Weekly China Trademark News Updates

June 22, 2022

1. “Da Yue Cheng” won RMB 1.24 million in a trademark infringement retrial case against “Jianfa Da Yue Cheng”

The Beijing High Court recently handed down a trademark infringement retrial decision for China National Cereals, Oils and Foodstuffs Corporation (“COFCO”) and Joy City Commercial Management (Beijing) Co., Ltd. (“Joy City”) against the respondent Yinchuan Jianfa Group Co., Ltd. (“Jianfa”), Ningxia Yuecai Commercial Group Co., Ltd. (“Yuecai”) and Beijing Soufun Technology Development Co., Ltd. (“Soufang”).

Disputed Mark	Cited Mark
Reg. No. 18047215 Class 35 Reg. No. 30652633 Class 36	Reg. No. 7209417 Class 35 Reg. No. 6345086 Class 36

The first question in dispute was whether Jianfa and Yuecai should stop using the “Jianfa Da Yue Cheng” and “Da Yue Cheng” logos for “commercial house sales, real estate management, real estate leasing, and selling services for others. The court found that that COFCO and Joy City’s trademark rights were valid and had the necessary rights to sue the respondents. Yuecai’s trademarks “Jianfa Da Yue Cheng” in with reg. nos. 18047215 and 30652633 were invalidated and deemed as never existed on the trademark registry, which rendered the question of trademark right dispute moot. COFCO and Joy City’s evidence can prove that the Jianfa and Yuecai’s use of “Da Yue Cheng” and “Jianfa Da Yue Cheng” on its WeChat public account, shopping mall posters and other publicity materials constituted as an infringement of the trademark “Da Yue Cheng” with reg. no. 7209417 owned by COFCO and Joy City. COFCO and Joy City’s evidence can also prove that Jianfa and Yuecai used the logos of “Da Yue Cheng” and “Jianfa Da Yue Cheng” in the commercial activities such as the sales, operation and publicity of the real estate project involved, which constituted as an infringement against COFCO and Joy City’s trademark “Da Yue Cheng” with reg. no. 6345086. Jianfa and Yuecai shall bear the legal responsibility for stopping infringement, compensating for losses and eliminating the impact. The claims of Jianfa and Yuecai that the trademarks “Da Yue Cheng”, “Jianfa Da Yue Cheng” and “Da Yue Cheng” were obviously different and did not constitute similar trademarks, and the fact that the registered trademark of Yuecai was declared invalid was not tried in the second-instance litigation, so this court does not have the right to review such claims. Moreover, the claim that the order to stop using the logos of “Da Yue Cheng” and “Jianfa Da Yue Cheng” will cause harm to social and public interests lack factual and legal basis and cannot be supported. COFCO and Joy City requested for an order to stop only the commercial activities carried out by Jianfa and Yuecai for the purpose of obtaining profits. The claim that the use of “Da Yue Cheng” and “Jianfa Da Yue Cheng” by Jianfa and Yuecai for the purpose of the public and resident were not within the scope of this case.

The second question in dispute was whether Jianfa and Yuecai should compensate COFCO and Joy City for economic losses of RMB1.46 million (USD218,141). The court found that although the retrial determined that the use of the “Jianfa Da Yue Cheng” logo by Jianfa and Yuecai constituted infringement, COFCO and Joy City did not provide evidence to prove their actual losses from the infringement, and no evidence was provided to prove that the benefits obtained by Jianfa and Yuecai, and the use of the “Jianfa Da Yue Cheng” logo in the “selling for others” service caused more damages to COFCO and Joy City than the amount of compensation determined in the first-instance judgment. Considering the popularity of the “Da Yue Cheng” trademark, the location, scale and price of the real estate, the nature of infringement, circumstances, and subjective faults of Jianfa and Yuecai, as well as the use of “Jianfa Da Yue Cheng” and “Da Yue Cheng” had basically the same infringing activities, the court affirmed the compensation amount of RMB1.2 million (USD179,294) determined in the first-instance judgment, and the execution of the payment had been completed. The claims of COFCO and Joy City for compensation of RMB1.46 million (USD218,141) lacked factual and legal basis, and were not supported. At the same time, the claims of Jianfa and Yuecai that the amount of compensation determined in the first-instance judgment was too high also lacked basis and were not supported.

