Weekly China Trademark News Updates

October 11, 2022

1. Infringers may be held not liable for compensation if the trademark has not been actually used for three consecutive years

On September 15, 2022, the Beijing High Court rendered a trademark infringement decision in favor of Yanjing Zhihui (Beijing) International Travel Service Co., Ltd. (Yanjing Zhihui) against Beijing Yanjing International Travel Service Co., Ltd. (Beijing Yanjing). The court found that, although Beijing Yanjing conducted infringement, it shall not be held liable for compensation according to the provisions of Article 64 of the Chinese Trademark Law,.

Yanjing Zhihui has legally obtained the exclusive right to use the registered trademark of “Yanjing Tourism” for use in Class 39 for travel companionship and other services.

Beijing Yanjing operates the WeChat public account “Yanjing International Travel,” where the introduction of the official account is “wholesale service providers for outbound travel, customized travel”; and has opened a self-operated store on Fliggy’s website, the store name is “Beijing Yanjing International Travel.” Yanjing Zhihui claimed that the use of “Yanjing International Travel” by Beijing Yanjing constituted infringement.

The first instance court found that the “Yanjing International Travel” used by Beijing Yanjing and the “Yanjing Tourism” mark involved in this case constituted similar logos, and the alleged infringement and the approved use scope of the mark involved in this case constituted similar services. The behavior of Beijing Yanjing constituted infringement, and the compensation amount was determined as RMB 50,000 (USD6,965). The second instance court upheld the first instance judgment.

The retrial court found that: with regard to the evidence such as screenshots of the WeChat public account submitted by Yanjing Zhihui, it was either not within the specified period, or it was self-made evidence, or it did not submit performance evidence to support it, which could not prove the existence of use in the sense of Trademark Law. At the same time, Yanjing Zhihui did not submit evidence to prove that it suffered other losses due to the alleged infringement. Accordingly, although Beijing Yanjing has committed the alleged infringement, according to Article 64 of the Trademark Law, “the owner of the exclusive right to a registered trademark cannot prove that he has actually used the registered trademark within the previous three years, nor can he prove that he has suffered damage due to the infringement. For other losses, the accused infringer shall not be liable for compensation,” thus it shall not be liable for compensation.

2. Repeated trademark infringement by using counterfeit registered trademarks is ruled as punitive damages

The Guangzhou Intellectual Property Court recently made a second instance judgment over a trademark infringement dispute between Ulthera, Inc and Guangzhou Kopai Industrial Co., Ltd. (Kopai), and ordered Kopai to compensate Ulthera for economic loss of RMB 1 million (USD140,000).

Ulthera applied for the registration of the trademark “ULTHERA” involved in the case. Kopai is a company engaged in the production and sales of medical beauty equipment. In October 2016, it was administratively punished by the Administration of Industry and Commerce for selling an ultrasonic therapeutic device that violated the exclusive right to the above-mentioned registered trademark. On August 8, 2017, Ulthera and Kopai reached a settlement for trademark infringement, but Kopai continued to produce and sell products counterfeiting the “ULTHERA” registered trademark after that and was sentenced to constitute the crime of counterfeiting registered trademarks on September 10, 2019. Ulthera believed that Kopai had infringed on its exclusive right to use its registered trademark, so it requested to order Kopai to stop the infringement and compensate it for economic losses and reasonable expenses of RMB 1 million (USD140,000).

The court held that the accused infringing logo was similar to the registered trademark involved, and the accused infringing goods and the goods approved for use by the registered trademark involved also overlapped in consumers and service objects and constituted similar goods. The behavior of Kopai infringed the exclusive right of Ulthera’s registered trademark. On the issue of the amount of compensation, the court held that Kopai’s failure to perform the settlement agreement and ignoring the intellectual property rights of others constituted extremely serious infringement. At the same time, Kopai has repeatedly committed infringing acts and the infringing products involved were ultrasonic therapeutic apparatuses, which may endanger human health and the degree of infringement was serious. Considering the obvious subjective maliciousness and serious infringement of Kopai, the punishment should be increased. Therefore, in this case, double punitive damages shall be applied and Ulthera’s claim for damages of RMB 1 million (USD140,000) was fully supported.

3. The CNIPA held a special press conference on “The Decade of Intellectual Property”

On October 9, 2022, the CNIPA held a special press conference on “The Decade of Intellectual Property Rights” together with a regular press conference in October to announce the historic achievements and historic changes in the development of intellectual property.

From 2012 to 2021, the CNIPA has allowed a total of 35.563 million trademarks, with an average annual growth of 25.5%. As of September 2022, there were 41.523 million valid trademark registrations in China, and the average review period for trademark registration was stable at 4 months.

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