Weekly China Trademark News Updates

March 28, 2023

1. Several new regulations on applying for color protection in the Madrid Agreement came into effect on February 1, 2023

On February 1, 2023, the amendments to the “Rules for the Implementation of the Madrid Agreement Concerning the International Registration of Marks” and the “Administrative Regulations for the Implementation of the Madrid Agreement Concerning the International Registration of Marks” came into effect. The following content concerning the application for color protection is worthy of attention:

From February 1, 2023, color should be protected as a distinctive feature of a trademark in international registrations, and an applicant only needs to provide a representation in color of the trademark. Previously, if a basic trademark was represented in black and white, and the applicant wanted to protect the color in the international application, the applicant had to submit not only the black and white representation, but also the color representation corresponding to the black and white representation.

If there is a request for color protection in the basic trademark application, the applicant can still make this request in the international application. If the basic trademark application does not request color protection, but the international application requests color protection, then color protection in the basic trademark application must be requested, and the color protection in the international application must be consistent. If the basic trademark application protects the color or intends to protect the color, even if there is no corresponding color protection request, the applicant can still claim that the color is the distinctive feature of the trademark in the international application. In this case, the original intellectual property office shall certify the request.

There are other issues in this amendments that need attention: from February 1, 2023, when expressing the form of a trademark, the expression method is no longer “reproduction” (pattern), but “representation” (expression). Graphical representation is no longer required in international applications, and applicants may file applications for sound trademarks, combination trademarks or other types of multimedia trademarks presented in digital form, provided that the basic trademark application adopts the same representation format. For the format, refer to the World Intellectual Property Organization (“WIPO”) standards ST.67, ST.68 and ST.69, when a trademark is designated for protection in a Madrid Agreement member state, it is still subject to the trademark legislation of that country, and the member states can still request a pictorial representation in accordance with their respective domestic laws. If the provisional refusal is based on an earlier trademark, the corresponding national office can directly provide the expression of the earlier trademark in the notification or explain how to obtain the expression of the earlier trademark.

2. “Youku in Chinese” and two other “Youku” trademarks were recognized as well-known marks and given cross-class protection

Cited Mark 1	Cited Mark 2

Recently, the Ningbo Intermediate Court concluded a trademark infringement and unfair competition lawsuit between Youku Network Technology (Beijing) Co., Ltd. (“Youku Network”), Youku Information Technology (Beijing) Co., Ltd. (“Youku Information”) (collectively as “Youku”), and Taizhou Youde Technology Co., Ltd. (“Taizhou Youde”). The court found that the defendant’s acts constituted trademark infringement and unfair competition, and shall compensate economic losses and reasonable expenses of RMB400,000 (USD58,122).

The court found that from the perspective of the relevant public’s awareness of the trademark, Youku continued to use a large volume of “Youku in Chinese,” “youku,” the domain name “youku.com,” and the “Youku”  and “Youku and Youku in Chinese” trademarks on providing video services to the world. Youku has become one of the most famous  websites in China. Both Cited Marks are well-known among the relevant public and shall be recognized as have reached the status of well-known during the period when the alleged infringing acts occurred. The alleged infringing acts include using the words “Youku Education in Chinese” and “UCOOL Youku Education in Chinese” on the WeChat public account it operated, the door of its business premises, the bulletin boards in the store, external display boards, and leaflets. Therefore, without the permission of Youku, the defendant arbitrarily used the font and pronunciation of the main part of the Cited Marks, which constituted as copying the well-known mark or its main part and using it as a trademark on different or similar goods that misleads the public. Such use causes possible damage to the interests of the registrant of the well-known mark and constitutes trademark infringement. At the same time, Youku owns four other “Youku in Chinese” marks that are approved on goods and services that are related to education and training services used by the accused infringing marks in terms of functions, uses, and consumers. These similarities may easily confuse the relevant public. The distinctive part of the “Youku Education in Chinese” and “UCOOL Youku Education in Chinese” marks were identical to the four additional marks owned by Youku in terms of fonts and pronunciation, which was likely to cause the relevant public to misunderstand the source of the goods and believe that its source has a specific connection with the goods involved in the Cited Marks. Accordingly, the defendant’s behavior has infringed Youku’s registered trademarks.

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