Weekly China Trademark News Updates

October 19, 2021

1. Starting January 1, 2022, the CNIPA will no longer issue paper trademark certificates

Recently, the CNIPA announced that starting from January 1, 2022, applicants who filed paper trademark applications will receive a “Notice of Issuing a Trademark Registration Certificate,” and the trademark registrant can use the web address and access code provided to retrieve electronic trademark registration certificate from the Trademark Office’s website. Applicants who filed trademark applications electronically can log into the Trademark Office’s online platform to view, download, and print electronic trademark registration certificate. The CNIPA will no longer issue paper trademark registration certificates.

2. Mary Kay lost in a trademark infringement and unfair competition dispute

Recently, the Zhejiang High Court rendered a second instance judgement against Mary Kay Inc. (“Mary Kay”) in a trademark infringement and unfair competition dispute. The court found that even if barcodes were scratched, such action cannot be seen as a trademark infringement because Mary Kay’s trademark right was exhausted on first sale.

Mary Kay registered the trademarks “Mary Kay in Chinese” with registration number 594710 and “MARY KAY” with registration number 1275186 in Class 3 for “cosmetics” related goods. Since Mary Kay entered China in 1995, it has continued to use and extensively publicize the said trademarks. The “Mary Kay in Chinese” trademark had relatively high fame. The defendant, Ma Shunxian, was the operator of the Taobao shop “Pink Shop Authentic Beauty Mall.” Various pictures of beauty and skin car products marks with the “Mary Kay” logo were found in the shop’s page. The shop’s front page indicated that all products sold were authentic and had explanations regarding reasons for scratched barcodes. Mary Kay sued Ma’s shop for trademark infringement and unfair competition based on the scratched barcodes to the Zhejiang Intermediate People’s Court and requested relief to immediately stop infringement actions and pay compensation for economic loss of RMB 500,000 (USD 77,971). The Zhejiang Intermediate Court found for Mary Kay and Ma appealed to the Zhejiang High Court.

The Zhejiang High Court reasoned that in a trademark infringement case, if the alleged infringing product was a genuine product, it would be an objective fact that the product originated from the right holder, although some of the barcodes and production batch numbers of the alleged infringing product that can be traced back to the dealer’s partial information were scratched, but if the seller had fully notified the code scratching, it would not harm Mary Kay’s trademark function as to identify the source of the goods, nor would it cause confusion or misunderstanding to the relevant public. It would certain not affect consumers’ perception of Mary Kay’s product and Mary Kay’s reputation. Therefore, the trademark exhaustion principle could be applied in this case and the defendant did not infringe upon Mary Kay’s trademark.

3. Ikea was awarded RMB 600,000 in compensation in a trademark infringement dispute

Recently, the Henan High Court affirmed the first instance court’s decision regarding a trademark dispute involving “Ikea in Chinese,” “Ikea,” and “Jiyou Yi Jia in Chinese.” The court found that the owner of “Jiyou Yi Jia in Chinese” infringed upon Ikea’s trademark rights and shall compensate Ikea’s economic loss of RMB 600,000 (USD93, 581).

Ikea is the right holder of the trademarks “Ikea in Chinese” with registration number 772439 and “IKEA” with registration number 772441 in Class 43 for “restaurant” related services. Ikea’s trademarks “Ikea in Chinese” had rather strong distinctiveness on restaurant related services, and had obtain relatively high fame through use. The owner of the mark “Jiyou Yi Jia in Chinese,” Henan Banmutian Co., Pengfei Lv, and Xiaoting Lv, applied for the “ikea” domain name and trademarks similar to Ikea’s registered trademarks. Additionally, they have promoted and advertised franchise opportunities on WeChat, Weibo, Tik Tok, and its website using marks that were similar to “Ikea in Chinese” and “IKEA.” Such actions would be likely to cause confusion and mistaken the relevant public, which constituted as a trademark infringement upon Ikea’s trademark rights and disturbed the normal market competition and order.

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