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Protection of Chinese Equivalents of Foreign Trademarks

by Yan Zhang & Austin Chang

When an oversea brand enters China market, selecting a Chinese equivalent of the oversea brand is crucial because native Chinese pronounce and remember the Chinese language much easier than any foreign language. This is precisely why nearly all famous international brands have and use its Chinese equivalent names in China. For example, the well-known tech company APPLE has its Chinese name of “PING GUO in Chinese (苹果)” and MICROSOFT uses “WEI RUAN in Chinese (微软).” Both APPLE and MICROSOFT used literal translation as their Chinese equivalent. Literal translation is one of the three ways in selecting a Chinese equivalent. The famous hotel brand HILTON uses “XI ER DUN in Chinese (希尔顿)” and the fashion brand ARMANI uses “A MA NI in Chinese (阿玛尼).” Hilton and Aermani used transliteration, which is another popular way of creating a Chinese equivalent that could be highly distinctive and have a similar pronunciation to its foreign counterpart. Literal translation or transliteration, it is critical that the Chinese equivalent has no negative meanings.

A combination of literal translation and transliteration is also used in creating Chinese equivalents. For example, STARBUCKS uses “XING BA KE in Chinese (星巴克).” The first character “XING in Chinese (星)” is the literal translation of “STAR,” and the last two characters “BA KE in Chinese (巴克)” are the transliteration of “BUCK.” Another great example is “LOCK & LOCK,” a Korean household brand. Its Chinese name sounds like “Le kou Le kou” and means “happily locked or buttoned.”

As Chinese equivalents could involve various Chinese translations or non-exclusive transliterations, in China trademark prosecution, a foreign language trademark will not automatically be deemed similar to its Chinese equivalent. So registering the foreign language trademark alone may not be sufficient to establish priority over all Chinese translations, nor prevent others from registering various transliterations.

More importantly, China adopts the first-to-file trademark system. If a Chinese equivalent of a foreign language trademark is not promptly selected, it is likely that distributors, consumers, or media may “self-select” a Chinese name for that foreign language trademark and even have it registered to block that oversea brand owners from using its Chinese marks in China. So it is vital for an oversea brand owner to create and timely protect its Chinese equivalent.

1. Factors considered in prosecution and litigation

Determining whether or not a foreign language trademark is similar to a prior Chinese language trademark, the general understanding of Chinese relevant public shall be considered, and the following factors should be taken into account according to the Beijing High Court Guidelines for the Trial of Trademark Right Granting and Verification Cases: (i) the ability of Chinese consumers to recognize the foreign language trademark; (ii) the relevance or correspondence in meaning and pronunciation between the foreign language trademark and the Chinese language trademark; (iii) the distinctiveness, popularity and ways of use of the cited trademark; and (iv) the actual use of the trademark in dispute. These factors should be comprehensively considered in different proceedings and evaluated on a case-by-case basis.

For the factor “the ability of Chinese consumers to recognize the foreign language trademark,” two elements should be considered, the type of foreign language and the frequency of use of foreign words.

If Chinese consumers cannot recognize a foreign word, it would be unnecessary to discuss similarity between the foreign language trademark and Chinese language trademark. Like in the “Little Black Dress” case, the Court held that the refused mark “Little Black Dress in Chinese” and the cited mark “LA PETITE ROBE NOIRE” do not constitute similar marks, because most Chinese consumers cannot read French, nor do they know the Chinese meaning of the cited French trademark. They would only recognize the cited French trademark as a combination of Latin alphabets and not associate it with a Chinese language trademark.

For the factor “relevance or correspondence between the foreign language trademark and the Chinese language trademark,” as one foreign word can be translated or transliterated into different Chinese characters, and vice versa, when identifying similarity between a foreign language trademark and a Chinese language trademark, correspondence can be considered from either of the two perspectives – translation from Chinese into English and vice versa.

Taking the “FOREVERMARK” case for example, “FOREVERMARK” can be translated into “永恒印记, ” while “永恒印记” can also be translated into “FOREVER MARK.” As “FOREVER” and “MARK” are both frequently used English words, Chinese consumers can readily understand the Chinese meaning of the trademark and will likely associate the trademark with its corresponding Chinese translation.

Based on current practices in China, the substantial examination of a foreign language trademark at the Trademark Office is straightforward. The examiners mainly focus on the literal meaning of the trademark, and refer to the online dictionaries, such as Kingsoft dictionary for direct translation. Hence, the transliterations of a trademark or phonetically similar trademarks will not be cited by the examiners to block the new application of foreign language trademark.

