Weekly China Trademark News Updates

May 30, 2023

1. Sandisk’s red-grey color combination mark was infringed and the infringer was held to be unfairly compete with Sandisk

The Shenzhen Intermediate Court recently concluded a trademark infringement and unfair competition lawsuit between SanDisk Co., Ltd. (“SanDisk”), Nanning Big Whale Trading Co., Ltd. (“Nanning Big Whale”), and Shenzhen Big Whale Trading Co., Ltd. (“Shenzhen Big Whale”).  The court held that the defendants infringed Sandisk’s mark and constituted unfair competition. The court ordered economic compensation and reasonable costs of RMB150,000 (USD 21,206).

(Cited Mark)

The court found that Nanning Big Whale and Shenzhen Big Whale jointly produced and sold the CK MicroSD memory card that SanDisk accused of infringement. According to the evidence of fame such as sales, publicity, and honors provided by SanDisk, it can be determined that  as early as 2018, the SanDisk MicroSD memory card enjoyed a certain market fame and reputation across China, and can be seen as goods with a certain influence. SanDisk has been selling and promoting SanDisk MicroSD memory cards since 2011, and has not changed its red-gray color combination decoration design for many years. SanDisk uses red-gray colors and their permutations on SanDisk MicroSD memory cards “.” It has a certain degree of significance. After years of use and promotion of SanDisk’s overall decoration design, the relevant public has associated said decoration with SanDisk’s MicroSD memory card, and has the function of distinguishing the source of goods, which is a unique decoration of SanDisk. After comparison, Nanning Big Whale and Shenzhen Big Whale used identical decoration as SanDisk’s “” on the CK MicroSD memory cards they produced and sold. Considering the SanDisk MicroSD memory card and its good reputation and uniqueness of the decoration, when the relevant public pays general attention, it is easy to confuse and misidentify the source of the CK MicroSD memory card. In particular, Shenzhen Big Whale also used SanDisk when selling CK MicroSD memory cards. In addition, the defendants falsely used product information, copyright, and trademark rights statement of SanDisk’s parent company, Western Digital Corporation. Therefore, it can be determined that Nanning Big Whale and Shenzhen Big Whale,  without the permission of SanDisk, used the logo “” identical to the decoration of SanDisk’s MicroSD memory card that have a certain influence on SanDisk, constituting unfair competition.

At the same time, Nanning Big Whale and Shenzhen Big Whale used the exact same logo on the CK MicroSD memory card product that was identical as the blank memory card approved for use for SanDisk registered trademark “” with reg. no. 31557071, and sold the said product, infringed SanDisk’s trademark right.

2. “Nike” and “De Wu in Chinese” marks were infringed

The Dongcheng District Market Supervision and Administration Bureau of Beijing imposed an administrative penalty on an individual in accordance with the second paragraph of Article 60 of the China Trademark Law, confiscated the goods and imposed RMB30,000 (USD 4,242) in fine.

Nike owns the “NIKE” mark with reg. no. 4516216 for “clothing, shoes, and soccer shoes” in class 26. Shanghai Shizhuang Information Technology Co., Ltd. owns the “De Wu in Chinese” mark with reg. no. 31033869 in class 35 for “marketing, providing an online market for buyers and sellers of goods and services” in class 35.

On November 12, 2021, the Market Supervision and Administration Bureau of Dongcheng District, Beijing received a report that there was a stall in a market selling sneakers suspected of infringing on the “NIKE” mark. After investigation, in October 2021, the party concerned paid RMB1,600 (USD226) to buy 100 pairs of sneakers with the “NIKE” trademark from a salesperson and sold 5 pairs when he was investigated on November 12, 2021. Nike confirmed these sneakers were infringing products. Inside the shoebox, there were words “identified as genuine by an appraiser” and a QR code with “De Wu in Chinese.” After confirmation with the owner of the “De Wu in Chinese” app Shanghai Shizhuang Information Technology Co., Ltd., the above appraisal conclusion was not Issued by the company or authorized to be issued by others.

This case is a typical case of administrative law enforcement in which the use of infringing trademarks on goods to deceive consumers’ trust and confuse the source of goods.

3. Unauthorized use of “Forbidden City in Chinese” caused infringer RMB 330,000 in compensation

The Beijing Intellectual Property Court recently concluded an unfair competition dispute between the Palace Museum, Sichuan Palace Wine Co., Ltd. (Sichuan Palace Wine), Palace Museum Wine (Beijing) Co., Ltd. and sentenced the defendant to compensate RMB330,000 (USD4,657) for economic losses.

The court held that the Forbidden City used to be the imperial palace of the Ming and Qing dynasties, and later became the Palace Museum in Beijing. It is a national key cultural relic protection unit and a world cultural heritage. It has long been known to the public and enjoys a high reputation. When mentioning “Forbidden City in Chinese,” people will first think of the Palace Museum, not other meanings. Beijing Forbidden City Company promoted wine products on its website and marks “Supervised by the Palace Museum” next to the displayed product pictures and displays a sign with “Supervised by the Palace Museum”; Beijing Forbidden City Company registered the “Forbidden City Liquor Brand Center” WeChat public account on February 21, 2017 to display the wine bottle and packaging pictures of the “Forbidden City Liquid” liquor, and the base showing the liquor bottle was marked with the words “produced by the Palace Museum in Beijing,” etc. As of the hearing date of this case on June 9, 2022, the said Public Account still labeled the time as September 22, 201 and the content was marked with the words “supervised by the Palace Museum” on the base of the “Forbidden City Liquid” liquor displayed. The words “Supervised by the Palace Museum” contained the name of the original enterprise name, and “Forbidden City in Chinese” is a well-known and recognizable name in the enterprise name of the Palace Museum. Therefore, the above acts were enough to make the relevant public misunderstand the source of the goods. Even if the Beijing Forbidden City Company standardized and used its corporate name on its webpage, it was enough to cause the relevant public to mistakenly believe that the company has a close relationship with the Forbidden City, thereby damaging the competitive interests of the Forbidden City. The Beijing Forbidden City Company has violated the Palace Museum’s rights and interests of the “Forbidden City in Chinese” name which constituted unfair competition. The words “Supervised by the Palace Museum” marked on the packaging box of the “Forbidden City Liquid” liquor bottle produced and sold by Sichuan Palace Museum Company contained the name of the Palace Museum. Therefore, the said behavior was enough to make the relevant public misunderstand the source of the goods, infringed on the rights and interests of the “Forbidden City in Chinese” name of the Palace Museum, and constituted unfair competition.

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