Weekly China Trademark News Updates

July 27, 2021

1. Adidas successfully invalidated the “Yellow River Lotus” trademark with its prior copyrighted logo

In July 2021, the Beijing High Court made a final judgment on the administrative trademark invalidation of the “Yellow River Lotus” trademark, rejected the CNIPA’s appeal and affirmed the first instance judgment made by the Beijing IP Court.

The disputed trademark was filed by Fan County Huanghe Lotus Root Industry Farmers Professional Cooperative (referred to as the “Yellow River Lotus Root Cooperative”) for registration on June 3, 2009, approved on April 14, 2016, for goods “dry vegetables; cooking vegetable juice; pickle; pickled vegetables” and others. In November 2017, the original Trademark Review and Adjudication Board (“TRAB”) issued a ruling to maintain the disputed trademark. Adidas was dissatisfied and filed an administrative lawsuit with the Beijing IP Court. The Beijing IP Court found that the disputed trademark’s registration infringed upon Adidas’s prior copyrighted artwork and revoked the TRAB’s decision. Dissatisfied, the CNIPA appealed to the Beijing High Court.

Disputed Mark

Adidas’ Copyright Artwork

The Beijing High Court found that Adidas’ “shamrock” design is composed of three fusiform leaves and is divided by three horizontal black and white lines, which reflected the creator’s choice and combination and has a certain originality. Adidas’ “shamrock” design constituted as artwork under the Chinese Copyright Law. Adidas’ cited trademark’s application date was earlier than the disputed mark’s filing date. Meanwhile, combined with the copyright registration certificate, the creation of the “shamrock” design, and the assignment oath, etc., it can be determined that Adidas is an interested party of the artwork’s copyright involved in this case. The design part of the disputed mark was highly similar in design style and form of expression with Adidas’ copyrighted artwork, the composition of the two was substantially similar. Meanwhile, Adidas had already used the “shamrock” design on clothing, shoes, and other goods before the disputed mark’s application date. After extensive publicity and use in China, Adidas’ “shamrock” design has gained a high fame, and there was a possibility that the Yellow River Lotus Root Cooperative has knew of Adidas’ copyrighted artwork. Under such circumstance, the Yellow River Lotus Root Cooperative still filed a design that was substantially similar to Adidas’ copyright artwork as a trademark without reasonable explanations. Its subjective nature could hardly be regarded as good faith. Therefore, the disputed mark’s registration infringed upon Adidas’ prior copyrighted artwork.

2. Schneider China won a RMB 3 million judgement against malicious and repeated trademark infringement

On July 21, the Beijing Chaoyang District Court heard a trademark infringement case involving Schneider China and fully supported Schneider China’s economic losses claim of RMB 3 million (USD 462,600).

In January 2013, Schneider China filed a complaint against the defendant Hangzhou Dongheng Company’s predecessor Hangzhou Schneider Electric Co., Ltd. (“Dongheng”) for trademark infringing, and using the “Schneider” brand name in corporate names and publicity before the Hangzhou Xiacheng District Court. Through mediation by the court, Dongheng ceased its infringement, changed its company name, and compensated Schneider China for economic losses and reasonable expenses of RMB 100,000 (USD 15,419).

The Beijing Chaoyang District Court’s investigation revealed that after the mediation concluded, Dongheng had since continued to use the “Schneider” trademark extensively in many places on its official website. Meanwhile, in the “China Supplier Network” operated by a technology company in Beijing, Dongheng also had a product display page which used a large number of Chinese and foreign trademarks of “Schneider/Schneider in Chinese” in the company and products introduction. The said use continued until 2019.

The Beijing Chaoyang District Court found that Dongheng’s use of the “Schneider” and “Schneider/Schneider in Chinese” logos on its website and web pages constituted trademark infringement. Considering that Dongheng was a repeated infringer, its subjective malice was obvious, the infringement duration was long, and the fame of Schneider’s trademark, the court full supported its compensation claim of RMB 3 million (USD 462,600).

3. Summary analysis of administrative litigation of trademark review and adjudication cases in 2020

In 2020, the Trademark Office’s review and adjudication departments have ruled a total of 358,300 cases and received a total of 14,977 first instance response notices. The number of first instance responses received accounted for 4.18% of the total number of adjudications, which basically leveled with the previous year. A total of 5,933 second instance response notices were received, a slight increase from last year.

The overall review cases loss rate of the Trademark Office’s review and adjudication departments in 2020 was 24.62%, and the actual loss rate after excluding cases with change in circumstances is only 9.8%, which was a significant drop from the actual loss rate of 13.9% in the previous year.

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