While in refusal appeal procedure, the examiners apply a broader scope in examining the similarity between a foreign language trademark and a Chinese language trademark, not merely relying on the dictionary meanings. Their broader scope of examination focuses on the two aspects: the general understandings of Chinese consumers and the correspondence in meanings between the foreign language trademark and the Chinese language trademark. The use and reputation of refused marks would also be deemed as a supporting factor but cannot carry much weight.

In reviewing opposition and invalidation cases, however, the Trademark Office and courts apply a more comprehensive analysis using “likelihood of confusion” as the judging standard. In addition to comparison of trademarks per se, other influential factors may be considered when assessing “likelihood of confusion,” such as the cited trademark’s distinctiveness, the use and reputation of the cited trademarks, the relatedness of goods and services, and the applicant’s bad faith.

Chinese courts also apply the “likelihood of confusion” analysis in trademark infringement cases involving Chinese equivalents, requiring only a “stable,” as opposed to “sole” corresponding relationship be established between a foreign language trademark and its Chinese equivalent. However, to achieve the “stable” status, brand owner must provide substantial evidence to prove that its foreign language trademark and its Chinese equivalent have been widely used over a long period of time, and the corresponding relationship has been established and known to the relevant public.

2. Typical cases regarding Chinese equivalents of foreign trademarks

The most common mistake in business practice is that the brand owner does not have an “official” Chinese equivalent for its foreign language trademark, nor does it attempt to use and promote the trademark in Chinese. When a brand owner does not have a Chinese equivalent for its foreign language trademark, its Chinese distributors, public, or media will often self-create and use a Chinese version to refer to the brand owner and its products. This is considered as “passive use” in contrast to the “active use” by the brand owner. In practice, when an issue of determining whether a use is an active one or a passive one is presented to Chinese courts (usually in cancellation actions), the courts will examine whether the asserted “passive use” in the case at hand is used against the brand owner’s will, and whether a corresponding relationship between the foreign language trademark and its Chinese equivalent has been established. Please see below an example case.

In the FREDDIE MAC case, the China Supreme Court held that “FANG DI MEI in Chinese,” as one of the Chinese translations of “FREDDIE MAC,” has been widely used by media reports to refer to Freddie Mac, and “FANG DI MEI in Chinese” has established a corresponding relationship with “FREDDIE MAC” in the field of financial services, although there exists several other translations, like FANG DAI MEI (房贷美) and FU LEI DE MA KE (弗雷迪马克). The FREDDIE MAC case highlights that the existence of several Chinese translations does not affect the establishment of corresponding relationship between the major Chinese translation and the foreign language trademark.

An equally important issue is that the corresponding relationship shall be identified in connection with the specific goods or services used. Taking the FACEBOOK case for example, the Beijing High Court held that, based on the third party evidence including Chinese media reports, and general understanding of Chinese relevant public, the “LIAN PU in Chinese” mark was the corresponding translation of the FACEBOOK mark when used on networking services. Although “LIAN PU in Chinese” has its fixed meaning in Chinese, which means facial makeup in operas, when used in connection with networking services, it refers to Facebook, rather than other entities.

The FREDDIE MAC case and the FACEBOOK case are typical passive use cases where the courts protected the Chinese equivalent of the foreign language trademark. For the passive use, the worse scenario happens when the Chinese distributor created the Chinese name for the oversee brand and registered the Chinese trademark under its own name. Upon the termination of business cooperation, the Chinese distributor may start supplying identical products using the Chinese trademark, which may inevitably mislead consumers about the source of products.

As in the EVOLON case, a Nanjing Company, which was a distributor of Freudenberg, registered the Chinese mark “YI WO LONG in Chinese (依沃珑)” and used it in the sales of Freudenberg’s nonwovens products with the English mark “EVOLON.” The Nanjing Company insisted that the Chinese mark was created by themselves, and it was their efforts that contributed to the reputation of the Chinese mark. The China Supreme Court affirmed the corresponding relationship between the Chinese mark “YI WO LONG in Chinese” and the cited English mark “EVOLON,” and further held that the Nanjing Company used the Chinese mark alone or together with the English mark to promote Freudenberg’s products, which inevitably associated the Chinese mark with Freudenberg and its products.

