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Weekly China Trademark News Updates – September 14, 2021

2021-09-14

Weekly China Trademark News Updates

September 14, 2021

1. Amazon’s “AWS” trademark was rejected in the second instance

On September 1, 2021, the Beijing High Court rejected Amazon’s appeal and affirmed the first instance court’s decision on Amazon’s “AWS” trademark application in Class 35.

On September 5, 2017, Amazon applied for “AWS” mark with application number 26231153 designated in Class 35 for “business consulting; business data analysis; data processing services; providing online market for buyers and sellers of goods and services; business management and organization consulting.” The CNIPA refused the “AWS” mark for registration citing prior similar marks. Amazon was unsatisfied and appealed the decision to the first instance court.

Disputed Mark Cited Mark 1 Cited Mark 2

On September 1, 2021, the Beijing High Court found that first, as the time of the second instance trial, the cited mark 1 was still a prior valid registered trademark, which could block the Disputed Mark’s registration. Second, according to the effective administrative judgment no. 1611 made by this court, the Cited Mark 2 in this case has made an actual, legal, and effective commercial use in its approved services of “systematization of computer database information, incorporation of information into computer database.” The Cited Mark 2’s registration in the above services should be maintained. Accordingly, the Cited Mark 2 also constituted as a prior right obstacle to the Disputed Mark. Third, in view of Amazon’s explicit recognition in the original trial that the services designated for the use of the Disputed Mark and the services approved for the use of the Cited Mark 2 constituted the same or similar services, this court confirmed such facts after examination. The Disputed Mark was composed of the English letters “AWS,” which was similar to the Cited Mark 1 and Cited Mark 2 “AWS” in letter composition, pronunciation, etc., and there were no obvious overall differences between the marks. At the same time, when used in the same or similar services, it was easy for the relevant public to associate that the marks were from the same entity or they were serial marks, or that there was certain special relationship between the trademark owners, so as to misidentify the source of the services. Therefore, the first instance court did not err in finding that the Disputed Mark’s application violated Article 30 of the Chinese Trademark Law 2013.

2. The Suzhou Intermediate Court ordered RMB 15 million in compensation for bad faith trademark filings and trademark hoarding

Recently, the Suzhou Intermediate Court concluded a trademark infringement and unfair competition dispute case, and ordered RMB 15 million (USD 2.3 million) in damages against a household furnishing company in Fujian (hereinafter referred to as the “Fujian Company”).

Big Nature Home (China) Co., Ltd. (“Nature Company”) is the owner of multiple registered trademarks such as “Big Nature in Chinese” and “Nature.” The Fujian Company applied for the “Big Nature Aesthetician in Chinese” mark and created the WeChat public account of ” Big Nature Aesthetician Flooring.” In the WeChat account, 46 franchised stores were listed and the “” mark was used on the franchise page. Meanwhile, the Fujian Company  registered the “naturemxj.com” domain name and used logos such as “Big Nature Aesthetician” and “Nature Mxj” in many places in its shops. In addition, the Fujian Company has applied for registration of 50 trademarks for goods/services in different Classes, 36 of which were submitted on the same day.

At the beginning of 2020, Nature Company filed a lawsuit to the court, demanding that Fujian Company immediately stop the infringement and compensate RMB 15 million for losses. The court held that the alleged infringing marks were similar to Nature Company’s trademark in terms of text, pronunciation, overall color matching, and visual effects, which could easily cause the relevant public to misunderstand the source of the goods or believe that it had a specific association with Nature Company’s products. Thus, it constituted as trademark infringement. At the same time, when the Fujian Company was established, the Nature Company’s trademarks already had high reputation and influence. As a business in the same industry, the Fujian Company registered words containing the infringing mark as its corporate name and deliberately taking advantage of Nature Company’s fame, caused confusion to the relevant consumers and amounted to unfair competition. In addition, the Fujian company deliberately registered a domain name similar to the Nature Company’s trademark and used the website to engage in corresponding commercial promotion activities, which was enough to cause the relevant public to misidentify the owner of the website or believe that the website has a special licensing relationship between the Nature Company and the Fujian Company, which amounted to unfair competition and violated the good faith principle and should be prohibited. This case is a malicious infringement with serious circumstance, and it meets the applicable conditions of punitive damages. In this case, punitive damages is doubled and the Nature Company’s claim of RMB 15 million is fully supported.

3. The Beijing Intellectual Property Court held a briefing on penalties involving perjury in administrative cases of trademark cancellation appeal

On September 10, 2021, the Beijing Intellectual Property Court (Beijing IP Court) held a briefing on penalties involving perjury in administrative cases of trademark cancellation appeal. At the meeting, the Beijing IP Court released the relevant status of the trial of administrative cases of trademark cancellation appeal, the main methods of regulating perjury in such cases, and related suggestions to further strengthen the protection of the entire chain of intellectual property rights.

Since 2019, the Beijing IP Court has concluded 40,114 trademark authorization and confirmation cases, of which 3,843 trademark cancellation appeal cases have been concluded, accounting for 9.6% of all trademark authorization and confirmation cases. Among them, a total of 970 cases were cancelled by the CNIPA with a cancellation rate of 27.7%. Regarding trademark registrants who submitted forged evidence of trademark use and falsified facts of trademark use, the Beijing IP Court has ordered punitive decision against these trademark registrants.

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