Weekly China Trademark News Updates

June 28, 2022

1. SEIKO won a RMB 10 million trademark infringement and unfair competition lawsuit against three infringers

The Guangzhou Intellectual Property (“IP”) Court rendered a favorable decision for SEIKO HOLDINGS CORPORATION (“Seiko”) against Guangxi Tianrui Precision Electronics Co., Ltd. (“Guangxi Tianrui”), Hunan Tianrui Precision Technology Co., Ltd. (“Hunan Tianrui”), and Guangzhou Qianding Import and Export Trading Co., Ltd. (“Guangzhou Qianding”) on trademark infringement and unfair competition disputes. The court held that the defendants infringed Seiko’s trademark and their acts amounted to unfair competition, and the defendants were ordered for RMB10 million (USD1.49 million) in damages.

Seiko’s Trademarks

Seiko owns the “SEIKO” and “SEIKO in Chinese” trademarks in Class 14 for clocks and watches. Guangzhou Qianding marked “JAPAN TIMERTSE-SEIKO,” “Made by Japan Tianrui Seiko Co., Ltd.” and other logos on the watch movements and product packaging boxes of the accused infringing products sold by “Qianding International Movement Sales Department.” The defendants jointly operated www.timerisseiko.com website and used the “TRSEIKO” logo on the relevant pages. Guangxi Tianrui use the “TRSEIKO” logo in a show in Shenzhen. Guangxi Tianrui and Hunan Tianrui both prominently used “TRSEKO” on its background walls. Both trade names of Guangxi Tianrui and Hunan Tianrui consisted of “SEIKO in Chinese.”

The first instance court held that the defendants were liable for trademark infringement and unfair competition. The defendants appealed to the Guangzhou IP Court. The Guangzhou IP Court affirmed the lower court’s decision that the defendants infringed Seiko’s trademarks and unfairly competed with Seiko. Regarding trademark infringement, the Guangzhou IP Court found that the defendants’ prominent use of “JAPAN TIMERTSE-SEIKO” and “TRSEIKO” was trademark use. The “JAPAN TIMERTSE-SEIKO” mark and the “TRSEIKO” mark constituted as similar marks with the “SEIKO” trademark. The alleged infringing products of the defendants were watch movements, which were of the same kind of goods as those approved for Seiko’s prior registered trademarks. Regarding unfair competition, the court reasoned that “SEIKO in Chinese” had certain reputation as a corporate name. Additionally, “SEIKO” also had certain reputation. Guangxi Tianrui and Hunan Tianrui were both competitors and should’ve known about Seiko’s “SEIKO in Chinese” mark, Seiko’s trade name, and its reputation and influence in the industry. However, the defendants insisted on registering and using Chinese and English corporate names consisting of “SEIKO” and “SEIKO in Chinese,” which was likely to cause others to believe that the alleged infringing products sold by the defendants came from Seiko, or that there were certain association between the defendants and Seiko. The defendants’ acts constituted as unfair competition and the defendants shall be jointly liable for their infringements.

2. The Supreme Procuratorate overruled the “M & MONALISA & Design” trademark that was previously invalidated

The decade-long controversy surrounding the “M & MONALISA & Design” mark (“Disputed Mark”) has recently been concluded. The Beijing High Court, acting as a retrial court, revoked the first and second instance decisions and affirmed the CNIPA’s decision that the goods of cooking utensils, pressure cookers (electric Pressure cookers), toilets (flush toilets), and toilets for the Disputed Mark owned by Mona Lisa Group Co., Ltd. (“Mona Lisa Group”) should be cancelled while the rest of the goods maintained.

Disputed Mark	Cited Mark

In November 2004, the Mona Lisa Group filed an application for the “M & MONALISA & Design” in Class 11 for lights; fans (air conditioning); faucets; lavatories (flush toilets); toilets; water purification equipment and machines; heaters and was approved in September 2008. In March 2012, Guangzhou Mona Lisa Building Materials Co., Ltd. (“Building Materials Co.”) and Guangzhou Mona Lisa Sanitary Ware Co., Ltd. (“Sanitary Ware Co.”) filed an opposition against the Disputed Mark. The TRAB held that the Disputed Mark constituted as a similar mark with the “Mona Lisa in Chinese MonaLisa” mark and that the Disputed Mark’s designated goods for cooking utensils, pressure cookers (electric pressure cookers), toilets (flush toilets), and toilets shall be cancelled, and the rest of the goods maintained. The Mona Lisa Group appealed and the Beijing First Intermediate Court overruled the TRAB’s decision. The TRAB, Building Materials Co., and Sanitary Ware Co. appealed. In June 2016, the Beijing High Court rendered a second instance decision that rejected the appeal and affirmed the first instance court ruling. Subsequently, the the Building Materials Co. and the Sanitary Ware Co. petitioned to the Supreme Procuratorate for review. The Supreme Procuratorate reviewed the case and filed a protest to the Supreme Court in accordance with the law. Accordingly, the Supreme Court ordered the Beijing High Court to retry the case. In June 2022, the Beijing High Court revoked the first and second instance decisions and held that there were errors in the determination of the facts and the application of the law and shall be revoked.

The question presented in the retrial was the issue of similar products. Whether “bathroom (flush toilet), toilet” goods approved and used by the Disputed Mark and the “steam bath equipment, sauna equipment, portable Turkish bath, bathroom fixtures” have functions and uses of bathroom equipment. The court reasoned that the said items existed in the bathroom decoration market and were generally placed in the same or adjacent sales area. In terms of consumers, their consumer groups were consumers who have the need to buy bathroom equipment. Therefore, the items shared identical functions, uses, sales channels, and consumers, and shall constitute as similar goods. Regarding the issue of similarity, the Disputed Mark was composed of the letters “M”, “MONALISA” and a design, and the cited mark was composed of the Chinese characters of “Mona Lisa in Chinese” and the letters “Mona Lisa.” Although the letter M in the Disputed Mark occupied a more prominent area of ​​the mark, both the Disputed Mark and the cited mark contained the letter “MONALISA,” which were identical in letter composition. The Chinese translation of “MONALISA” in the Disputed Mark was “Mona Lisa in Chinese.” From the pronunciation point of view, the Disputed Mark would be pronounced as “Mona Lisa in Chinese” by the relevant public, which was identical with the cited mark’s “Mona Lisa in Chinese” Therefore, the Disputed Mark and the cited mark constituted as similar marks in terms of composition, pronunciation and other elements that formed the marks.

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