Weekly China Trademark News Updates

May 25, 2022

1. John Deere successfully fends off trademark infringers and won RMB3 million in damages

The Shandong High Court recently rendered a trademark infringement judgment for Deere & Company (“Deere”) against Rongcheng Haishan Machinery Manufacturing Co., Ltd. (“Haisha”), Songyuan Aorui Haishan Machinery Co., Ltd. (“Aurui”), Jilin Mushen Machinery Co., Ltd. (“Mushen”), and Shandong Weitai Heavy Industry Technology Co., Ltd. (“Weitai”). The court revoked the first instance judgment and ordered the defendants to immediately stop infringement acts and compensate Deere for economic losses and reasonable expenses of RMB300 million (USD451,000).

First, the defendants argue that the use of the color combination on the disputed goods were decorative use and not trademark use. The court, however, found that the defendants’ use constituted as trademark use. The court reasoned that considering the color combination mark in this case and the specific use, namely, the disputed goods use the same color combination on the car body in the same way, and the bright yellow-green color combination covering the disputed goods as a whole could had shown a profound overall visual effect to the general public. Such use could establish a stable connection between the disputed mark and the disputed goods, and played a role in identifying the source of the goods, which was a trademark use.

Second, the court found that the components, combination, and usage of the “green body, yellow wheels” on the harvest cart had no difference with the color combination trademark with reg. nos. 4496717 and 13517702. Therefore, the defendants used the same mark as the cited color combination trademark.

Third, the defendants’ use was likely to cause confusion and misunderstanding by the relevant public. Considering the particularity of the use of the color combination trademark involved in the case by covering the car body, when the relevant public paid general attention, they will first notice the color and combination method covering the entire body of the disputed goods, and then pay attention to the logo and other marks on the body. Under such circumstance, Deere’s cited color combination trademarks had a high reputation and distinctiveness after publicity and use and can establish a stable relationship with Deere. The defendants’ use would cause the relevant public to mistake the source of the disputed goods. Even if the relevant public knew that the disputed goods were produced and sold by the defendants based on the information marked on the goods, the defendants’ use was likely to cause the relevant public to mistakenly believe that there was a specific connection between the disputed goods and Deere’s goods, which damaged the cited marks’ function to distinguish the source of the goods, and infringed Deere’s trademark rights.

Finally, the protection scope of trademark rights is not limited to the trademark publication. A color combination trademark is a type of trademark that is contrasted with a graphic trademark. The constituent elements of a color combination trademark are only the combination of colors. The constituent elements and specific ways of applying a color combination trademark shall be selected by the trademark applicant and reviewed by the Trademark Office. However, the color combination trademark is subject to the specific expression of the trademark device in the “Trademark Registration Application,” and is objectively presented in a certain graphic way. But the composition of a color combination trademark cannot be limited accordingly. A color trademark composed of one component is identified as a graphic trademark composed of two components, color combination and graphic. Under normal circumstances, one of the prerequisites for a mark to be protected as a trademark is to obtain an approved registration rather than an application or publication. Trademark publication only acted for publicity purposes, that is, the trademark has been applied for registration or the trademark has been approved for registration, but the scope of protection should generally still be determined through the trademark registration certificate. A color combination trademark is a special trademark, its attributes and use methods can be determined according to the trademark application or the actual use method of the trademark owner. The trademark cannot be recognized only as a graphic trademark with the color combination shown on the trademark registration certificate or trademark publication, or that the trademark owner can only use its trademark in the form marked on the trademark registration certificate.

2. The Beijing Intellectual Property Court announced temporarily adjusting case filing, litigation services, and receptions to online

In order to better prevent and control the Omicron variant from spreading, reducing people flow and gathering, and effectively protect people’s life and health, on May 20, 2022, the Beijing Intellectual Property (“IP”) Court announced the relevant measures as follows:

1) From now on, the Beijing IP Court will suspend on-site reception for matters such as case filing, litigation services, and receptions.  Related matters will be temporarily adjusted to online.

2) During this period when all matters adjusted to online, if people need to file a case, appeal a letter or visit, or apply for other litigation services, they can use the Beijing Court Electronic Litigation Platform, the People’s Court Online Service Beijing Platform, the People’s Court Lawyer Service Platform, and the Supreme People’s Court Online Appeals And Petition Platform, the Beijing Court Trial Information Network, “Beijing Court Litigation Service” WeChat public account, Jingzhi Online, and other online channels can be used for processing.

3. According to the latest jurisdictional interpretation of the Supreme People’s Court, the Beijing Intellectual Property Court issued the first ruling based on inadmissibility

Recently, in accordance with the “Several Provisions of the Supreme People’s Court on Jurisdiction of Civil and Administrative Cases of Intellectual Property Rights of First Instance” (“Provisions”), the Beijing IP Court issued its first ruling based on inadmissibility against a trademark infringement dispute that did not involve the well-known mark recognition.

On May 5, a company engaged in paper products technology development, manufacture and processing of paper and hygiene products, etc. filed a trademark infringement case before the Beijing IP Court, claiming that a bank in Beijing and its sub-branch and other affiliated companies illegally sold counterfeit paper products produced by the company infringed its trademark right and caused losses, and requested the court to order the four defendants to compensate for RMB62.16 million (USD9.2 million) and reasonable expense of RMB500,000 (USD75,000).

According to the above-mentioned “Provisions,” except for the first-instance civil cases involving well-known mark recognition, first-instance civil cases concerning trademark infringement disputes shall be under the jurisdiction of the local people’s courts as affirmed by the Supreme People’s Court. In addition, according to the “Notice of the Supreme People’s Court on Printing and Distributing the Standards for Basic-level People’s Court Jurisdiction over First Instance Intellectual Property Civil and Administrative Cases,” starting from May 1, 2022, six basic-level courts in this city will have jurisdiction over first-instance intellectual property civil cases not subject to litigation damages limit.

Since this case did not involve well-known mark recognition, the Beijing IP Court had explained the latest regulations on jurisdiction adjustment to the plaintiff at the filing window and instructed the plaintiff to file with a competent local court. The plaintiff, however, insisted on filing before the Beijing IP Court.

On May 11, the Beijing IP Court issued a ruling of inadmissibility against the plaintiff’s cause of action in accordance with the above-mentioned latest jurisdictional regulations.

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