Weekly China Trademark News Updates

September 2, 2022

1. China’s trademark filings show negative growth for the first time in 15 years

From January to June 2022, the CNIPA received a total of 3.9 million trademark applications, a year-on-year decrease of 18.75%. Among them, there were 2.6 million on goods, a year-on-year decrease of 18.95%, and 1.3 million on services, a year-on-year decrease of 18.36%.

The data shows that the most popular classes are Class 35 for advertising sales, Class 30 for food, Class 9 for electronic equipment,a Class 29 for meat, Class 43 for catering, Class 25 for clothing, shoes, and hats, and Class 33 for wine, Class 5 for pharmaceuticals, Class 41 for education and entertainment and Class 42 for technology services., a year-on-year decrease of 9.88% to 33.45%.

2. The Beijing IP Court issued a report on “Transitional Guiding Period” for Online Case Filing

With the normalization of epidemic prevention and control, in order to fully implement key tasks such as optimizing business environment, help the right owners to enforce their rights, and build a more complete litigation and trial platform, the Beijing Intellectual Property Court issued, on July 25, 2022, the “Announcement on Comprehensive Implementation of Online Filing of Administrative Cases for Patent and Trademark Right Granting and Verification.” From September 1, 2022, online filing will be fully implemented in administrative cases of patent and trademark right granting and verification in which an agent is entrusted to participate in the litigation. In the nearly one month since the release of the Announcement, there were 4,974 first-instance cases directly filed online to the Beijing IP Court, accounted for 66% of the total first-instance cases.

3. The Beijing High Court reversed the CNIPA’s ruling and the first-instance judgment, finding that the coexistence of “Zimeitang” and “Shiseido in Chinese” will not cause confusion and misidentification

Shiseido Co., Ltd. (“Shiseido”) cited the “Shiseido in Chinese” trademarks on October 14, 2019 to invalidate the “ZIMEITANG in Chinese ” mark with reg. no. 28197986 registered and used by Beijing Zimeitang Co., Ltd. (“Zimeitang”) on cosmetic goods in Class 3. The CNIPA found that the two parties’ marks were similar and in favor of Shiseido.

Disputed Mark	Cited Mark 1	Cited Mark 2

Zimeitang appealed the unfavorable decision with the Beijing IP Court. Both parties submitted a large amount of evidence to prove the fame and use of their respective trademarks during the CNIPA review and the court trial proceedings. The Beijing IP Court found that the evidence provided by Shiseido proved that the Cited Marks had a high reputation among Chinese consumers in cosmetics and other goods before the Disputed Mark’s application date, especially that the Cited Marks were recognized as famous marks on “cosmetic” goods to the public by the original Trademark Office in as early as April 2009. The Disputed Mark was similar to the Cited Marks in terms of font, pronunciation, etc. Although Zimeitang has provided a large amount of use evidence to prove that the Disputed Mark has been used for many years and has formed a corresponding relationship with it, given that the Cited Marks were registered earlier and has a high reputation, it would be difficult for the relevant public to distinguish the two when paying general attention, so the CNIPA decision should be affirmed.

Zimeitang appealed the first-instance judgment to the Beijing High Court. In the second-instance procedure, it further submitted evidence to prove the use and popularity of its trademark.

