Weekly China Trademark News Updates

June 29, 2023

1. “Modern in Chinese” constitutes well-known mark on automobiles related goods and imitated mark is invalidated

Disputed Mark	Cited Mark

Henan Liyang Vehicle Industry Co., Ltd. (“Liyang”) filed an appeal against a judgment of the Beijing Intellectual Property Court for administrative trademark litigation on invalidation against the  “Modern Dream in Chinese-MODERN DREAM and Design” mark. On May 30, 2023, the Beijing High Court made a final judgment, rejecting the appeal and affirming the original judgment.

The court found that: if a trademark filed in different or dissimilar goods is a copy, imitation or translation of a well-known mark registered in China by others that misleads the public and may damage the interests of the registrant of the well-known mark, the registration shall not be granted and cannot be used. The following factors shall be considered in determining a well-known mark: (1) the degree of awareness of the mark by the relevant public; (2) the duration of use of the mark; (3) the duration, extent and geographical scope of any publicity work on the mark; (4)  the protection record that the mark is protected as a well-known mark; (5) other factors that make the mark well-known.

In this case, although the word  “Modern in Chinese” is an existing vocabulary, the Cited Mark “Modern in Chinese” has become well-known in automobiles and other goods before the Disputed Mark’s filing date through continuous publicity and use by Hyundai. The Disputed Mark is  “Modern Dream in Chinese-MODERN DREAM and Design,” which completely includes the Cited Mark “Modern in Chinese.” The two are similar in terms of text composition, call, and meaning. Goods such as electric bicycles approved for use by the Disputed Mark and automobiles and other goods approved for use by the Cited Mark belong to means of transportation and are similar in terms of product functions and consumer groups. The registration of the Disputed Mark is likely to mislead the public and make them mistaken the goods under the Disputed Mark are provided by Hyundai, or are associated with Hyundai, which may damage the interests of Hyundai and violate the said provisions of the China Trademark Law.

2. Both first and second instance courts recognized “Miaojie in Chinese” as a well-known mark and granted cross-class protection

Disputed Mark	Cited Mark

The CNIPA and Lianfeng Song appealed against the first-instance administrative judgment over an invalidation of the  “Miaojie in Chinese” mark. On May 22, 2023, the Beijing High  Court made a final judgment, rejecting the appeal and affirming the original judgment.

The court found that in view of the fact that the invalidation petitioner Tuo Pu Company filed an invalidation against the Disputed Mark on January 7, 2020, and it has been more than five years since the Disputed Mark’s approval date.  The issue in this case is whether the Disputed Mark achieves the well-known status and is not subject to the five-year time bar because of its bad faith.

The Disputed Mark  “Miaojie in Chinese” and the Cited Mark  “Miaojie” in Chinese are highly similar in character composition and overall appearance, except for the difference in the traditional and simplified characters of  “Jie in Chinese.” The Disputed Mark constituted a copy and imitation of the Cited Mark. In addition, although “carpet, bathroom anti-slip mat, anti-slip mat, etc.” approved for use by the Disputed Mark and the “saran wrap, etc.” approved for use by the Cited Mark belong to different classes in the CNIPA Classification, they are all daily necessities, and have a high degree of overlap in consumer groups and other aspects, and have a certain associations. Lianfeng Song, as an operator of daily necessities, is an operator in the same industry as Tuo Pu Company, and his application for registration of the Disputed Mark is basically identical to the Cited Mark shows obvious bad faith. Therefore, as the right holder of the Cited mark, Tuo Pu Company has the right to file an invalidation against the Disputed Mark without the five-year time bar.

Under the circumstances that the Cited Mark has constituted a well-known mark and the Disputed Mark constituted a copy or imitation of the Cited Mark.  The relevant public may easily think that the Disputed Mark and the Cited Mark are associated, which will weaken the distinctiveness of the Cited Mark or improperly use the market reputation of the Cited Mark. Therefore, the Disputed Mark shall be declared invalid on all goods approved for use.

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