Despite more and more positive outcomes from Chinese courts, there are cases where Chinese equivalents of foreign language trademarks were not protected because brand owners expressly denied the corresponding Chinese equivalents. The VIAGRA case and SONY ERICSSON case are typical examples. In the VIAGRA case, Pfizer adopted a Chinese name “WAN AI KE in Chinese” for its blue pills, Chinese public and media, however, had already created a Chinese name “WEI GE in Chinese” for VIAGRA. Pfizer opposed a third party’s filing for the “WEI GE in Chinese” mark but failed. The court found that, Pfizer had never promoted their products under the name “WEI GE in Chinese,” and on the contrary, claimed that the Chinese equivalent of VIAGRA was “WAN AI KE in Chinese.”  In the SONY ERICSSON case, Sony Ericsson used “SUO NI AI LI XIN in Chinese” as the official translation of its mobile phone brand, but Chinese public and media called it “SUO AI in Chinese” for short. The court held that, Sony Ericsson had no evidence proving their use of “SUO AI in Chinese” and even denied that “SUO AI in Chinese” was the abbreviation for “SUO NI AI LI XIN in Chinese.”

One final important point, the evidence proving the corresponding relationship shall be prior to the application date of the disputed mark or prior to the first use date of the accused mark.

In the New Balance case, New Balance registered its English trademark “New Balance,” but neglected to register the Chinese version. A Chinese individual, Mr. Zhou, registered the trademarks “BAI LUN in Chinese” and “XIN BAI LUN in Chinese” for footwear and later brought an infringement action against New Balance’s use of “XIN BAI LUN in Chinese” mark. The first instance court affirmed trademark infringement and ordered New Balance to pay damages for around USD 15 million. This astonishing high damage was significantly reduced to around USD 770,000 by the second instance court, that said, the finding of trademark infringement is an important lesson to oversea brand owners doing business in China to have a Chinese equivalent trademark.

On the other hand, New Balance attempted to invalidate Mr. Zhou’s registered trademark “XIN BAI LUN in Chinese,” claiming “XIN BAI LUN in Chinese” is a Chinese equivalent of “NEW BALANCE,” but the Beijing High Court recently made the final decision denying New Balance’s appeal, because New Balance used “XIN BAI LUN in Chinese” as the Chinese equivalent of NEW BALANCE later than the application date of Mr. Zhou’s “BAI LUN in Chinese” trademark. And no sufficient evidence was provided to prove the corresponding relationship between “XIN BAI LUN in Chinese” and “NEW BALANCE” prior to the application date of the disputed mark.

Similarly, a famous Australian wine brand Penfolds got involved in a trademark dispute with a Chinese squatter Mr. Li, who registered the mark “BEN FU in Chinese,” which is the Chinese equivalent of PENFOLDS. This registration blocked the Australian brand owner using the “BEN FU in Chinese” mark in China, despite doing business in China for over twenty-five years. In the PENFOLDS case, the Beijing High Court held that the submitted evidence was sufficient to prove the corresponding relationship established between the disputed mark “BEN FU in Chinese” and the cited English mark “Penfolds” prior to the application date of the disputed mark.

Fortunately for Penfolds, before successfully securing the registration of its own Chinese mark “BEN FU in Chinese,” it landed a victory in an infringement action against a Chinese brewing company and its distributor. The local court affirmed the well-known status of “BEN FU in Chinese” as an unregistered mark, based on its corresponding relationship with the English mark “Penfolds,” and held the defendants’ use of the accused “BEN FU in Chinese” mark constitutes trademark infringement. In this case, “BEN FU in Chinese” was protected as unregistered well-known mark based on the evidence prior to the first use date of the accused mark.

The key issue in the New Balance case and the Penfolds case is the cut-off time for collecting evidence. On top of that, sufficiency of evidence is crucial in swinging the outcome of a case.

3. Takeaways

1) It is highly recommended that oversea brand owners create their own Chinese equivalents before entering the China market. If not, Chinese consumers or media will create Chinese versions in different ways and squatters may even register them.

2) Oversea brand owners should not only register the foreign language trademark, but also file for the Chinese equivalent as soon as possible. Those Chinese equivalents created by the media and public shall be considered and registered as trademark as well, at least for defense purposes.

3) In addition to clearance search, regularly monitoring similar Chinese translations in key classes will help in discovering questionable marks, which allows brand owners to address squatting or counterfeiting problems in a timely manner.

4) Better evidence management is crucial because sufficiency of evidence, especially evidence related to the use and fame of the foreign language trademark as well as the corresponding relationship between the foreign language trademark and its Chinese equivalent, is always a core factor affecting chances of success.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Tackling Bad Faith Trademark Applications or Registrations in China – Part IV

by Yan Zhang, Miao Tian & Austin Chang

In the last part of this series, we will share cases and our suggestions on two issues, one is the impact on bad faith assessment in the event of later trademark assignment, the other is the necessity to assess bad faith if the right holder’s interests have already been protected by applying other clauses of the Trademark Law.

1. Will a trademark assignment change the bad faith nature of a squatted mark?

An individual “A” applied for “” in early 2011 on computers, computer programs, handheld phones, etc. in class 9, secured trademark registration in January 2012, and assigned the mark to another individual “B” in February 2014.

