Weekly China Trademark News Updates

October 12, 2023

1. The CNIPA issues “Guidelines on Same-Day Trademark Applications Procedures”

On September 27, 2023, the CNIPA issued the “Guidelines on Same-Day Trademark Applications Procedures,” which further clarified the examination procedures and precautions for the trademark applications filed on the same day and clarified the exceptions on same-day trademark applications procedures. According to the Guidelines, in principle, the same-day trademark   applications procedure should first determine the ownership of the trademark application rights and followed by a comprehensive substantive examination of the trademark application. However, if there are valid prior trademarks, and/or that the new application violated Article 19(4) and/or Article 4 of the China Trademark Law, such application shall be rejected. The Guidelines listed some specific exceptions, including the “Leishenshan (Thunder God Mountain)” trademark squatting case, the “Bing Dwen Dwen” trademark squatting case, and deliberate same day filings of “Morphy in Chinese” marks, etc.

2. Online submission of trademark oppositions will be fully implemented

On October 7, 2023, the CNIPA issued a notice that starting from December 1, 2023, trademark agencies handling oppositions should, in principle, submit electronic applications through the trademark online service system and no longer submit paper applications.

3. Schneider Electric (China) Co., Ltd. wins a trademark invalidation case

Cited Marks	Disputed Mark

Gastongerin Electric (Shenzhen) Co., Ltd. (“Gastongerin”) applied for registration of the “Gastongerin” trademark with reg. no. 21978816 (“Disputed Mark”) on November 21, 2016. The Disputed Mark was approved for registration on January 7, 2018. Schneider Electric (China) Co., Ltd. (“Schneider”) filed an invalidation based on its Cited Marks. After trial, the CNIPA decided that the Disputed Mark should be invalidated. Gastongerin appealed the CNIPA’s decision to the court. After trial, the court found that the “coaxial cables, power supply materials (wires, cables), telephone lines; etc.” approved under the Disputed Mark and the “wires, batteries, circuit breakers; etc.”  approved under the Cited Marks 1 to 3 fall into the same subclasses based on the CNIPA Classification. The said goods were also similar in functions, uses, production departments, sales channels, consumer objects, etc., and constituted identical or similar goods. The Disputed Mark “Gastongerin” is in English, the Cited Mark 1 is “MERLIN GERIN and Design,” and the Cited Marks 2-3 are both “MERLIN GERIN” in English. Comparing the Disputed Mark with the Cited Marks 1 to 3, the English composition and arrangement of the second half of the Disputed Mark and the Cited Marks 1 to 3 were identical. Only the capitalization of the letters was different, hence, these marks shall constitute similar marks. The submitted evidence shows that Gastongerin had previously applied the “MELINGERIN” and “MG” design marks that were similar to Schneider’s “MERLINGERIN” logo, but both were invalidated or refused by the CNIPA. On this basis, if the Disputed Mark and the Cited Marks coexist in the market, it will easily cause confusion and misunderstanding among the relevant public, or make the public to believe that there was some connection between the source of the goods. Therefore, the Disputed Mark and the Cited Marks constituted similar marks used on identical or similar goods, which violated Article 30 of the 2013 China Trademark Law. Accordingly, the Beijing Intellectual Property Court and the Beijing High Court upheld the CNIPA’s decision.

4. Overseas trademarks use and promotions can be deemed to have been used in China and have a certain degree of fame

Guangzhou Hanhuijiaoren Cosmetics Co., Ltd. (“Hanhuijiaoren”) applied to register the “V7 Toning Light” mark with reg. no. 17769144 (“Disputed Mark”) on August 27, 2015. The Disputed Mark was approved on December 21, 2017. HAVE & BE CO.，LTD (“HAVE & BE”) filed an invalidation against the Disputed Mark. After trial, the CNIPA invalidated the Disputed Mark. Hanhuijiaoren dissatisfied with the decision and appealed to the court. After trial, the court found that the Disputed Mark’s application date was only a few months apart from the time when HAVE & BE launched and promoted the “V7 Toning Light” brand, and that HAVE & BE used and promoted the “V7 Toning Light” mark. The evidence, however, was mostly formed outside China, but in the Internet age, consumers learned about new overseas brands in real time through overseas websites, and purchase hot-selling overseas brand products through new marketing models such as purchasing agents, overseas purchases, and outbound travel duty-free shopping. HAVE & BE also provided evidence showing beauty bloggers’ Weibo posts, purchasing agents’ articles and comments related to “V7 Toning Light” facial cream and other products, which can prove that relevant consumers in China knew of HAVE & BE’s “V7 Toning Light” before the Disputed Mark’s application date, and has a certain degree of understanding and awareness. Comprehensively considered the following circumstances: 1. Hanhuijiaoren and HAVE & BE were operators in the same industry; 2. The “V7 Toning Light” trademark was a made-up word. Hanhuijiaoren applied for registration of an identical mark previously used by HAVE & BE  and Hanhuijiaoren had given no reasonable explanations; 3. Hanhuijiaoren has subjective bad faith in taking advantage of HAVE & BE’s products, which can be determined that before the Disputed Mark’s application date, HAVE & BE’s “V7 Toning Light” mark has been used on “cosmetics” products in China and has a certain degree of fame. Products such as “facial cleanser, cosmetics, toothpaste” used under the Disputed Mrak highly overlapped with “cosmetics” products previously used by HAVE & BE ’s “V7 Toning Light” unregistered mark in terms of production departments, sales channels, consumer groups, etc. These goods constituted as identical or similar goods. The Disputed Mark was identical with the “V7 Toning Light” mark previously used by HAVE & BE. Therefore, the Disputed Mark’s approved goods constituted the situation under the 2013 Trademark Law where “a trademark that is already used by others and has a certain influence shall not be preemptively registered by unfair means” and should be invalidated.

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