Weekly China Trademark News Updates

September 28, 2021

1. The Beijing High Court: Trademark co-existence agreement does not automatically equal to grant of trademark protection

Volkswagen applied the “TAYRON” mark with application number 30191626 which was blocked by the prior registered trademark “TYRON” with registration number 1613996. Volkswagen submitted a trademark co-existence agreement issued by the owner of the prior trademark, however, the Beijing High Court found that the disputed mark “TAYRON” was almost identical to the prior trademark “TYRON,” thus, even if the co-existence agreement is legal, authentic, and effective, it would not be enough to eliminate the possibility to confuse or to mislead the relevant public regarding source of the goods. Therefore, the trademark co-existence agreement could not be the basis for the registration of the disputed mark “TAYRON” and the court rejected Volkswagen’s appeal.

2. “Coffee-mate in Chinese” vs “Kafei Banlv in Chinese” – a strict standard should be applied to the exclusive right of a trademark with weak distinctiveness

Nestlé sued the infringing use of the “Kafei Banlv in Chinese” mark by Kunming Hougu Coffee Sales Co., Ltd. (“Hougu”) based on its exclusive right to use the registered trademark “Coffee-mate in Chinese.” After the first instance, second instance, and retrial of the case, the Beijing High Court upheld the judgments of the first and second instance courts and rejected Nestlé’s application for retrial. The Beijing High Court found that Nestlé’s ” Coffee-mate in Chinese” trademark has weak distinctiveness. Based on this, the first instance court was not inappropriate to apply a strict standard to the protection scope of the exclusive right of the “Coffee-mate in Chinese” trademark. While Nestlé’s extensive use and publicity of the “Coffee-mate in Chinese” logo will increase the popularity of the “Coffee-mate in Chinese” trademark, but it will weaken the trademark’s function to identify the source of the goods and compromised its distinctiveness. Such increase in popularity and expansion of the various use of the trademark did not have a positive impact on the trademark’s distinctiveness. The “Coffee-mate in Chinese” logo itself is relatively weak. Meanwhile, there were certain differences in the text composition between the “Coffee-mate in Chinese” logo and the “Kafei Banlv in Chinese” logo. Hougu also used the “Kafei Banlv in Chinese” logo and marked it in bold. The relevant public can distinguish between the two marks, thus “Kafei Banlv in Chinese” did not infringe Nestlé’s exclusive right to the registered trademark ” Coffee-mate in Chinese.”

3. The Beijing IP Court: “Xiao Guan Cha in Chinese” obtained distinctiveness through use

Changzhou Kaigu Tea Food Co., Ltd. (“Kaigu”) filed a trademark invalidation of against “Xiao Guan Cha in Chinese” with registration number 20426843 in Class 30 owned by Beijing Xiao Guan Cha Co., Ltd. for lack of distinctiveness and other grounds. The Beijing Intellectual Property Court found that the use of the “Xiao Guan Cha in Chinese (translated to ‘small can tea’)” trademark on “tea; flowers or leaves used as a substitute for tea; tea beverages; ice tea” and other goods directly indicated the main raw materials and the packaging of the goods, which lacked the inherent distinctiveness that a trademark should have. The disputed trademark should not have been granted according to Article 11(I)(ii) of the Chinese Trademark Law. However, consider the distribution contracts and invoices submitted by the registrant, the honors received, the advertising contracts, media reports, market research reports, advertising audit reports and other materials, as well as the facts confirmed in multiple civil judgments, the Beijing Intellectual Property Court found that the evidence in the case can be used to find that the “Xiao Guan Cha in Chinese” trademark had a relatively high reputation among the relevant public, and had formed a corresponding relationship with the registrant. The “Xiao Guan China in Chinese” trademark had obtained distinctiveness through use and can be used to distinguish the source of goods. Therefore, according to Article 11(II) of the Chinese Trademark Law, the “Xiao Guan Cha in Chinese” trademark can be registered as a trademark.

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