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Weekly China Trademark News Updates
November 22, 2022
1. The Beijing High Court found that “Ultraman in Chinese” constituted a well-known mark and granted cross-class protection
On October 31, 2022, the Beijing High Court made a final judgement for a trademark infringement and unfair competition dispute between Shanghai Xinchuanghua Culture Development Co., Ltd. (“Xinchuanghua”) against Shenzhen Hongyun Technology Co., Ltd. (“Hongyun”) and Beijing 360° E-Commerce Co., Ltd. The court found Hongyun to be liable for trademark infringement and unfair competition.
Hongyun manufactured and sold children’s electric toothbrush labeled with “Ultraman in Chinese” mark without authorization. The infringing product was promoted and introduced as “Ultraman Collaboration,” and the cartoon image of Ultraman appeared in many places on the promotional page, and words such as Ultraman blue, white, and yellow were used in the promotion process, and a three-dimensional image of Ultraman was used on the box of the toothbrush’s brush head. Xinchuanghua claimed that Hongyun’s actions constituted trademark infringement and unfair competition.
The court found that, in addition to providing numerous evidence of the general popularity of “Ultraman in Chinese,” Xinchuanghua provided a public release license for Ultraman’s film and television works for its class 9 “Ultraman in Chinese ” trademark (animation, etc.), proofs of popular broadcasts of works on major video websites, news reports, corresponding stage plays, theme exhibitions and large amount of other evidence. Regarding its class 28 “Ultraman in Chinese” mark (toys), Xinchuanghua also provided large amount of evidence of toy sales rankings of major e-commerce websites, contracts, license fees, and invoices such as Taobao, Tmall, and JD.com. The evidence can prove that through long-term and continuous use in mainland China, the overall brand “Ultraman in Chinese” including Ultraman film and television dramas and the registered trademark involved has already established a relatively high market reputation in China, constituted a well-known mark.
The “Ultraman in Chinese” mark has a high reputation and influence in the field of animation and toys. The infringing product of children’s electric toothbrush and animation products are mostly targeted at children, and the two have a high degree of overlap in terms of sales targets and sales channels, which can easily mislead the relevant public into thinking that the above-mentioned products come from the same entity or an entity that has a specific association. Therefore, Hongyun’s sale of children’s electric toothbrushes violated Xinchuanghua’s exclusive right to use the registered trademark.
Hongyun’s uses of the “Q version Ultraman” image on the product page and on the product’s physical outer packaging bag and uses of the word “Ultraman in Chinese” in the promotional introduction was enough to make relevant consumers mistakenly believe that it was producing and selling the electric toothbrush authorized by Yuangu or Xinchuanghua or their product was an official product of “Ultraman.” Therefore, Hongyun’s actions have the intention of taking an advantage of the goodwill of “Ultraman,” which constitutes unfair competition.
2. The Beijing High Court recognized the “PUMA” mark as a well-known mark and granted cross-class protection
On October 31, 2022, the Beijing High Court made a final judgment on an administrative dispute over an invalidation action, affirming that the “PUMA” mark constituted a well-known mark and granted cross-class protection.
Puma Europe (“Puma”) is the registrant of the trademarks “PUMA” and “PUMA and Design” (“Cited Marks”), which are approved to be used in class 25 for “sports clothes; sports pants; sports shoes; etc.” Beijing Sweet Puma Network Technology Co., Ltd. (“Sweet Puma”) applied for the registration of the “sweet puma” mark (“Disputed Mark”) on February 1, 2016 and was approved for registration in class 43 for “cafes; fast food restaurants; bar services; etc.” Puma filed an invalidation against the above trademark.
|Disputed Mark||Cited Marks|
On October 16, 2019, the CNIPA found that the Disputed Mark and the Cited Marks did not constitute similar marks according to Article 30 of the 2013 China Trademark Law. Puma’s evidence could prove that prior to the Disputed Mark’s application date, the “PUMA” mark had obtained certain fame, however, the Disputed Mark was approved for lodging related services, which was obviously different from the Cited Marks’ approved use for clothing and sportwear related goods in terms of function, use, service channels. The relevant public paying general attention would not mistake services labeling the Disputed Mark to be originated from Puma, nor will they believe there were special association between the two registrants. The Disputed Mark’s validity was maintained.
Puma appealed to the Beijing IP Court, but the court affirmed the CNIPA’s decision. Puma then appealed to the Beijing High Court.
The Beijing High Court found that, in the evidence submitted by Puma, Cited Mark 1 has been used in China for over 40 years and has been extensively sold and promoted for “sports clothing, sports shorts, and sneakers,” which obtained extremely high market fame. Thus, before the Disputed Mark’s application date, the relevant public is familiar with Cited Mark 1 on “sports clothing, sports shorts, and sneakers,” which reached well-known status.
In this case, the Disputed Mark completely included the Cited Marks. These marks were similar in terms of word composition, pronunciation, and overall appearances. Despite the Disputed Mark included other English word, the overall appearances did not distinguish itself from the distinctive part of the Cited Mark 1. Thus, the Disputed Mark imitated the Cited Mark 1. The Disputed Mark’s approved use for “cafes; fast food restaurants; bar services; etc.” did not fall into the same class of goods as “sports clothing, sports shorts, and sneakers” for the Cited Mark 1. However, the garget consumer, sales channel, and place of use for the Cited Mark 1’s approved goods could have certain association with “cafes and bar services.” Thus, the relevant public for both marks overlapped. Consider the Cited Mark 1 had extremely high fame, the co-existence of both marks on the market would easily cause the relevant public to believe there are associations between the Cited Mark 1 and the Disputed Mark, which would cause misunderstandings amount the relevant public and damages Puma’s interests. Thus, the Disputed Mark violated Article 13(2) of the 2013 China Trademark Law.
3. The CNIPA and the State Administration for Market Regulation launched a special campaign to rectify trademark agency industry
In recent years, phenomena such as soliciting business by improper means and applying for trademarks in bad faith by intellectual property service agencies have occurred from time to time, causing adverse social impacts. The CNIPA and the State Administration for Market Regulation have decided to jointly launch a special rectification campaign for trademark agency industry from November to December 2022.
Intellectual property management departments and market supervision departments in various places collect and search for illegal clues such as forged application materials and legal documents, soliciting business by improper means, falsely claiming to have internal relations, squatting on behalf of agents, and hoarding of trademarks. Local market supervision departments must strictly investigate and deal with illegal acts of trademark agency in accordance with relevant regulations such as the Trademark Law, the Regulations for the Implementation of the Trademark Law, and the Regulations on Regulating Trademark Application for Registration. For those engaged in trademark agency business through the Internet, focus on checking whether they have maliciously squeezed out competitors, provided services at prices below cost, and displayed trademarks with major adverse effects through the Internet.
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