Weekly China Trademark News Updates

March 22, 2021

1. China’s First!  Brita won against an infringer who abused the administrative proceedings

Brita GMBH (“Brita”) sued Shanghai Kangdian Industrial Co., Ltd. (“Kangdian”) for trademark infringement and unfair competition and requested for economic loss and reasonable legal costs.

The court found Kangdian infringed upon Brita’s trademark rights by labeling marks that were identical or similar to Brita’s “BRITA” or “BI RAN DE in Chinese (碧然德)” trademarks on its product testing reports, product packaging, and brochure, and by selling its products through WeChat and online platforms. Kangdian self-claimed itself on its WeChat account and online stores as “BI RAN DE Official Flagship WeChat” and “BRITA BI RAN DE Official WeChat Mini Program,” and widely promoted Brita’s brand stories and advertisements. Kangdian’s conducts amounted to unfair competition. The court also found that Kangdian squatted Brita’s trademarks and abused trademark opposition proceeding amounted to unfair competition. Specifically, Kangdian filed trademark applications for marks identical or similar to Brita’s trademarks in Classes related to Brita’s products. Subsequently, Kangdian utilized its trademark rights in trademark opposition and invalidation proceedings to disrupt and hinder Brita’s use of its trademark rights. The court reasoned that Kangdian’s trademark infringements and unfair competition conducts were only parts of its extensive and comprehensive infringing conducts. Kangdian’s purpose was to free riding on Brita’s popular goodwill and create impediments to interfere with Brita’s general business operations, progressively destroy Brita’s competitive advantage while raising its own competitive edge. Kangdian acted with obvious bad faith.

The case number is (2017) Hu 0112 Min Chu No. 26614.

2. Louis Vuitton recognized as a well-known mark

Louis Vuitton Malletier (“LV”) sued Guangzhou Ruiwang Leather Co., Ltd. (“Ruiwang”) and Rui Wang (together as the “Defendants”) for trademark infringement.

Disputed Mark	Cited Mark

The Defendants argued that the Disputed Mark with Registration Number 11724660 and other involved marks were valid trademarks. The Defendants further argued that this case shall not be docketed because this was not a trademark infringement case but an administrative dispute over trademark registration. The court applied Article 11 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Well-Known Mark Protection (“Interpretation”) in its findings, which states that if a registered trademark used by the defendant violates the provisions of Article 13 of the Chinese Trademark Law and the plaintiff’s well-known trademark is copied, imitated, or translated, which constitutes an infringement of the trademark right, the people’s court shall legally order the defendant to cease using that mark according to the plaintiff’s request. In this case, LV submitted sufficient evidence to prove that before the Disputed Mark’s application date, LV’s Cited Mark had achieved well-known status. The Disputed Mark’s use on handbags and purses were identical in nature to the Cited Mark’s approved goods of bags, backpack, handbags, fur, artificial leather, suitcase, etc. The Disputed Mark were also identical to the LV’s Cited Mark in terms of font style. Both marks’ design and overall appearance were also highly similar. The Disputed Mark constituted as a copy of the Cited Mark. Moreover, LV’s Cited Mark had been used in China for years and had achieved well-known status. Under such circumstances, the Disputed Mark’s use was likely to cause the relevant public to be confused as to the source of goods and associate the Disputed Mark with LV’s well-known mark, dilute LV’s market reputation and damage LV’s interests. The second instance court ruled in favor of LV and ordered a damage of RMB 500,000 (USD 76,800).

The case number is 2019 Yue Min Zhong No. 1857.

We have published three articles on well-known mark recognition in China in the following links for your reference.

• Well-Known Mark Recognition in China Part I
• Well-Known Mark Recognition in China Part II
• Well-Known Mark Recognition in China Part III

 3. The Supreme People’s Court released Typical Cases of Punitive Damages in Intellectual Property Infringement

The Supreme People’s Court (“SPC”) recently released the Typical Cases of Punitive Damages in Intellectual Property Infringement to guide lower courts in applying the Interpretation of the SPC on Applying Punitive Damages in Intellectual Property Infringement Adjudications (“Interpretation”), and ensure proper implementation of the “Interpretation.” Among the released cases, we found the following Adidas case to be noteworthy.

Adidas sued Guoqian Ruan and Yongyi Ruan (“Defendants”) for trademark infringement and to immediately stop infringement, destroy infringing goods, and pay economic loss and reasonable legal costs.

The court found that Adidas’ “Adidas” trademark series enjoyed high fame through long term use and promotion in China. The Defendants owned Rui An Zhengbang Shoes Co., Ltd. (“Zhengbang”) that manufactured shoes labeled “Adidas” marks infringed upon Adidas’s trademark rights. The local Market Supervision Administration’s record for punishing Zhengbang multiple times for infringing Adidas’s trademark rights proved that Zhengbang had obvious bad faith. For this reason, the court supported Adidas’s claim for treble punitive damages and reasonable costs and ordered the Defendants to pay RMB 1.07 million (USD 164,400) in damages.

The case number is (2020) Zhe 03 Min Zhong No. 161.

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