Weekly China Trademark News Updates

May 12, 2021

1. CNIPA: Enlist bad faith applicants into blacklist

From the beginning of 2021, the CNIPA has rejected more than 10,000 bad faith trademark applications citing the 2019 Chinese Trademark Law. The CNIPA has also created a blacklist system to include applicants who filed more bad faith applications and registrations. This is to closely supervise new trademark applications. So far, there are about 1,000 bad faith trademark applicants added into the blacklist.

2. Wyeth LLC won a punitive damage of RMB 30 million against Guangzhou Hui Shi

In 2019, Wyeth LLC sued Guangzhou Hui Shi Co., Ltd., Zeying CHEN, and Xiaoshen GUANG (jointly as the “Guangzhou Hui Shi”) for trademark infringement and unfair competition and petitioned for punitive damages of RMB 30 million (USD 4.66 million) and reasonable legal cost of RMB 550,000 (USD 85,000). On December 25, 2020, the Hangzhou Intermediate Court found Guangzhou Hui Shi infringed upon Wyeth LLC’s rights and ordered the punitive damage as petitioned.

On April 26, 2021, the Zhejiang High Court affirmed the Hangzhou Intermediate Court’s first instance decision and the punitive damages were ordered.

For more information regarding the first instance court decision please see our previous report: https://www.beijingeastip.com/type-news/weekly-china-trademark-news-updates-january-18-2021/.

3. Sam’s Club vs. Shan Mu in Chinese (山姆)

Wal-Mart (China) Investment Co., Ltd. (“Walmart”) was established in China in 2003 and has since opened 15 Sam’s Club in Fuzhou, Beijing, Shanghai, and other cities. The first Sam’s Club, however, opened in Shenzhen in 1996 under Walmart’s subsidiary company in Shenzhen. Tianjin Shan Mu Da Shu Trading Co., Ltd., Tianjin Wuqing Shan Mu Import and Export Co., Ltd., and Dalundo (Tianjin) International Trade Co., Ltd. (together as “Shan Mu”) highlighted the use of “Tianjin Shan Mu,” “Tianjin Shan Mu,” “Shan Mu Safe Foods,” and “Shan Mu Cross-border Goods” in the online and offline platforms of Shan Mu Safe Foods stores. Walmart sued Shan Mu for unfair competition.

The Tianjin High Court found that through Walmart’s long-term use, promotion, advertisement, “Shan Mu in Chinese” has established a unique association with the “retail” services Sam’s Club provided, which constituted as a service name that enjoyed certain influence among retail services. Tianjin Shan Mu’s misuse of the “Shan Mu in Chinese” mark in its market operations was likely to cause confusion to the relevant consumer regarding the source of goods or services, which amounted to unfair competition. The court ordered Tianjin Shan Mu to immediately stop any infringing use, eliminate any negative impacts, and compensate Walmart.

The case number is (2018) Jin Min Zhong No. 242.

4. Hin Sang Group won in a trademark infringement case against Guangdong Yan Sheng Tang

Hin Sang Group (International) Holding Co. Ltd. (“Hin Sang”) sued Guangdong Yan Sheng Tang Healthy Industry Co., Ltd. (“Yan Sheng) for using its registered trademark “Yan Sheng in Chinese (衍生)” as trade name without authorization, which caused confusion to the relevant public and damaged Hin Sang’s interests.

The Shanwei Intermediate Court found Yan Sheng infringed upon Hin Sang’s trademark rights and its acts amounted to unfair competition. The court ordered Yan Sheng to immediately stop infringement and change its trade name as “Yan Sheng” immediately.

The case number is (2019) Yue 15 Min Chu No. 62.

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