Instagram filed an invalidation action against the trademark in April 2014 but the mark was sustained.  Disagreed with the decision, Instagram appealed to the Beijing IP Court in June 2016 and obtained a favorable judgment, which was later upheld by the Beijing High Court in March 2017 against the CNIPA’s second instance appeal.

In this case, we argued that the application date of the disputed trademark should be used as the time point for judging the bad faith because it is the subjective attitude of the original applicant that matters.  The subsequent transfer of the disputed trademark and whether the assignee is in good faith cannot clean the slate even if a valid contract has been signed and reasonable consideration paid.  To prove A’s bad faith, we submitted the trademark application list of A to show he filed for nearly 30 famous trademarks such as “Google,” “Twitter,” “SQUREUP,” “PINTEREST,” “FOURSQUARE,” “FREEMONEE,” “BLEKKO,” “QUORA”; the declarations condemning A for his bad faith squatter issued by Google, Twitter and other leading Internet companies; and overseas judgments against A for his squatting, etc.

With detailed arguments and convincing evidence, we managed to persuade the courts to find that:

The legislative intent of Article 44. 1 of the Trademark Law is to maintain a good trademark registration and administration order by means of holding the principle of public order and good customs.  When examining and determining whether the disputed trademark is registered by other improper means, it is necessary to consider whether it is a means, other than deception, that disrupts the order of trademark registration, harms public interests, occupies public resources improperly, or seeks improper benefits in other ways.

In this case, in addition to applying for the disputed trademark, the relevant right holders of the disputed trademark also applied for trademarks that are identical or similar to others’ famous brands in multiple classes.  These said trademarks show obvious intention to copy and imitate others’ trademarks with certain fame, disrupt the normal order of trademark registration administration, impair the market order of fair competition, and violate the principle of public order and good customs.  In accordance with the legislative intent of the Trademark Law to prohibit using deceptive or other improper means to obtain trademark registration, the relevant right holders’ registering the disputed trademark in bad faith should be prohibited. Therefore, the disputed trademark shall be revoked.

In this case, we also strengthened our arguments by proving that the current owner B acquired the disputed mark from A with full awareness of A’s bad faith.

Note, in practice, even if the assignee who may be the proprietor that had been squatted acquired the bad faith mark with good faith, the malice or illegality behind the act of applying for a squatted mark will not be eliminated by the assignee’s “bona fide” good faith.

In the last several years, with the SPC’s judgments, regulations or guidance, it now appears to be an acknowledged conclusion that ownership change will not affect the application of Article 4 and Article 44.1 of the Trademark Law.

For example, Article 7.4 of Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases stipulates that, if a disputed trademark violates the relevant provisions of the Trademark Law, and the only ground that the owner claimed for the trademark to remain valid is that the owner has no fault when the trademark is transferred, then such claim shall not be supported. The Action Plan for Combatting Bad Faith Trademark Registration has similar provisions as well.

Also, in the newly published Draft for Comments of the Trademark Review and Adjudication Standard, Chapter 2 Examination on the bad faith application lacking the true intention of use contains a rule stating that “trademark assignment shall not affect the determination of whether the trademark applicant has violated this article 4.”

In light of the above, on one hand the bad faith squatter cannot escape from being invalidated by means of assigning the mark to a less-malicious affiliate. On the other hand, however, if this rule is applied strictly, any trademarks assigned to their rightful owners could be vulnerable to invalidation due to their original applicant’s lack of intent to use at the time of filing.

Given the uncertainty, before purchasing any squatted marks, or where any such marks have already been purchased, brand owners should consider the following steps:

1) Conduct due diligence against the assignor – if assignor has filed for a huge number of trademarks, and the mark being assigned has never been used, the risks that the CNIPA would reject such an assignment are relatively high.

2) File back-up trademark applications – given the risk of rejection for the assignment, brand owners should file new applications of the squatted mark as a back-up plan, rather than relying entirely on the assignment.

3) Clarify consequences of rejection in assignment agreements – it should be clarified in the assignment agreement between the squatter and the proprietor that if the CNIPA rejects the assignment application, the squatter will agree to voluntarily revoke or cancel the mark instead of assignment.

4) Seek possible cooperation from squatter – the squatter should guarantee that it will cooperate with any office actions initiated by the CNIPA, including providing the evidence of use (if any) and responding to office actions.

