Weekly China Trademark News Updates

May 25, 2021

1. Ecovacs Robotics successfully defended trademark squatters

Ecovacs Robotics (“Ecovacs”) is a leading Chinese in-home service robotics appliance company and owns the following registered trademarks in Class 7 and Class 9 (“Cited Mark”).

Machines and apparatus for cleaning, electric, etc. in Class 7	Theft prevention installations, electric; Weighing apparatus and instruments, etc. in Class 9

On December 28, 2018, Danyang Zhuomei Optical Glasses Co., Ltd. (“Zuomei”) registered the following Disputed Mark.

Eyeglasses, sunglasses, etc. in Class 9

Ecovacs filed an invalidation against the Disputed Mark based on Article 30 (similar marks on similar goods), Article 32 (prior copyright), Article 13 (well-known mark), and Article 44 (obtaining registration via unfair means) of the  Chinese Trademark Law 2013 before the CNIPA. However, the CNIPA maintained the Disputed Mark’s validity. Ecovacs appealed the unfavorable decision to the Beijing IP Court.

The Beijing IP Court found that the Disputed Mark’s approved use on “glasses” related goods were not related to the Cited Marks’ approved goods. Meanwhile, every of Ecovacs’s Cited Marks has not yet reached the well-known status and the design “” lacked creativity as a copyrighted artwork. However, the evidence submitted can prove that the Cited Marks have obtained certain fame in the Class 7 goods such as vacuum cleaner and cleaning equipment.  Zuomei and Ecovcas were located rather close, Zuomei should have known about Ecovacs and its prior used famous marks but Zuomei still applied for twelve similar or identical marks in Class 9 involving “KE WO SI in Chinese” or “ECOVACS.” Zuomei also owned another 20 plus trademarks involving “SU FEI YA in Chinese,” “EVIL’S,” “GM,” “MAITENAZ in Chinese” and other famous brands and celebrity names. Although Zuomei provided product pictures, Tmall store screenshots, receipts, and other evidence, such evidence cannot eliminate the subjective malicious intention to free ride others’ fame in its actual business operations. Moreover, Zuomei failed to provide reasonable explanations for applying the Disputed Mark. Based on the above, the court found that Zuomei’s Disputed Mark registration violated the principle of good faith and constituted as obtaining trademark registration by unfair means under Article 44 of the Chinese Trademark Law 2013. The CNIPA and Zuomei appealed the unfavorable first instance decision but the Beijing High Court, the second instance court, rejected the appeal and affirmed the Beijing IP Court’s first instance decision.

The number of trademarks owned by Zuomei could not be seen as numerous (total of 33 trademarks during the first instance and 45 during the second instance), however, the courts applied the good faith principle to regulate the registration of such Disputed Mark when they cannot invalidate the mark based on relative grounds in Article 30 or Article 13. This decision showcased the judicial system’s intention in crack down on bad faith trademark registrations.

2. “Guo Zu” stinky tofu was invalidated, will that kill the two companies?

The following “Guo Zu in Chinese” mark with Reg. No. 10280516 (“Disputed Mark”) was registered on February 13, 2013, on tofu and tofu products, and was assigned to Jinan Guozu Tofu Catering Management Co., Ltd. (“Guozu”).

Disputed Mark

Qingdao Lvhe Catering Management Co., Ltd. (“Lvhe”) filed an invalidation against the Disputed Mark on January 4, 2019, alleging that the character “掴” has the meaning of “slapping one’s face,” moreover, in actual use, the left portion of the “Guo” character was minimized while protruding use the right portion, resulting in the visual identity with “国足 (national soccer team)”. Such use on stinky tofu has unhealthy influence according to Article 10(i)(8) of the Chinese Trademark Law. 

The CNIPA found that using the Disputed Mark on stinky tofu and related goods would easily cause a certain level of negative and unhealthy influence to public interests and public orders in China. Based on the foregoing, the CNIPA invalidated the Disputed Mark.

Unsatisfied Guozu appealed to the Beijing IP Court. The court found that the Disputed Mark has suggestive tendency in derogating and mocking the National Soccer team, which was likely to cause negative and unhealthy influence.

Guozu appealed further to the Beijing High Court, which found in the second instance decision (final decision) that the distinctive part of the Disputed Mark was “Guo Zu in Chinese,” where the “Guo” character had the meaning of clapping with hands or slapping one’s face, the trademark as whole had not obtained secondary meaning. Meanwhile, from the design of the “Guo” character, the left portion shared a rather smaller percentage, while the right portion displayed as the distinctive portion. The Disputed Mark’s pronunciation was identical to the National Soccer team’s pronunciation. From the evidence submitted, parts of the public also related the Disputed Mark with the National Soccer team. The court concluded that the Disputed Mark’s use on tofu related products had derogatory and sarcastic tendency against the National Soccer team, which was likely to cause negative and unhealthy influence in violation of Article 10(i)(8) of the Chinese Trademark Law.

Both Guozu and Lvhe were using “Guozu” on stinky tofu:

Guozu’s actual use the Disputed Mark

Lvhe’s actual use of its trademarks

It is noteworthy that Guozu cited the Disputed Mark multiple times in various oppositions and invalidations against Lvhe’s “” and “” trademarks. It is obvious that Lvhe had enough and filed the invalidation against the Disputed Mark. The question remained after the conclusion of this case is: as Article 10(i)(8) of the Chinese Trademark Law is an article on “signs cannot be used as trademarks” based on negative and unhealthy influence as opposed to “cannot be registered as trademarks”, would the decisions backfire at Lvhe so it cannot use its trademarks either given how similar Lvhe’s trademarks are compare with the Disputed Mark?

3. The tale of MICHELIN’s two Chinese names: Mi Qi Lin and Mi Zhi Lian

Shanghai Mi Zhi Lian Co., Ltd. (“Shanghai Mi Zhi Lian”) registered the “Hui Ji Mi Zhi Lian in Chinese” mark with Reg. No. 18330221 (“Disputed Mark”) on hotel and restaurant related services in Class 43 on November 13, 2015. On November 9, 2018, Compagnie Generale Des Etablissements Michelin (“Michelin”) filed an invalidation against the Disputed Mark alleged that “Mi Zhi Lian in Chinese” was another Chinese transliteration of its well-known mark “MICHELIN” and the two had established corresponding relationship. The Disputed Mark also constituted as similar mark with Michelin’s prior registered trademark “MICHELIN” with reg. no. 9155688 and “MICHELIN and Design” with reg. no. 9149915 (“Cited Marks”) on similar services. Moreover, the Disputed Mark also constituted as a copy and translation of Michelin’s well-known mark. Shanghai Mi Zhi Lian situated in the same restaurant industry as Michelin, it had obvious bad faith in copy and imitate the widely famous “Mi Zhi Lian in Chinese” mark and the “MICHELIN” mark.

Disputed Mark

v.

Cited Marks

The CNIPA found that prior to the Disputed Mark’s filing date, “Mi Zhi Lian in Chinese” was adopted as one of the Chinese translations of “Michelin.” The two marks had been used in business promotions and created close corresponding relationship. Thus, the pronunciation of the Disputed Mark was similar to the Cited Marks and the two marks should be constituted as similar. If the two marks co-existed on the same or identical services, it was likely to cause confusion to the relevant public as to the source of services. Accordingly, the Disputed Mark constituted as similar to the Cited Marks on identical or similar services and shall be invalidated.

Shanghai Mi Zhi Lian appealed the unfavorable decision to the Beijing IP Court and we will continue to follow up the latest news regarding this case.

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