Weekly China Trademark News Updates

May 17, 2022

1. The Beijing IP Court reversed the lower court’s decision and supported RMB 5 million in damages for Wilo China

The Beijing Intellectual Property (“IP”) Court recently ruled in favor of Wilo (China) Pump System Co., Ltd. (“Wilo China”) against Wilo Pump Industry (Jiangsu) Co., Ltd. (“Jiangsu Wilo”), Beijing Sunshine Keyuxin Energy Technology Co., Ltd. (“Sunshine Keyu”) in a trademark infringement and unfair competition case. The court supported Wilo China’s RMB5 million (USD740,000) damages claim and reasonable expenses of RMB300,000 (USD44,410).

In January 2000, the German Wilo established Wilo China to operate businesses including production, design, installation and maintenance of water pumps, water pump components and water pump system components. The German Wilo has applied for a number of the “WILO” mark on pump products since 1994, and applied for the “WILO in Chinese” mark in Class 7 for machines, machine casings (machine parts) merchandise in 2005. On April 24, 2017, Wilo China notarized the purchase of three accused infringing pump products (“Disputed Products”) from Sunshine Keyu where the label “Wilo in Chinese Pump Industry” was attached to packaging, machine shells, brochures, certificate, etc. Sunshine Keyu. recognized that it sold the products of Jiangsu Wilo and Wilo China at the same time. Jiangsu Wilo recognized that it manufactured and sold the Disputed Products. In addition, Jiangsu Wilo continued to promote and sell various types of pump products through its official website and e-commerce platforms. Wilo China sued and claimed that Jiangsu Wilo manufactured and sold the Disputed Products, and Sunshine Keyu’s sale of the Disputed Products infringed its license to use the Cited Marks and that Jiangsu Wilo’s use of “Wilo in Chinese” amounted to unfair competition.

Cited Marks

The first instance court held that the defendants did not infringe upon Wilo China’s trademark right and their acts did not amount to unfair competition. Wilo China and the defendants appealed to the Beijing IP Court. The Beijing IP Court found that Jiangsu Wilo’s selling of pump related products through JD.com and other e-commerce platforms and Sunshine Keyu sold the Disputed Products involved in the case. The Beijing IP Court determined that the alleged infringing acts committed by Jiangsu Wilo constituted trademark infringement and unfair competition, and the alleged infringing acts committed by Sunshine Keyu constituted trademark infringement. The Beijing IP Court also conducted an in-depth discussion regarding the defendant’s legal source defense. The court held that Sunshine Keyu’s selling of the Disputed Products did not meet the conditions for exemption from liability by applying the legal source defense, and should bear appropriate compensation liability in accordance with the law.

2. Using “Huawei in Chinese” as a search keyword infringed upon Huawei’s trademark right

The Futian District Court of Shenzhen recently ruled in favor of Huawei Technologies Co., Ltd. (“Huawei”) against Shenzhen Mingyu United Technology Co., Ltd. (“Shenzhen Mingyu”) in a trademark infringement case. The court held that using “Huawei in Chinese” as a search keyword and in product names infringed upon Huawei’s Cited Marks. The court ordered RMB500,000 (USD74,000) in damages.

Cited Marks

In 2014 and 2015, Huawei applied for the registration of the “HUAWEI and Design” mark and the “HUAWEI in Chinese” mark in Class 9 for headphones and other products. Shenzhen Mingyu opened a “SCOLiB Flagship Store” on Tmall.com and sold products such as “original genuine earphones suitable for Huawei earphones.” Meanwhile, “Huawei in Chinese” and its product display pictures are marked with a pattern similar to the “HUAWEI and Design” mark, but its actual brand is SCOLIB.

The court found that the accused infringing product was the same as the approved goods for the Cited Marks. The defendant set “Huawei in Chinese” as a search keyword and used the word “Huawei in Chinese” in the product name constated as identical marks to the Cited Marks. The picture used by the defendant on the displayed was also similar to the Huawei’s “HUAWEI and Design” mark. The defendant set “Huawei in Chinese” as a search keyword, used the words “suitable to Huawei” and “authentic Huawei headset” in the product name, used a logo similar to the “HUAWEI and Design” mark on the display pictures, and used “Huawei in Chinese” obviously showed its bad faith intention to take advantages of the Cited Mark’s popularity, which was likely to cause the relevant public to believe that the defendant’s headphones had a specific connection with Huawei and cause confusion.

3. The Shanghai IP Court recognized NOK’s “NOK” mark as a well-known mark

The Shanghai IP Court recently ruled in favor of NOK CORPORATION against Enoukai (Tianjin) Lubricating Oil Co., Ltd. and Shanghai Torch Lubricating Oil Co., Ltd. in a trademark infringement and unfair competition case. The court recognized NOK’s “NOK” mark as a well-known mark on oil seal products and held that the defendants’ use of the “NOK” mark, registration of the “Enoukai in Chinese” corporate name, and registration of “nokrhy.com” constituted as trademark infringement and amounted to unfair competition. The court ordered RMB1 million (USD148,000) in damages and reasonable expenses of RMB200,000 (USD29,606).

Cited Mark

NOK applied for the registration of the “NOK” series of trademarks in China in the 1970s. After long-term use and publicity, the “NOK” trademark enjoyed a high market reputation among the relevant Chinese public. The defendants had continued to produce and sell lubricants, antifreeze and other products bearing the “NOK” trademark since 2017. The defendants also registered and used “Enoukai in Chinese” as its corporate name, and registered and used the domain name “nokrhy.com.”

The court found that NOK’s “NOK” mark was a well-known trademark on oil seal products and determined that the “lubricating oil” product was closely related to the “oil seal” product. The defendants’ use of the registered trademark “NOK” infringed NOK’s “NOK” mark. “NOK” has a corresponding relationship with the Chinese characters “Enoukai in Chinese,” and the “NOK” trademark had a high reputation. The defendants had the intention to take advantages of the reputation of the “NOK” mark. The use of the “Enoukai in Chinese” as corporate name could easily lead to confusion and amounted to unfair competition. The defendant’s registration and use of the domain name “nokrhy.com” also amounted to unfair competition.

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