2. Is it necessary to assess bad faith when another substantive article of the Trademark Law has already been supported?

A Chongqing company “K” applied in 2009 and registered in 2015 a US company’s core mark (Disputed Mark) for cosmetics, soaps, etc. in class 3. The US company “P” filed an invalidation in 2016 and received a favorable decision from the CNIPA. The company K disagreed with the decision and appealed to the Beijing IP Court, which dismissed the company K’s claims by affirming Article 32 and Article 44.1. The court found that:

Regarding whether the Disputed Mark constituted a pre-emptive registration by improper means of other’s mark already in use with high fame, the evidence submitted by the company P can prove that before the application date of the Disputed Mark, the licensee of the company P had sold cleansing milk, lotion, and other products branded the Disputed Mark in mainland China and the trademark had obtained certain fame on cosmetics through use. Considering that the Disputed Mark bears certain degree of distinctiveness when used on cosmetics, and that it is hardly a coincidence for the Disputed Mark and the Disputed Mark to be highly similar in mark composition and meaning, the company K is subjectively malicious in applying for the Disputed Mark. The goods designated under the Disputed Mark are the same or similar to cosmetics on which the company P had first used its mark and obtained high fame, so the registration of the Disputed Mark has violated Article 32 of the Trademark Law.

Regarding whether the Disputed Mark constituted a violation of Article 44.1, in addition to the Disputed Mark which is basically the same as the company P’s mark in use with certain influence, The company K has successively applied for more than 60 trademarks, including some copies that are the same or similar to famous brands like “Geely,” “Chrysler,” “U Key,” etc. The company K failed to give a reasonable explanation for its applications and failed to submit evidence to prove its true intention to use these marks. It can be concluded that The company K not only has obvious subjective malice of copying others famous trademarks, but also has an objective of seeking illegitimate profits by hoarding trademarks. Such behaviors will cause confusion and misunderstanding among the relevant public, disrupt the normal order of trademark administration and market competition, and impair the public interests of the society. Therefore, the registration of the Disputed Mark violated the Article 44.1 of the Trademark Law.

In this exemplary case, on top of the Article 32, the CNIPA and the court further applied Article 44.1 to invalidate the bad faith squatted mark. However, we have also received and studied many decisions and judgments where the examiners refused to further review and comment on Article 44.1 when they find either of Article 30 (similar marks on similar goods/services), Article 32 (prior rights), Article 15 (pre-emptive filings by agent or representative), etc. applies in a case.

Not only in the decisions, but also from the rules and regulations we can see this issue still appear to be disputable. For example, Article 17.5 of Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases sets some restrictions on application of the bad faith clause on “other improper means,” stipulating that when deciding an opposition appeal or an invalidation case, if the request of the petitioner can be supported by applying other clauses of the Trademark Law according to the documented evidence, Article 44.1 of the Trademark Law shall not apply.

In the Draft for Comments of the Trademark Review and Adjudication Standard, Chapter 16 Examination on the trademark registrations obtained by deceptive or other unfair means also contains a restriction, stating that “where other clauses of the Trademark Law could be applied to refuse or invalidate a disputed trademark based on the documented evidence, Article 44.1 of the Trademark Law shall not apply, with the exception that the bad faith is obvious.” From this newly published Draft, we can see that the government’s interests in fighting against bad faith in China is becoming increasingly strong. We look forward to a further improved trademark administration and mark competition environment.

In light of the regulations and practice that we shared, bad faith could not only make a case on its own, but also “outshine” the likelihood that the CNIPA and the courts would apply the non-bad faith related articles in the Trademark Law against squatted marks, such as the cases we have shared in earlier parts of this series. In summary, we suggest brand owners to consider spending the necessary resources to dig down into a squatter’s bad faith and to endeavor for a favorable outcome.

This is the end of this series. Follow us and stay tuned!

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Tackling Bad Faith Trademark Applications or Registrations in China – Part III

by Yan Zhang, Miao Tian & Austin Chang

Previously, we shared our insights on the application of bad faith clause with exemplary cases. This time, we are going to share cases to show how we identify the bad faith and how we present the evidence to convince the CNIPA and the courts to achieve favorable outcomes!

1. Devil lies in the details – everything submitted when filing trademark applications counts

A Chinese individual filed an application for “” with App. No. 10558333 on March 2, 2012, designating on “doors of metal; metal door device; door casings of metal; insect screens of metal; metal furniture parts; ironmongery; locks of metal, other than electric; safes; props of metal” in class 6. This registrant only owned this particular disputed mark.

Facebook filed both an opposition and an invalidation against this mark successively, but neither proceedings could remove the disputed mark from the registry successfully. In these proceedings, the examiners found that, for relative grounds, hardware was distant from networking, and for absolute grounds, no harm was placed against public interest or order.

