Weekly China Trademark News Updates

March 7, 2023

1. The CNIPA commented on the Draft Amendment of the China Trademark Law at February routine press briefing

On February 22, the CNIPA held its routine press briefing where the CNIPA commented the following six points on the Draft Amendment of the China Trademark Law.

First, complying with the development requirements of the new era, which includes adding the new chapter “Conditions for Trademark Registration” to clarify registration requirements, strengthen trademark use, brand building, public services, etc.

Second, further maintaining social fairness and justice and the fair competition market order by means of, among others, clarifying the circumstances of bad faith trademark applications and legal responsibilities, introducing compulsory transfer of trademarks and public interest litigation systems, systematically regulating trademark squatting, stipulating the principle of prohibiting the abuse of rights, adding the system of counter-compensation for bad faith litigation, and defining the boundaries of trademark rights.

Third, optimizing the procedures for trademark authorization and confirmation so as to regulate repeated and cyclical registration of the same trademark that has existed for a long time, solve the problems of repeated cases, idling procedures, and low efficiency that have plagued practice for a long time, effectively protect the interests of right holders and consumers, and promote overall improvement of the quality and efficiency of trademark examination and trial.

Fourth, continuing to strengthen the obligation to use trademarks, with hopes to provide guidance to trademark registration to return to the system origin of “registration for use,” clear up idle trademarks, and solve the difficulties in obtaining trademark registration for market players.

Fifth, strengthening the protection of legal prior rights and well-known trademarks and to resolutely crack down on trademark infringement and unfair competition behaviors such as taking advantage of goodwill of famous brands, taking advantage of fame of famous brands, free-riding on famous brands’ popularity, and infringing on other people’s prior rights.

Sixth, enhancing the ability of collaborative governance in the field of trademarks via improving administrative law enforcement measures and increasing penalties for trademark violations, setting out access requirements for trademark agencies to improve service levels, strengthening the connection between administrative and judicial procedures, strengthening credit supervision and credit punishment, and purify the market environment.

2. Country Home invalidated squatter mark based on copyright

Country Home Product Inc. (“CHP”) tried to register its logo “” on lawn mowers and trimmers, etc. in China in April 2018, but was rejected due to a prior mark “” (“Disputed Mark”) registered by a Chinese national in August 2014.

CHP first filed a non-use cancellation against the Disputed Mark and later filed an invalidation on the last day of the five-year time limit. The validity of the Disputed Mark was sustained in the non-use cancellation. The CNIPA, however, found in the invalidation action that the Disputed Mark damage CHP’s prior copyright and invalidated it. The owner of the Disputed Mark appealed the case to the Beijing IP Court.

CHP participated actively  in the administrative lawsuit as a third-party. CHP provided additional evidence including its official website introductions and Chinese translation thereof, screenshots of promotional materials of CHP’s artwork on Facebook, use evidence submitted before the USPTO when CHP renewed its US registration of “DR” mark, promotional advertisements, media report, and other materials to prove its prior rights. CHP also provided the corporate information of a company owned by the Disputed Mark’s owner to prove that the Disputed Mark owner resided in the same industry as CHP and had access to CHP’s logo.

The Beijing IP Court found that CHP’s “DR” artwork constituted as a protectable artwork under the China Copyright Law. CHP has the prior copyright of its artwork. The Disputed Mark was nearly identical with CHP’s prior copyrighted artwork and the two are substantially similar. Under such circumstance, the Disputed Mark damaged CHP’s prior copyright and violated “other’s existing prior right” as stipulated in Article 32 of the China Trademark Law2013.

The Disputed Mark owner was not satisfied with the Beijing IP Court’s decision and further appealed to the Beijing High Court. The Beijing High Court rendered the final decision for this case on February 28, 2023.

The Beijing High Court found that: first, the artwork claimed by CHP consisted of DR in silver with an orange-red ball-shaped background, with the words “PROFESSIONAL POWER FOR HOME OWNERS” surrounding the said design in a sliver circle. Such design can be seen as original and has constituted as an artwork under the Copyright Law.

Second, product manual, trademark certificates, trademark use and other evidence submitted by CHP can be used to prove that prior to the application date of the Disputed Mark, CHP had completed its artwork. CHP therefore enjoys prior copyright to its artwork.

Third, the Disputed Mark and CHP’s prior created artwork were nearly identical in terms of composition, English letters combination, etc. with slight differences in color.

Forth, the Disputed Mark’s owner resided in the same industry with CHP and therefore should’ve known about CHP’s prior artwork. However, the Disputed Mark’s owner did not pay reasonable attention to avoid conflict, but intended to register the Disputed Mark that was nearly identical with CHP’s prior artwork with designated goods such as “agricultural machinery, harvesting machinery, and cutting machines” that overlapped with the business scope of CHP. Such behaviors can hardly be justified.

Accordingly, the registration of the Disputed Mark constituted as copying other’s work without authorization, damaged CHP’s prior copyright, violated Article 32 of the 2013 Trademark Law. The CNIPA and the Beijing IP Court’s decisions were affirmed.

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