Weekly China Trademark News Updates

March 09, 2022

1. Marvel successfully invalidated a squatted “Spider-Man in Chinese” trademark

The Beijing High Court recently made a second-instance judgment, finding that the Disputed Mark owned by an individual and used on goods such as swimwear, shoes, hats, socks, etc. in Class 25 constituted as a similar mark with Marvel’s Cited Mark on identical or similar goods. The individual’s appeal was rejected, and the original judgment was upheld.

Disputed Mark	Cited Mark

The Disputed Mark was applied on December 10, 2014, and was approved for registration on September 13, 2018 for “Clothing for gymnastics, swimwear, shoes, sports shoes, slippers, football boots, hats, socks, belts (for clothing), girdles” after an opposition decision. Marvel then filed an invalidation. The CNIPA found that the Disputed Mark and Marvel’s Cited Mark constituted as similar marks used on identical or similar goods, and that the Disputed Mark damaged the character name of Marvel’s prior work and should be invalidated according to Articles 31 and 32 of the Chinese Trademark Law.

The individual appealed the CNIPA’s decision, but the Beijing IP Court upheld the CNIPA’s decision. The individual appealed to the Beijing High Court.

The Beijing High Court found that: the Disputed Mark’s approved goods for “swimwear, shoes, hats, socks, etc.” were identical or relatively similar with the Cited Mark’s approved goods for “swimwear, socks, suspenders, etc.” in terms of function, production department, sales channels, consumer, etc. and constituted as identical or similar goods. The Disputed Mark consisted of “Spider-Rogue in Chinese,” “ZHIZHUXIA” in pinyin and an image of “Spider-Man.” The Cited Mark consisted of “Spider-Man in Chinese” and English “SPIDER-MAN.” Comparing the “Spider-Rogue in Chinese” and “Spider-Man in Chinese,” there was only one Chinese character difference between the Chinese part of the two parties’ marks, and the overall meaning of the two marks were not clearly distinguished. Considering that the Disputed Mark and the Cited Mark were very similar in terms of referenced subject, text composition, pronunciation, meaning, and overall visual effect, if the two coexist on the same or similar goods mentioned above, the relevant public would easily be mistaken that the goods came from the same entity when paying average attention and viewing each mark separately, or believe that there were special associations between the providers and to be confused with the source of goods. Thus, the first instance court did not err in determining that the Disputed Mark and the Cited Mark constituted as similar trademarks used on identical or similar goods.

In addition, although both the first instance court judgment and the disputed CNIPA decision ruled that the Disputed Mark damaged the prior rights and interests enjoyed by Marvel in relation to the character name in the “Spider-Man” series of films, in fact, there was no relevant fact that Marvel enjoyed a prior interest in the character name in the “Spider-Man” series of films. Even if the character name in the “Spider-Man” series of films constituted as a certain kind of prior interest, the lower court and the CNIPA’s decisions lacked the relevant factual finding that such interest belongs to Marvel. Therefore, the first instance court judgment that the Disputed Mark damaged the prior rights and interests of the character name enjoyed by Marvel lacks factual basis, and this Beijing High Court corrected it.

After comprehensive consideration, the Beijing High Court dismissed the appeal and upheld the first instance court’s judgment.

2. New Balance was awarded of RMB 10.8 million in damages based on its “N” logo decoration

The Shanghai IP Court recently ruled in favor of New Balance against Niubalun (China) Co., Ltd. (“Niubalun”) located in Jinjiang City, Fujian Province in a second instance judgment for Niubalun’s unauthorized use of a logo that was identical or similar to another’s product decoration with certain influence. The court rejected Niubalun’s appeal and affirmed the first instance court’s decision that ordered Niubalun to immediately stop unfairly competing with New Balance by using the “N” logo decoration on two sides of its shoes and pay New Balance for economic losses and reasonable expenses of RMB 10.8 million (USD 1.7 million).

New Balance sued Niubalun for manufacturing or licensing to sell shoes with a “stylized N” logo on two sides. The first instance court found that the “N” logo decoration had become the most prominent and recognizable part of the decoration of New Balance’s sneakers, and had nothing to do with the functionality of the product. Through New Balance’s long-term publicity and repeated use, it was sufficient for the relevant public to associate products with “N” logo decoration on both sides of a sneaker with New Balance, which allowed such decoration to obtain a distinctive feature of identifying the source of a product and be distinctive. Therefore, the use of the N logo on both sides of New Balance’s sneakers constituted as “a good’s decoration that has certain influence.” Thus, Niubalun’s use of a similar logo on identical position of identical goods infringed upon New Balance’s prior rights and interests and amounted to unfair competition. Niubalun was ordered to compensate New Balance for economic losses of RMB 10 million and reasonable expenses of RMB 80,000. Niubalun was also ordered to publish a statement to eliminate its negative impact.

Niubalun was unsatisfied and appealed to the Shanghai IP Court claiming that the “N” letter, upon securing registration as a trademark, should not be protected by the Anti-Unfair Competition Law as a unique decoration of a famous good, and that its use of the “N” letter is a legitimate use of its registered trademark and should not be held liable or amount to unfair competition.

The Shanghai IP Court found that: in spite that a registered trademark and a unique decoration of a famous goods were all commercial logos, and that the unique decoration of the famous goods involved in this case and the registered trademark “” all have the letter “N,” the unique decoration of the famous goods involved also includes a location factor. After all, the famous good’s unique decoration and the registered trademark belong to different rights and are protected by different laws. They can coexist as different civil rights (benefits) and serve separately as the basis for the right to file an infringement lawsuit.

Although Niubalun has legally obtained the exclusive right to use the registered trademark “,” its registration and use were later than New Balance’s use of the unique decoration of the “N” letter on its sneakers. According to the protection of prior rights and the principle of good faith, it is not inappropriate to determine that Niubalun’s use of the “N” letter in a specific position on its sneakers constituted as unfair competition against the unique decoration of a famous goods enjoyed by New Balance.

For the damages, given that there was insufficient evidence to prove the actual losses claimed by New Balance or the profits of Niubalun obtained from infringement, the first instance court comprehensively considered the famous status of the decoration of New Balance’s products, the duration, scale and geographical scope of Niubalun’s infringing acts, and Niubalun’s subjective fault to arrive at an appropriate amount of economic losses and reasonable expenses, which was based on legal evidence and should be affirmed.

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