Unsuccessful before the CNIPA, Facebook appealed to the Beijing Intellectual Property Court. We focused our claim on the absolute grounds, that was, to further demonstrate the registrant’s bad faith. In addition to the evidence already collected and submitted in the invalidation, we managed to find a valuable piece of evidence which was only available at court proceeding – the application materials of the disputed mark on file at the Trademark Office. As it turned out, all efforts have been paid off. In its judgment, the court reasoned that, as required by the law, trademark applications should be filed in the name of a responsible person running an individual business or a lease holding rural household, or someone with the permission to engage in business operation. Here, the registrant submitted a copy of a business license which showed him as the operator of a solely owned business engaging in wholesale of doors and construction materials. However, according to the information revealed in the National Enterprise Credit Information Publicity System, this solely owned business was run by another individual that provides housekeeping services. During the court hearing, the examiner from the CNIPA also admitted that when examining trademark applications, they only conduct formality check over the materials but will not verify the authenticity of the content therein. Given the discrepancies, the copy of the business license submitted when filing the application for the disputed mark was obviously forged.

The court further reasoned that the mark “FACEBOOK” bore high distinctiveness as it is neither Chinese characters nor an existed English word, and the mark owner Facebook was the operator of the famous social networking site “FACEBOOK.” Considering the facts that the registrant provided forged materials when applying for trademark registration, the disputed mark was identical with “FACEBOOK”, and the registrant refused to appear in court to state reasons or make explanations despite the court’s subpoenas, the court found the forged business license hardly a coincidence. The court concluded that the registrant used deceptive or other unfair means in obtaining the disputed mark’s registration. Such trademark application was filed with obvious intention of infringing on other’s prior rights and disturbing trademark registration order. If left uncurbed, such behavior will inevitably hinder the normal operation of honest operators and impair the market order of fair competition. Therefore, the disputed mark should be invalidated.

Although procedurally, the registrant has the right to file a second instance appeal against the judgment, he did not appeal, and the judgment became effective. The CNIPA later re-made an invalidation decision based on the Beijing Intellectual Property Court’s judgment to invalidate the disputed mark for violating Article 44.1 of the Chinese Trademark Law 2013.

2. Massive filings without justified reasons can never be tolerated

A Chinese investment management company filed an application for “” with App. No. 18919877 on January 18, 2016, designating on “radio broadcasting; message sending; mobile phone communication; computer terminal communication; computer aided transmission of messages and images; providing user access to global computer network; voice mail services; transmission of digital files; videoconferencing services; video-on-demand transmission” in class 38.

Facebook filed an opposition against this mark, arguing for similarity with its mark “FACEBOOK” in class 38 and for the applicant’s bad faith. The CNIPA, however, granted the differences between the marks and the lack of malicious evidence.

Facebook did not stop at this unfavorable outcome but, taking our advice, further brought the mark to the invalidation stage. Based on the evidence gathered during the opposition, our strategy was to focus on the registrant’s bad faith in achieving a favorable invalidation outcome. We further conducted deeper investigations of the registrant aiming to collect and present as much evidence to demonstrate its bad faith as possible.

Like the opposition proceeding, the registrant did not respond in the invalidation. Upon reviewing our arguments and evidence, the CNIPA found that:

Since 2015, the registrant has applied for more than 280 trademarks such as “UBER in Chinese,” “UBERBEATS,” “APPLEMOBILE,” “APPLELIFE,” “BMWAPPLE,” etc., for computers, automobiles, coffee, currency exchange, online banking, real estate management, electronic information transmission, education and other goods and services in Classes 9, 12, 30, 35, 36, 38, 41, etc. Some trademarks have been refused from registration or been invalidated for constituting similar to others’ prior marks.

The registrant did not respond to the invalidation arguments, did not submit evidence of the use of the disputed trademark, and did not give a reasonable explanation of its intention for its massive trademark applications or of its source for the trademark designs.

As an investment management company solely owned by a natural person, the registrant’s behavior of filing massive applications could hardly be considered legitimate as it showed obvious subjective intention of duplicating or imitating others’ prior marks, which has exceeded the normal needs for business operation, and lacks genuine intention to use.

Considering the above facts comprehensively and in the absence of evidence to the contrary, the CNIPA concluded that the registrant’s massive applications has disrupted the normal order of trademark administration and was detrimental to a fair and competitive market order. The disputed mark’s registration was invalidated based on Article 44.1.

3. Comments

Both exemplary cases are related to Facebook, and admittedly, the distinctiveness of the mark FACEBOOK and the fame of Facebook have their contributions to the final favorable outcome.  However, Facebook’s persistence in pursuing the cases to next levels and our persistence in exhaust all possible evidence to show the other party’s bad faith are also of vital importance.

