Weekly China Trademark News Updates

March 15, 2023

1. The CNIPA issued the “Guidelines for Handling Administrative Intellectual Property Service Matters”

On March 10, 2023, the CNIPA issued the “Guidelines for Handling Administrative Intellectual Property Service Matters” that materialized the basis, application documents, and conditions when handling patents, trademarks, and geographic indications, etc. The purpose of the Guidelines aims at providing non-discriminatory administrative services in accepting applications, handling using identical standards, and realizing the convenience, speed, fairness, inclusiveness, high quality and efficiency of administrative services.

2. Hermes won RMB 2 million in damages – using “Hermes in Chinese” as a real estate name constitutes of trademarks infringement and unfair competition

Hermes International (“Hermes”) sued Shandong Hugang Jianye Real Estate Development Co., Ltd. (“Hugang Jianye”) for trademark infringement and unfair competition. The first instance court found that Hermes’ trademark “Hermes in Chinese” with reg. no. 1636601 and “” mark with reg. no. 1708652 are approved in Class 18 for “leather, leather bags, travel bags, harnesses” and so on.

Regarding trademark infringement, Hugang Jianye promoted “Hermes in Chinese Themed Apartments” on its “Huganghui” WeChat public account since January 2019. According to the evidence submitted by Hermes, the court comprehensively considered relevant public’s understanding to the Cited Marks, the time, duration, and geographical area of the actual use and promotional duration of the Cited Marks, and the Cited Marks’ multiple recognitions as a well-known mark prior to Hugang Jianye began using the Disputed Marks. The court found that Hermes has been continuously using its Cited Marks for 20 years and have extensively, broadly, and massively used, promoted, and marketed its Cited Marks. Hermes’ Cited Marks enjoy very high reputation and influence and are well-known to the public, which shall be recognized as well-known marks in Class 18 for leather bags, travel bags, and other goods. During its real estate construction and sales, Hugang Jianye used “Hermes in Chinese Themed Apartments” as its real estate’s name to promote and for sales. It highlighted the use “Hermes in Chinese” and “HERMES” in its building protective net, billboards on exterior walls, peripheral shielding boards. Hugang Jianye prominently used “HERMES” and “” on the large electronic screen outside of its sales center and exhibition stand. In the “Hermes in Chinese Themed Apartment” promotional pages, floor plans, and model room decoration, the “Hermes in Chinese”, “HERMES,” and “” logos were prominently used. Promotional articles, videos, and photos about “Hermes in Chinese Themed Apartments” were published on the WeChat public account of Hugang Jianye where the Cited Marks were prominently used. Hugang Jianye named the real estate as “Hermes in Chinese Themed Apartments” and prominently used the above-mentioned accused logo in commercial activities such as the construction, sales, exhibition and advertising of commercial housing, which played a role in identifying the source of goods, which fell under the provisions of the Trademark Law as trademark use. Through comparison, the “Hermes in Chinese” logo that was prominently used by Hugang Jianye was identical with Hermes’ Cited Mark. And the logo used by Hugang Jianye was also identical to Hermes’ Cited Mark. The “HERMES” logo used by Hugang Jianye was similar to the English letters in Hermes’ “” mark, which constituted as s similar mark. Consider Hermes’ Cited Marks have reached well-known status, relevant public can readily associated with Hermes’ and its brands upon hearing or seeing its Cited Marks. Thus, Hugang Jianye’s use of the Disputed Mark during construction, promotion, and sales for its real estate business activities was sufficient to confuse the relevant public that the disputed real estate came from Hermes or mistaken that Hugang Jianye has special connection or licensing relationship with Hermes. Moreover, Hugang Jianye directly used “Hermes in Chinese” as its apartment name for extensive promotion can be seen as to have subjective bad faith in taking advantage of other’s well-known mark and goodwill, which will diminish the distinctiveness of Hermes’ well-known mark, and unfairly exploited Hermes’ well-known marks’ market reputation, obtain unjustified interests, and damage Hermes’ legitimate interests. The court found that Hugang Jianye’s copy and imitation of Hermes’ well-known marks in different goods constituted as trademark infringement.

Regarding unfair competition, first, Hugang Jianye knew it did not have any license or connection with Hermes but deliberately emphasized the similarity or continuation relationship between its “Hermes apartment” and “Hermes” brand in terms of craftsmanship and design concepts. It also stated that the furniture and decoration in the apartment use Hermes brand and style products, and its behavior may mislead consumers into thinking that there is a connection between the two. Second, Hugang Jianye deliberately used words such as “French in Chinese,” “imported,” and “century-old luxury brand” in its publicity, and described the apartment involved as a luxury, thereby further deepening its connection with Hermes. Its intention to take advantage of Hermes’ popularity was extremely obvious. Third, combined with Hugang Jianye’s publicity and promotion of the project involved as “Hermes in Chinese Themed Apartment,” a large number of “Hermes” logos were used, and Hermes brand products, decorations and other behaviors were placed in the sales center and model rooms, these actions showed that it had the intention to mislead the relevant public. Therefore, Hugang Jianye’s publicity behavior is to promote products in ambiguous language or other misleading ways, which may easily cause confusion and misidentification of the relevant public. It was a misleading commercial publicity and constitutes unfair competition. Hugang Jianye used the Hermes classic orange design and classic logos such as the big “H” and horse design in the decoration of the apartment model room, and placed many Hermes products, which was enough to make the relevant public further mistakenly believe that the accused “Hermes Apartment” did come from Hermes or there was a specific relationship. The use of the above-mentioned logos or elemental products and decoration by Hugang Jianye was a comprehensive imitation of the trademark and brand of Hermes. Compared with simply using Heremes’ Cited Marks, Hugang Jianye’s use was more likely to cause confusion and misidentification to the relevant public, which further proves that its intention to cling to Hermes and the popularity of its trademark. Therefore, Hugang Jianye’s actions constituted as unfair competition that was enough to cause confusion.

Accordingly, the first instance court ordered Hugang Jianye to compensate Hermes economic loss and reasonable legal costs of RMB2 million (USD289,943). The second instance court later affirmed the first instance ruling.

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