Weekly China Trademark News Updates

June 30, 2021

1. “China Pacific Insurance Company in Chinese CPIC and Design” trademark was recognized as a well-known mark

The Beijing High Court redarned a second-instance judgment on an administrative dispute concerning trademark invalidation filed by the China Pacific Insurance Company (“CPIC”), and recognized that the “CPIC in Chinese CPIC and Design” trademark was well-known on “insurance” services, which successfully reversed the adverse invalidation decision and at the first instance court judgment.

The disputed trademark was filed by Ruiankang Technology Co., Ltd. (“Ruiankang”) on May 8, 2017, and approved for registration on September 7, 2018, for use on “hearing aid” in class 10. CPIC’s cited mark was registered on “insurance, insurance information” and other services in class 36.

During the invalidation proceeding, the CNIPA found that the evidence in the case was insufficient to prove that the cited mark is well-known to the relevant public, and there were obvious differences between hearing aid goods and insurance services. The disputed trademark’s validity was untouched. CPIC was unsatisfied and appealed to the Beijing IP Court. The Beijing IP Court found that although the disputed trademark constituted a copy or imitation of the cited mark, the disputed mark’s approved use on “hearing aid” and the famous “insurance” services of which the cited mark relied on were somewhat different. Thus, the two marks were not similar. Considering the low relevance between the two marks, the court found there is no need to evaluate whether the cited mark has achieved well-known status and rejected CPIC’s appeal.

CPIC appealed further to the Beijing High Court. The Beijing High Court found that the evidence in the case can prove that the cited mark achieved well-known status in the “insurance” service before the disputed mark’s application date. The disputed mark was identical with the cited mark, which constituted as a copy. Although according to the Classification of Similar Goods and Services the disputed mark approved for “hearing aids” was not similar with the cited mark approved for “insurance” service of which CPIC relied on for its well-known service, the consuming public of the two marks crossed and have certain association. The relevant public of the cited mark would be confused to believe that the disputed mark’s goods provider has certain association with the cited mark’s service provider. Even without considering the degree of association between the goods and services mentioned, the disputed mark’s application improperly exploited the goodwill of CPIC’s well-known mark, dissected the well-established association between CPIC and the “insurance” services approved for the cited mark, weakened the cited mark’s distinctiveness, and damaged CPIC’s interests. Accordingly, the disputed mark violated Article 13 Paragraph 3 of the Chinese Trademark Law.

There are two types of cross-class protection of well-known marks, including cross-class protection of well-known marks based on confusion of the relevant public, and cross-class protection of well-known marks based on dilution of the well-known mark’s distinctiveness without confusing the relevant public. For more information on well-known marks, please refer to our previous trademark series on our website.

2. Unauthorized use of New Balance’s “N” logo amounted to unfair competition

The Beijing IP Court affirmed the first instance court judgment regarding an unfair competition lawsuit between New Balance Trade (China) Co., Ltd. (“NB”) and Jiangxi Xinbailun Sports Goods Co., Ltd. (“Jiangxi Xinbailun”), Guangzhou Xinbailun Leading Footwear Co., Ltd., Guangzhou Xinbailun Enterprise Management Co., Ltd. (together as “Guangzhou Xinbailun”) and its executive director and general manager Lelun Zhou.

In the first instance judgment, the Beijing Dongcheng District People’s Court found that the NB lacked evidence to support its claims that the “New Balance in Chinese” was an influential trade name or was a special name for the “New Balance” sneakers products. However, the uppercase bold “N” letters in the upper side of the shoes constituted as unique decoration. Thus, the use of the “N” logo on its sneakers products by Jiangxi Xinbailun and Guangzhou Xinbailun amounted to unfair competition for using unique decoration without authorization.

Regarding the amount of compensation, the first instance court considered the fame of NB’s sneakers, uniqueness of decoration, subjective bad faith of Guangzhou Xinbailun and Jiangxi Xinbailun, the nature, method, duration, influence area involving the unfair competition behavior, related products sales prices and other factors, and ordered Guangzhou Xinbailun and Jiangxi Xinbailun compensate NB for economic loss of RMB 1 million (USD 154,700) and reasonable costs of RMB 100,000 (USD 15,470).

Guangzhou Xinbailun and Jiangxi Xinbailun were unsatisfied with the judgment, and NB was unsatisfied with the court’s findings of “New Balance in Chinese” and the compensation amount ordered. All parties appealed the first instance judgment to the second instance court, the Beijing IP Court. The Beijing IP Court affirmed the first instance court’s judgment.

3. Xiaohongshu (Red Book) applied for the mark “Old Red Book,” where will its trademark series end?

Following a series of trademark applications using other colors to replace the “red” in its house mark “Xiaohongshu (little red book)” in 2015, and ending with other Chinese characters having the same sound of “SHU” but totally different meanings such as comb, vegetable, pivot, millet, etc. in 2019, Xiaohongshu recently filed various trademarks in June 2021 such as “Laohongshu (old red book),” “Xiaohongwu (little red house),” “Xiaohongyou (little red friend),” “Xiaohongquan (little red circle)” to further its defensive filings.

Xiaohongshu’s filing strategy is obvious, however, would it be subject to the “bad faith trademark application without the intent to use” as stipulated under Article 4(1) of the Chinese Trademark Law 2019? According to the Second Chapter in the latter part of the revised Trademark Review and Adjudication Standards we reported last week, Article 4 is not applicable to applications filed for defensive purposes, applications damage only a particular entity’s civil rights, or applications for future business with realistic expectations. We will continue to pay attention to the progress and introduction of the revised Trademark Review and Adjudication Standards.

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