Regarding the first case against the individual who filed “facebook,” it was not particularly surprising, though disappointing, that both opposition and invalidation decisions were not favorable. After all, the adversary had only one mark in total and the class 6 goods carried weak relatedness with Facebook’s core business. So, at the court proceeding, our arguments focused on presenting evidence laid on the registrant’s qualification for filing trademark applications.

In China, any natural person who applies for trademarks should be a responsible person running an individual business or a lease holding rural household, or someone with the permission to engage in business operation. So, when filing new applications in the name of an individual, a copy of the applicant’s ID card and a copy of business license of their solely owned business or of the lease holding contract should be submitted.

According to our experience in dealing with trademark applications filed by individuals, often that some malicious applicants would submit forged credentials to obtain trademark registration by fraud. In the first case, after the court appeal case was officially docketed, we were well-grounded to request formally an official copy of the disputed mark’s application materials on file with the Trademark Office. Upon receiving the document, it was obvious that the individual filed the trademark application with forged document and the disputed mark was subsequently invalidated based on Article 44.1.

Devil lies in the details. When dealing with bad faith filings, every detail in the life of a trademark application counts and should be closely examined – the second case proves this strategy.

In the invalidation decision against “FBMENTIONS,” the CNIPA referred to the number of the registrant’s filings and some of its marks similar to famous brands, which constituted the basis for finding the bad faith of the investment management company. But when presenting the case to the CNIPA, other than above arguments, we discovered and sorted out the following facts so as to make a convincing argument of bad faith.

Background of the registrant: the duration of its existence, the actual payment of its registered capital, its business scope and the specific situation of the industry, the operation status and whether there are abnormal situations like administrative orders and fines, suspension of business, etc.

In this case, the registrant is an investment management company while the disputed mark is in class 38 for telecommunication services. The two industries both bear strong industry attributes and have strict qualification requirements, but they are not naturally related, which may indicate the low likelihood of genuine intention to use the mark because companies would not often apply for trademarks for goods or services that are too unrelated to its core business, unless they are expanding to other industries.

Circumstances of the registrant’s marks: the accumulative number of trademark applications, the designated classes of goods and services, the time span of the registrant’s submission of trademark applications, the applications similar to others’ marks with distinctiveness and fame, the repeated trademark applications, the marks on sale at public transaction platforms, etc.

In this case, the registrant applied more than 200 trademarks designated on goods and services with high access threshold, like automobiles in class 12, financial services in class 36, telecommunication services in class 38, education services in class 41, medical services in class 44. More importantly, many of the registrant’s marks are imitating the marks owned by worldwide giants such as Facebook, Apple, BMW, Canon, Uber, etc. These applications are inferences that the registrant has bad faith.

Related entities of the registrant: companies shared the same legal representative or senior executives, entities involved in trademark assignment with the registrant, entities associated with the registrant as revealed and proved in other cases, etc.

In some cases, the number of the adversary’s filings is not large; but when we expand the firing range and take a deeper look at its affiliates, we would find that the related entities in combination are large enough to turn the case around.

In this case, we found an affiliate with unusual connection. As shown by the trademark filing records, the registrant filed serial marks starting with “FB,” like “FBATWORK,” “FBSHOPPIN,” “FBWALLET,” etc.; and searching in the trademark database, we noticed that there was an individual who also filed similar series marks starting with “FB.” We conducted further searches using both names and found a special relationship between these two entities – the individual is recorded as the inventor of the registrant’s patent. And that individual happened to be a squatter whose bad faith has been repeatedly affirmed by the CNIPA and the court. Although the number of and the copies among the marks filed on the registrant’s own seem sufficient for our bad faith argument, the more evidence of bad faith, the higher success rate.

Other related actions: selling marks to actual proprietor or at public platform to third parties, registering domain names or e-stores and bundling with trademarks for transfer, coercing others for commercial cooperation, and demanding high transfer fees, license fees, tort compensation, litigation settlement fees, etc.

In order to find evidence from the above-mentioned aspects, we would recommend taking an in-depth investigation of the adversary from the following databases:

• Commercial and business registration
• Trademark
• Patent
• Copyright
• Domain names
• Court judgments and CNIPA decisions

Hope the above could shed some lights on how the tackle the bad faith squatters.

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Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Tackling Bad Faith Trademark Applications or Registrations in China – Part II

by Yan Zhang, Miao Tian & Austin Chang

Previously, we shared the relevant stipulations regarding bad faith trademarks applications or registrations in the China Trademark Law 2019 (“Trademark Law 2019”), our insights on the required factors when applying bad faith stipulations, and the current trend and practices. In the next few articles, we will be sharing cases with analysis on how the CNIPA and the courts apply the laws to tackle bad faith trademark applications or registrations.

