Huawei” used in the “Huawei Ark” mark could be distinguished and would not cause confusion to the relevant consumer. The “Huawei Ark” mark and the cited marks did not constitute as similar marks use on identical or similar services. The Beijing IP Court ruled in favor of Huawei and ordered the CNIPA to reissue its refusal decision. The CNIPA appealed to the second instance court the Beijing High Court. The Beijing High Court found that although both the “Huawei Ark” and the “Huaxun Ark” contains the word “Ark,” however, ark usually means Noah’s ark, which was a non-distinctive coined word. The relevant consumer would primarily distinguish the two marks through the use of “Huawei” and “Huaxun” contained in the marks. “Huawei” and “Huaxun” had obvious differences in its calling, meaning, and composition, and they would not cause confusion to the relevant public as to the source of goods when used on identical or similar services, neither would the relevant public believe that they are serial mark from the same service provide, or otherwise associated. Therefore, the “Huawei Ark” did not constitute as similar mark with the cited marks on identical or similar services.
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