Weekly China Trademark News Updates

March 8, 2021

1. The Supreme People’s Court issued judicial interpretations regarding intellectual property punitive damages

On March 3, 2021, the Supreme People’s Court issued the Interpretation of The Supreme People’s Court on the Application of Punitive Damages in Adjudicating Infringement of Civil Intellectual Property Infringement Cases (“Interpretation”). The Interpretation stipulates the scope of the application of punitive damages, defines the terms “intentional infringement” and “serious circumstances,” and provides methods for calculating base and reasonable multiples of punitive damages. The Interpretation is aimed at guiding lower courts on application of punitive damages aimed at punishing serious intellectual property infringement conducts.

2. FDENDI won against unauthorized used in an outlet shopping center

On March 4, 2021, the Shanghai High Court held that Shanghai Yilang International Trade Co., Ltd. (“Yilang”) and Capital Outlets (Kunshan) Commercial Development Co., Ltd. (“Capital”) infringed upon FENDI S.R.L.’s (“FENDI”) trademark right and amounted to unfair competition. Yilang and Capital were ordered to pay FENDI RMB 350,000 (USD 54,000) for economic loss and reasonable legal cost.

Parts of FENDI’s Cited Marks

The Shanghai High Court found that Yilang’s independent use of the mark “FENDI” on its signboard was intended to demonstrate itself as the business operator and management of the mark “FENDI,” which fell into the scope of protection of FENDI’s exclusive trademark right in Class 35 in connection with business operation and business management related services. Yilang’s conduct constituted as trademark infringement. Meanwhile, “FENDI,” as a trade name, had obtained certain fame on the market and was known by the public. Yilang’s independent use of the mark “FENDI” on its signboard without authorization constituted as using FENDI’s business name without authorization and amounted to unfair competition. As Yilang’s operation management, Capital shall be held jointly liable for aiding Yilang’s said trademark infringement and unfair competition for using the mark “FENDI” without authorization.

The case number is (2019) Hu Min Zai No. 5.

 3. The mark “YEEZY” is recognized as an influential trademark on shoes related goods

The Beijing High Court held that the mark “YEEZY” with Reg. No. 11161428 (“Disputed Mark”) owned by Xiamen Yezhi Trading Co., Ltd. (“Yezhi”) constituted as using unfair means to preemptively register other’s prior used mark that had certain influence, and damaged Kanye West’s name right.

The Disputed Mark

The Beijing High Court found that the mark “YEEZY” constituted as a prior used mark that had certain influence prior to the Disputed Mark’s application date. “YEEZY” was Kanye West’s alias and nickname. Kanye West was a well-known music producer and rapper. His popularity had expanded from music and entertainment to shoes and other fields. The Disputed Trademark was registered in connection with shoes, clothing, socks, and other goods, which would easily confuse the relevant public that the goods bear the Disputed Mark was licensed or had certain association with Kanye West. Accordingly, the registration of the Disputed Mark damaged Kanye West’s name right.

The case number is (2019) Jing Xing Zhong No. 3273.

4. Thinking about selling refurbished Siemens products? Think again

Siemens (China) Co., Ltd. (“Siemens”) sued Xiamen Xing Rui Da Automation Equipment Co., Ltd. (“Xin Rui Da”) for trademark infringement alleging Xing Rui Da purchased and refurbished its digital module and control module with self-printed “SIEMENS” marks for sale. Both the first instance court and the second instance court held that selling refurbished secondhand products did not infringe upon Siemens’ trademark right, however, re-printed Siemens’ trademark without authorization constituted as infringement.

Part of Siemens’ Cited Marks

The first instance court found that Xin Rui Da did not infringe Siemens’ trademark right for purchase and sell refurbished Siemens’ products because the refurbished Siemens products were not substantially altered, which would not affect the consumers’ post-sales experience. Neither would the low-priced refurbished products constituted as a trademark infringement. However, Xin Rui Da printed the “SIEMENS” trademarks without authorization and sold counterfeit “SIEMENS” digital output module constituted trademark infringements. The first instance court ordered Xin Rui Da to compensate Siemens’s economic loss of RMB 200,000 (USD 31,000) and the second instance court affirmed.

The case number is (2019) Min 02 Min Chu No. 875.

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