Weekly China Trademark News Updates

July 5, 2022

1. Giorgio Armani was awarded RMB 1 million in damages against trademark infringers

The Guangzhou Baiyun District Court made a first-instance judgment on April 1, 2022 in favor of GIORGIO ARMANI S.P.A. (“Armani”) against the defendants Guangzhou Lideng Watch Co., Ltd. (“Lideng”), Deng Zhiwen, Guangzhou Deng Wenshuai Trading Co., Ltd. (“Deng Wenshuai”) in a trademark infringement dispute, ordering the defendants to immediately stop the infringement, cancel the domain names of www.lidenamani.com and www.lidenamani.cn, and jointly compensate Armani for economic losses and reasonable expenses of RMB 1 million (USD149,000).

The defendants operated an online store to sell the alleged infringing products of belts, which are identical with the approved goods of Armani’s “ARMANI,” “Armani in Chinese” and “ ” trademarks. The said Armani marks enjoyed high fame and influence. The defendants Lideng and Deng Wenshuai claimed that its products were “originate from Italy,” which was likely to cause the relevant public to confuse or mistaken regarding the source of the alleged infringing goods when paying general attention, or believe that there was special connection between the source of the goods and Armani’s goods labeled with its marks. Moreover, the defendants’ marks “LIDENAMANI,” “Lideng Armani in Chinese,” and “” constituted as similar marks to Armani’s marks on identical or similar goods. The defendants’ marks had been declared void. Therefore, the defendants’ use of its marks constituted as trademark infringement.

The defendants Lideng and Deng Wenshuai advertised that the goods for investment promotion were leather products such as belts and leather shoes through their websites under the domain names of “lidenamani.com” and “lidenamani.cn” respectively. The defendants’ promoted products were identical with the approved goods of Armani’s “ARMANI” mark. The defendants, Liden and Deng Wenshuai, and the plaintiff, Armani, all operate businesses in the same industry. The defendants should be familiar with the market influence of the “ARMANI” logo and its commercial value. Therefore, the court found that the defendants Liden and Deng Wenshuai did not use the domain names “lidenamani.com” and “lidenamani.cn” justifiably.

Regarding the determination of the amount of compensation, in view of the fact that the period of sales data obtained by this court was three years, this sales data was lower than the cumulative number of comments on the sales pages, the number of group orders, and the number of transactions displayed on the store, which cannot fully reflect the transaction of the store involved. Armani requested to use the number of comments as sales reference and this court agreed. This court comprehensively considered the popularity of Armani’s registered trademarks involved (with high influence), its trademark numbers (three), the subjective fault of the three defendants (bad faith infringement), the form of infringement (production and sale of the accused infringing products through online platforms, joint Infringement), period (longer time), consequences (the product of the number of reviews of the defendants’ store and the cumulative sales number was RMB5.7 million (USD852,000), and the reasonable expenses paid by Armani to stop the infringement, the three defendants were jointly liable for trademark infringement and should compensate Armani for RMB 1 million (USD149,000) (including reasonable expenses).

2. Recycled beer bottle infringed the “TSINGTAO BEER in Chinese” mark owned by Tsingtao Beer

In March 2020, Tsingtao Brewery (Rongcheng) Co., Ltd. (“Tsingtao Brewery”) filed a complaint to the Weihai Market Supervision and Administration Bureau, reflecting that a company in Weihai (hereinafter referred to as the respondent) infringed the exclusive rights to the registered trademarks of “Tsingtao Beer in Chinese” and “TSINGTAO.” Tsingtao Brewery has registered the “Tsingtao Beer in Chinese” mark and the “TSINGTAO” mark in Class 32 for “beer” and other goods. Tsingtao Brewery’s bottles all embossed with “Tsingtao Beer in Chinese” and “TSINGTAO” on the neck of bottles. The respondent used the recycled bottles as its beer containers for beer that he produced for a long period of time. Among the respondent’s beers, the respondent sold the 600ml beer bottles with its own packaging and trademarks without covering the “Tsingtao Beer in Chinese” and “TSINGTAO” marks on the neck of the bottles.

In the process of beer production and sales, the respondent used recycled beer bottles with embossed texts of “Tsingtao Beer in Chinese” and “TSINGTAO” as its own beer containers but fails to effectively block the embossed words “Tsingtao Beer in Chinese” and “TSINGTAO” on the bottle neck. Despite that it had placed its own trademark and packaging, such acts were likely to cause the relevant public to misunderstand the source of the goods, or mistakenly believe that the respondent was related to Tsingtao Brewery. The respondent’s acts infringed upon Tsingtao Brewery’s trademark rights to its “TSINGTAO” trademark. The respondent was ordered to immediately stop the infringement and was imposed an administrative penalty of RMB30,000 (USD44,814).

3. The Shanghai High Court, the Shanghai People’s Procuratorate, and the Shanghai Public Security Bureau co-signed the “Regulations on Adjusting the Jurisdiction of Intellectual Property Criminal Cases in Shanghai,” the Shanghai High Court issued the “Regulations on Adjusting the Jurisdiction of Shanghai Courts in Intellectual Property Civil and Administrative Cases,” both of which will come into force on July 1, 2022

The partial provisions are summarized as follows.

The Shanghai Intellectual Property Court has jurisdiction over first-instance civil and administrative cases involving patents, new plant varieties, layout designs of integrated circuits, trade secrets, computer software ownership, infringement disputes, disputes over the recognition of well-known trademarks, and monopoly disputes. Act as the appeals court for administrative actions of the local people’s government’s decision involving copyrights, trademark rights, unfair competition, etc., and for administrative actions of the Customs involving trademark rights, copyrights, and patent rights.

The Shanghai High Court has jurisdiction over first-instance intellectual property civil cases and major and complex first-instance intellectual property administrative cases that have significant influence within its jurisdiction. First-instance for cases involving more than RMB200 million (USD29.8 million) in claims, or invention patents, utility model patents, new plant varieties, integrated circuit layout designs, trade secrets, computer software ownership, infringement disputes and monopoly disputes involving foreign affairs, Hong Kong, Macao, and Taiwan, and where one of the parties is domiciled outside the jurisdiction with more than RMB100 million (USD 14.9 million). Other first-instance intellectual property civil cases with more than RMB 5 billion (USD747 million) in claims.

First-instance civil and administrative intellectual property cases heard by the district people’s courts should be appealed to the Shanghai Intellectual Property Court. Cases heard by the Shanghai Intellectual Property Court should be appealed to the Shanghai High Court, except for cases that are appealed to the Intellectual Property Tribunal of the Supreme People’s Court according to the law.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China