The Beijing High Court found that the Disputed Mark was composed of the Chinese characters “ZI MEI TANG,” while the Cited Mark 1 and 2 are composed of the Chinese characters “Shiseido in traditional Chinese” and ” Shiseido in simplified Chinese” respectively. Although all trademarks contain the character “Tang in Chinese,” based on common market habits, the character “Tang”, which could mean hall,  is often used as a suffix for trademarks or trade names. It does not play a role in distinguishing and identifying, so it does not constitute a distinctive identification part of the above-mentioned trademarks. The distinctive characters “Zimei in Chinese” of the Disputed Mark were completely different from the characters “Zisheng in traditional Chinese and “Zisheng in simplified Chinese” in the Cited Marks 1 and 2, and their meanings were also significantly different. The difference was obvious in the overall comparison, and the relevant consumers can distinguish them. Although Shiseido’s Cited Marks have a high reputation, the evidence provided by Zimeitang can also prove that the Disputed Mark has been used on a certain scale and has obtained a certain popularity and influence. The coexistence of the Disputed Mark and the Cited Marks on the approved goods would not cause confusion and misunderstanding, so the registration of the Disputed Mark did not violate Article 30 of the Trademark Law2013. The CNIPA decision and original judgment were incorrect and the Beijing High Court shall correct them. Since the new evidence provided by Zimeitang in the lawsuit was not the basis for the ruling of CNIPA decision, the CNIPA was not at fault and Zimeitang was still responsible for the court fees.

4. Frescobaldi finally removed a similar mark after the court determined that tea drinks, sweets (candy), etc. were similar to wine

Marchesi Frescobaldi Societa Agricola S.R.L. (“Frescobaldi”) filed successively an opposition, an invalidation, first instance and second instance administrative lawsuits to remove the “Frescobaldi” trademark in Class 30 for “tea-based beverages; confectionery [candy]; chocolate; pastries; bread; biscuits; rice-based snack food” from the registry.

Disputed Mark	Cited Marks 1 and 2	Cited Marks 3 – 6
Class 30:  Tea-based beverages; Confectionery [candy]; Chocolate; Pastries; Bread; Biscuits; Rice-based snack food	Class 29: Oil, extra virgin olive oil. Class 33: Wines, sparkling wines, liqueurs	Class 29: Edible fats; Fruit, preserved; Vegetables, preserved, etc. Class 33: Wine; Alcoholic beverages, except beer; etc. Class 43: Bar and restaurant services

Both CNIPA’s invalidation decision and the Beijing IP Court’s first instance decision found that the Disputed Mark did not violate Article 30 or Article 44(1) of the Chinese Trademark Law. Frescobaldi appealed to the Beijing High Court.

The Beijing High Court found that according to the facts proved by the evidence on record, Frescobaldi’s FRESCOBALDI winery has a long history, and the “FRESCOBALDI” wine produced by it has been sold and promoted in mainland China through Chinese distributors since 2006. In terms of wine products, for the relevant Chinese public, “Hua Si Die in Chinese” and “FRESCOBALDI” have formed a commercial correspondence through long-term use. The registrant of the Disputed Mark, as a relevant public in China, deliberately applied for the registration of the “Frescobaldi” trademark, which was identical to the Cited Marks 1 and 2 and has a corresponding relationship with the Cited Marks 3 to 6. Although the Disputed Mark was used sparingly, it was not enough to eliminate the subjective bad faith of its application for registration.

In this case, Frescobaldi did not submit evidence of the use of the Cited Marks for goods in Class 29. Considered that tea drinks, sweets (candy) and other goods approved and used by the Disputed Mark were significantly different from goods in Class 29, so these marks’ coexistence in the market was not enough to create a likelihood of confusion. However, the evidence in the case can prove that Frescobaldi’s “FRESCOBALDI” wine has gained a certain reputation in the Chinese market after being promoted and used. Tea beverages, sweets (candy) and other goods designated by the Disputed Mark and the Cited Marks’ approved goods for wine and other goods in Class 33 were commonly used in foods in daily life, and the two were similar in function, use, sales channels, consumer groups, etc. According to the circumstances of this case, these goods could be categorized as similar goods. The Cited Marks “Hua Si Die in Chinese” and “FRESCOBALDI” were highly distinctive, and the Disputed Mark was identical or corresponded with Cited Marks and should be judged as similar marks. If the Disputed Mark and the Cited Marks were used on the above-mentioned goods, it would be easy for the relevant public to confuse and misunderstand the source of the goods. Therefore, the Disputed Mark constituted as a similar mark used on identical or similar goods, and the CNIPA decision and the first instance court judgment were incorrect and this court has corrected them.

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