In addition, there is no clear evidence to prove that SouFun had a cooperative relationship with Jianfa and Yuecai, and directly engaged in and participated in the joint sale of the real estate projects involved, and COFCO and Joy City did not take down the relevant alleged infringement information notice on the website of SouFun prior to the first-instance, thus, COFCO and Joy City claimed that SouFun assisted Jianfa and Yuecai to carry out the infringement, which constituted the claim of assistance in infringement, lacked factual and legal basis and could not be supported according to the law. However, as of the first-instance trial date, SouFun had not performed its reasonable duty of care when it was known that the relevant information was suspected of infringement to promptly delete or temporarily remove the information that may put COFCO and Joy City in further risk. Soufun was at fault for this and should bear the legal responsibility to delete the relevant infringing information and eliminate the impact.

The first-instance judgment stated that SouFun should immediately delete the information about the real estate involved with the above-mentioned logos on the SouFun website it operated, and that JianFa, Yuecai, and SouFun should jointly perform a written statement in a prominent position on the homepage of SouFun.com and Sina Leju.com in order to eliminate the adverse impact on COFCO and Joy City, as well as the judgment that Jianfa and Yuecai should compensate COFCO and Joy City for a reasonable expenditure of RMB40,000 (USD6000) and the above judgment was not inappropriate. The said first-instance court orders have been executed and this court affirmed.

2. Penfold successfully invalidated a squatted mark

The Beijing High Court recently dismissed a trademark invalidation case involving the appellant Jinan Chuangqun Trading Co., Ltd. (“Chuangqu”), the appellee the CNIPA, and the third party in the original trial, Southcorp Brands Pty Limited. The appeal was dismissed, and the original judgment was affirmed.

Disputed Mark	Cited Marks
	CM 1  CM 6  CM 7  CM 8  CM 9  CM 10  CM 11

The dispute in this case was whether the Disputed Mark and the Cited Marks 1, 6 to 11 constitute similar trademarks used on the same or similar goods under Articles 30 and 31 of the 2013 Trademark Law. Since Chuangqun stated in the original trial that it had no objection that the Disputed Mark and the approved goods of the Cited Marks 1, 6 to 11 constituted as identical or similar goods, the key question of this case was whether the Disputed Mark constituted as a similar mark to the Cited Marks 1, 6 to 11. Here, the Disputed Mark is a word mark consisting of “Ben Fu Bin Zhi in Chinese”. The Cited Mark 1 composes of “Ben Fu in Chinese”; the Cited Mark 6 composes of “Ben Fu Ge Lan Qi in Chinese”; the Cited Mark 7 composes of “Ben Fu Kolan Shan in Chinese”; the Cited Mark 8 composes of “Penfolds Luo Shen Shan Zhuang in Chinese”; the Cited Mark 9 composes of “PENFOLDS”; Cited Mark 10 and 11 compose of artistically processed “penfolds.” The Disputed Mark “Ben Fu Bin Zhi in Chinese” completely included the Cited Mark 1 “Ben Fu in Chinese” The Cited Marks 6 to 8 all contains “Ben Fu in Chinese” The Disputed Mark sounded similar to “PENFOLDS” in the Cited Marks 9 to 11. The Disputed Mar was similar to the Cited Marks 1, 6 to 11 in terms of text composition, pronunciation, meaning, etc. If they were used together on the same or similar goods, the relevant public will easily believe that the source of goods came from one entity or that the two entities were associated when paying general attention. The evidence submitted by Chuangqun was also insufficient to prove that before the filing date of each Cited Mark, the Disputed Mark had been used to a certain degree and was sufficiently well-known to be distinguishable from the Cited Mark. Therefore, the Disputed Mark and the Cited Marks 1, 6 to 11 constituted as similar marks used on identical or similar goods. The registration of the Disputed Mark violated Articles 30 and 31 of the 2013 Trademark Law and shall be declared invalid. The original judgment was correct, and Chuangqun’s relevant grounds for appeal could not be established and should not be supported

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