Weekly China Trademark News Updates

November 29, 2022

1. CNIPA released the Understanding and Application of the Standards for Determining General Trademark Violations

From November 8 to November 18, the CNIPA successively released nine articles of “Understanding and Application of the Standards for Determining General Trademark Violations,” (“Understanding and Application”) which explained in detail the 35 articles of the “Standards for DeterminingGeneral Trademark Violations,” (“Standards”) and answered in a timely manner the understanding and application problems encountered during the implementation of the Standards.

In “Understanding and Application,” the CNIPA explained the Standards with 15 explanatory cases, including the former Shanghai Municipal Administration for Industry and Commerce (“AIC”)’s investigation and punishment of a company in Shanghai for unauthorized use of the name and emblem of the United Nations, the former Nanjing Municipal AIC’s investigation and dealing with a Jiangsu company’s unauthorized use of the British flag, Shanghai Songjiang District Market Supervision Administration’s investigation and handling of a Shanghai company’s bad faith trademark registration case, the “Call a Duck & Design” trademark refusal appeal case, and several counterfeit registered trademarks cases, trademark infringements, voluntary changes to registered trademarks. This is to help law enforcement officers to better understand the enforcement standards for general trademark violations.

Among them, regarding the reference basis for “departments in charge of trademark law enforcement to investigate and deal with bad faith trademark registration” stipulated in Article 33 of the “Standards,” the “Understanding and Application” pointed out: “It should be noted that, with respect to violations of illegal use of trademarks stipulated in Article 10 of the Chinese Trademark Law that may be investigated and dealt with by the department in charge of trademark law enforcement, the investigation and handling of bad faith trademark registration generally requires relevant effective decisions or rulings from the CNIPA as evidence. At the same time, the effective decision or ruling is not a sufficient element for finalizing a case, and a judgment needs to be made in light of the specific circumstances of the case.”

Understanding and Application is conducive to promoting the implementation of the “Standards,” and then realizes the purpose of the “Standards” to “strengthen trademark management, strengthen trademark law enforcement business guidance, and unify law enforcement standards.”

2. Reversing First Instance Judgment, Beijing High Court Identified “Budweiser in Chinese” as Well-Known Trademark and Provided Cross-Class Protection

Recently, the Beijing High Court recognized “Budweiser in Chinese” as a well-known mark and granted cross-class protection as the basis to invalidate the Disputed Mark “Budweiser Mooncake in Chinese.” The lower court and the CNIPA’s decisions were vacated.

The Disputed Mark was filed by a food company on February 25, 2014 and allowed on August 14, 2015. Before its fifth registration anniversary date, Budweiser filed an invalidation petition on August 4, 2020.

On July 22, 2021, the CNIPA found that the Disputed Mark did not violate either Article 13(3) of the Chinese Trademark Law or Article 32 for “damaging other’s existing prior rights,” and maintained the Disputed Mark.

Budweiser appealed to the Beijing IP Court. The court found that: first, the evidence submitted was insufficient to prove that before the Disputed Mark’s application date, the Cited Mark had been widely known in mainland China on beer related goods and reached the degree of fame required to be recognized as a well-known mark. Second, the Disputed Mark’s approved goods for mooncake were obviously different from the Cited Mark’s approved goods for beer in terms of function, use, consumer, sales channels, etc. Further considering the Disputed Mark’s owner has obtained registration of the “Budweiser in Chinese POWER & Design” mark since 1996 for goods in class 30 and coexisted with “Budweiser in Chinese” mark from 2002 to 2019 on mooncake goods, the Disputed Mark would not confuse the relevant public and did not damage Budweiser’s interests. Thus, the Disputed Mark did not violate Article 13(3) of the Chinese Trademark Law.

Regarding Article 32, the court found that Budweiser’s evidence can barely prove that there was any use of the Cited Mark on mooncake related goods prior to the Disputed Mark’s application date, thus, it cannot prove that the “Budweiser in Chinese” trade name obtained certain fame and was known to the public prior to the Disputed Mark’s application date on mooncake related good. The court did not support Budweiser’s prior trade name right claim.

Budweiser appealed to the Beijing High Court. The second instance court found that the Cited Mark had reached the degree of well-known on beer related goods before the Disputed Mark’s application date. The distinctive part of the Disputed Mark is identical with the Cited Mark which has constituted copy and imitation of a well-known mark. The Disputed Mark’s approved goods for mooncake related goods and the Cited Mark’s well-known goods beer are all daily food and beverages in daily life, consumers for both goods highly overlapped. The relevant public are likely to confuse that the source of the two marks are identical or the two are highly associated, which would mislead the relevant public and damage Budweiser’s well-known mark and interests. Although the food company provided relevant award certificates and promotional reports on its “Budweiser in Chinese” mooncake, such evidence was insufficient to prove the registration and use of the Disputed Mark would not confuse the relevant public. Thus, the Disputed Mark violated Article 13(3) of the Trademark Law and shall be invalidated.

3. “HAMPTON WATER” overcome absolute grounds and secured registration via proceedings before the Courts

HMPTN WATER LLC filed the “HAMPTON WATER” mark (“Disputed Mark”) in class 33 for wine related goods on December 26, 2019. On January 26, 2021, the CNIPA found that the “HAMPTON” in the Disputed Mark is a foreign geographical name known to the public and did not have other distinctive meanings and rejected the Disputed Mark for registration. HMPTN appealed to the Beijing IP Court.

The court found that the Disputed Mark consists of “HAMPTON” and “WATER,” and “HAMPTON” is a common last name and even when designated as a geographical name, there are many cities and towns with name of or incorporating “HAMPTON,” which means this word does not point to a single geographic place known to the public. None of the cities and towns with the name of or incorporating “HAMPTON” is more famous than the others to China’s relevant public. Thus, to China relevant public, “HAMPTON” as a last name is more distinctive than as a geographical name. When examining the Disputed Mark as a whole on wine related goods, the main meaning of the Disputed Mark is no longer based on a geographical name. The Disputed Mark would not exclude entities in other cities or towns to use “HAMPTON” as its geographical name. Considering “HAMPTON” does not indicate a single geographical place, nor does the relevant public believe that “HAMPTON” represents the relevant goods’ place of origin, the Disputed Mark is distinctive and can be distinguished as a trademark to be registered and used. The CNIPA’s decision shall be corrected.

The CNIPA appealed to the Beijing High Court. The Beijing High Court affirmed that “HAMPTON” is a common English last name. Even used as a geographical place name, there are many cities and towns around the world use “HAMPTON” or include “HAMPTON” as its name. “HAMPTON” does not indicate only one geographical place. Considering the Disputed Mark also includes “WATER,” the relevant China public are unlikely to associate the Disputed Mark with a foreign geographical place name. Thus, the Disputed Mark does not violate Article 10(2) of the 2019 Trademark Law.

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