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Weekly China Trademark News Updates
September 13, 2023
1. Corporate name conflicted with a prior trademark
The Beijing IP Court concluded a trademark infringement and unfair competition dispute between the appellant Guangzhou Xuetu Education Consulting Co., Ltd. (“Xuetu”) and the appellee Xiaoyuantong (Beijing) Technology Co., Ltd. (“Xiaoyuantong”). The court made a final judgment that dismissed the appeal and affirmed the lower court’s decision.
The Beijing IP Court found that: here, the Xuetu.com screen recording files and credible timestamp authentication certificates submitted by Xiaoyuantong, and multiple contracts and corresponding invoices signed by Xiaoyuantong and other third parties clearly showed that Xiaoyuantong has promoted its own education, study tours, and other contents to a certain extent, and cooperated with third parties on education, study tours, training, and other businesses, or authorized third parties to use the “Xuetu in Chinese” mark to carry out education, training, and related promotion activities. The “Xuetu in Chinese” logo was displayed or marked on relevant websites and transaction documents, which played a role in distinguishing the source of services. In terms of service content, purpose, object, and method, these services fall into Class 41 for education, organizational education, and Class 39 for tourism. The occurrence or duration of the relevant transactions was three years before the first instance of this case. Accordingly, the first instance court found that the Xiaoyuantong had used the cited mark on a certain scale and had a certain degree of popularity, which was legally justified and was not inappropriate. The Beijing IP Court affirmed the first instance court’s said finding.
In this case, Xuetu promoted the research services it provided as an experiential learning method for students. Compared with the education, organizational education, and travel companionship approved for use of the cited mark, the two are highly related or overlapped in terms of service objects, content, methods, nature, etc., and are similar services. The evidence in the case was insufficient to prove that before Xuetu applied for registration of the trademark “Xuetuyanxue in Chinese” with app. no. 3223265, it used the “Xuetuyanxue in Chinese” logo on a certain scale and had a certain influence.
Xuetu’s use of the “Xuetu in Chinese” logo and the prominent part of the cited mark both contained “Xuetu in Chinese,” and the characters were identical, which constituted as similar marks. The use of the disputed mark on services similar to the approved use of the cited mark was enough to cause confusion to the general public about the source of the service, or tricked to believed that there was a trademark licensing or associated relationship between the two, which violated Article 57(2) of the Chinese Trademark Law. The first instance court’s determination was correct, and this court upheld it.
2. “Mao in Chinese” of “Maotai in Chinese” is a registered trademark of Moutai! The “Zhamao in Chinese” mark application was rejected based on its similarity with “Mao”
The Beijing High Court made a final decision on an administrative dispute case that affirmed the rejection of the “Zhamao in Chinese” trademark application.
The Beijing High Court found that, in this case, the distinctive Chinese character for the disputed trademark is “Zhamao in Chinese,” and the distinctive Chinese characters for each cited trademark were “Mao in Chinese.” If the disputed mark and the cited marks were used in the same or similar class, the relevant public paid general attention is likely to believe that the goods were from the same entity or they have a specific association, which will lead to confusion and misunderstanding, thus, the marks constituted similar trademarks. In addition, the evidence on record submitted by Xiaolin Jiang was insufficient to prove that the disputed mark has gained a certain degree of popularity through use and produced distinctive features that can distinguish it from the cited marks. The findings of the first instance court that the disputed mark violated Article 30 of the Chinese Trademark Law was appropriate, and this court affirmed.
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