Weekly China Trademark News Updates

September 27, 2022

1. Using “HUAWEI” as a search keyword for products is considered as trademark infringement

Recently, the Shenzhen Futian District Court rendered a first-instance judgment on a trademark infringement dispute between Huawei Technologies Co., Ltd. (“Huawei”) and Shenzhen Mingyu United Technology Co., Ltd. (Mingyu United), and ordered Mingyu United to compensate Huawei for economic losses of RMB500,000 (USD69,000) and reasonable expenses of RMB1,069.8 (USD140).

Huawei obtained the exclusive right to use the registered trademarks “Huawei in Chinese” and “,” and was approved to use them on Class 9 for headphones and other goods. The said trademarks are still valid.

In this case, the accused infringing product is the same kind of product as those under Huawei’s registered trademark. The defendant set “Huawei in Chinese” as a search keyword and used the word “Huawei in Chinese” in its product name. “Huawei in Chinese” constitutes the same trademark as the Huawei’s registered trademark. Mingyu United used a graphic logo as the displayed picture. The graphic logo and Huawei’s registered trademark are both composed of the upper part of petals design and the lower part of English letters. The design parts on both marks are all in the shape of petals, and the overall visual effect is the same; the English letters “IEWAUH” are the same as Huawei’s. The English letters of the registered trademark “HUAWEI” have the same letter composition in reverse order. From an overall point of view, Mingyu United’s graphic logo is similar to Huawei’s registered trademark.

The search keyword “Huawei in Chinese” set by Mingyu United, the word “Huawei in Chinese” and the design logo used on the sales page of the accused infringing product have the function of identifying the source of the product and are trademark uses. Although Mingyu United indicated that the brand was SCOLIB in product details, and that the accused infringing product did not have the word “Huawei in Chinese” or a design logo, it set “Huawei in Chinese” as a search keyword and used “applicable to Huawei” and “original and genuine Huawei headphones,” in the product details, used design logos on the displayed photos, and labeled “Huawei in CHinese” in the product name and model details. These acts obviously showed the bad faith intention of takingadvantage of Huawei’s reputation, and it is very likely for the relevant public to believe that Mingyu United’s headphone is related to Huawei’s or that they have specific connections, which would cause confusion to the relevant public.

In summary, Mingyu United’s behavior of setting “Huawei” as a search keyword, using the word “Huawei in Chiness” in the product name, and using the design logo on the displayed photo infringed Huawei’s exclusive right to use its registered trademark, and should immediately stop the infringement and compensate for losses according to civil liabilities.

2. A company infringed Universal’s trademark by using the “Universal Studios in Chinese” mark without authorization

Universal City Studios LLC (also known as Universal Pictures Co., Ltd.) submitted a request to stop trademark infringement to the Beijing Tongzhou District Market Supervision Bureau (Tongzhou Supervision Bureau), requesting that the party’s use of the words “Universal Studios in Chinese” in the name of the hotel without the authorization of Universal constitutes trademark infringement.

On April 14, 2021, the Tongzhou Supervision Bureau came to a hotel franchise store based on clues provided by the trademark owner. After investigation, the party involved use the words “a hotel in Beijing Tongzhou Universal Studios” on electronic display screens, business cards, check-in receipts, temperature-measuring robots, health treasure QR code cards, hotel operation systems, and WeChat public account mini-programs in the hotel lobby without the authorization of the “Universal Studios in Chinese” trademark owner. The same words were also used on online platforms such as Ctrip, Dianping, Fliggy, Qunar, and eLong. As of the on-site inspection on April 14, 2021, the total operating revenue is RMB5.15 million (USD719,600).

The Tongzhou Supervision Bureau found that the above-mentioned behavior constituted trademark infringement, and ordered the party to stop the infringement immediately. In view of the party’s active cooperation and truthful account of the illegal facts and the initiative to provide evidence materials, immediate rectification was made at the scene, and at the same time considering that Universal Studios has not yet opened, the party’s infringement has limited impact on Universal Studios, the party was given a lighter punishment and imposed of an administrative penalty of RMB100,000 (USD13,900).

3. The CNIPA issued the “Notice on Comprehensively Implementing Online Applications for Rejection Appeal Cases” and “Interim Work Measures to Further Increase Trademark Opposition, Review, and Three-Year Non-use Cancellation Online Applications Filings”

Starting from November 1, 2022, trademark agencies should, in principle, submit electronic applications through the online trademark service system, and no longer submit paper materials.

In order to quickly and significantly increase online trademark opposition, review, three-year non-use cancellation filings. The CNIPA formulated and published Q&As guidelines for opposition, invalidation review, and three-year non-use cancellation, which aims to effectively guide applicants and trademark agencies to better use the online application system, deepen understandings, and improve efficiency.

In the next step, the CNIPA will further speed up the process of fully move trademark applications and responses electronically.

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