1. Opposition against “CISCO” filed by an individual

A Chinese individual filed an application for “” on August 27, 2018, designating on “Razors, electric or non-electric; Crimping irons; Beard clippers; Hair clippers for personal use, electric and non-electric; Depilation appliances, electric and non-electric; Pedicure sets” in class 8. That same Chinese individual filed seven applications in total, including one in class 7 and six in class 8.

Cisco filed an opposition against the opposed mark before the CNIPA. The CNIPA found that Cisco’s marks bore relatively high originality and the evidence can prove that, through Cisco’s consistent use and promotion, its marks have obtained relatively high fame among consumers. The opposed mark was identical with Cisco’s marks in terms of letter composition, so the CNIPA deemed that the applicant’s filing for the opposed mark showed bad faith of copying and imitating Cisco’s marks, which violated the good faith principle. According to Article 7 and Article 30 of the Trademark Law 2019, the CNIPA refused the opposed mark for registration.

Although procedurally the applicant has the right to file an appeal against the refusal decision, he did not appeal the decision and the opposed mark has been recorded as void.

2. Opposition and subsequent Appeal against “LAMAZE (stylized)”

A Chinese company filed an application for “” on March 20, 2017, designating on “Table cutlery [knives, forks and spoons]; Cutlery; Spoons; Spoons, table forks and table knives for babies; Hand operated hand tools; Knives [hand tools]; Sabres; Graving tools [hand tools]; Nail clippers; Flat irons” in class 8. The applicant has 14 applications in total, designating on goods of baby suits, babies’ pacifiers, toys, cutlery, household linen, etc. in different classes.

Lamaze filed an opposition against the opposed mark. The CNIPA found that, the evidence submitted by Lamaze can prove that, prior to the application of the opposed mark, Lamaze had registered and used the marks of LAMAZE and “LAMAZE in Chinese” and had obtained certain fame. Further, LAMAZE and “LAMAZE in Chinese” were fanciful words that bore certain originality. The opposed mark was identical with Lamaze’s marks in terms of letter composition, which was hardly a coincidence and the applicant failed to make reasonable explanations of its creation source. Thus, the applicant’s filing for the opposed mark showed bad faith of copying other’s famous prior marks and free-riding of the goodwill thereof, which not only was likely to cause consumer confusion, but also impaired the normal order of trademark registration and fair competition, and violated the good faith principle. Given the above, the CNIPA refused the registration of the opposed mark based on Article 7 and Article 30.

The applicant was not satisfied and filed a registration refusal appeal against the decision. In the appeal, the CNIPA affirmed the above filings and further ruled as follows:

The applicant filed altogether 14 applications, aside from the opposed mark, the other marks of “Vulli Sophie,” “B toys,” and “OXO tot” are all identical with others’ brands with strong distinctiveness and high reputation. As the applicant neither made reasonable explanations nor provided evidence of its actual use of the marks, the applicant’s behavior showed obvious bad faith of copying others’ marks, violated the good faith principle, impaired the normal order of trademark registration administration, and was detrimental to the market order and fair competition. The CNIPA concluded that the opposed mark constituted the circumstance of “obtaining registration by other unfair means” as stipulated in Article 44.1, and refused the opposed mark from registration accordingly.

The applicant did not further appeal the decision to the court, the opposed mark, as well as other series marks filed by the applicant have been recorded as void.

3. Comments

In China, the division of class and subclass set in the Similar Goods and Services Classification Guide plays an important role in determining if the goods or services are similar. When the right owner’s mark obtains certain fame but has not yet reached the degree of well-known, it is difficult to obtain cross-class or cross-subclass protection based on the provisions for similar marks used on similar goods and services in the Trademark Law 2019, even if the marks are identical or substantially similar. To combat such copycats, bad faith clause could be considered as a good alternative.

As we advised in Part I, several circumstances can be deemed sufficient to show bad faith:

• hoarding massive trademarks in various un-related classes;
• applying for many trademarks identical with or similar to multiple business signs with certain popularity or high distinctiveness;
• applying for a large number of trademarks within a short period of time and obviously beyond reasonable need; and
• having been found of being a squatter in earlier trademark cases.

A mark’s life depends on its use. In order to apply the bad faith stipulations, the easiest way is to prove that the other party does not have the intent to use the target mark and is hoarding trademarks for future profits through sales. For example, a large number of marks filed that designated a broad range of goods and services obviously exceed the reasonable need for regular business. These marks filed without genuine intention to use would soon be slapped with a price tag.

Accordingly, it would not be difficult to convince the CNIPA to find that an opposed mark’s applicant has bad faith, if, for example, it applied for hundreds or thousands of trademarks, or if its applications are all copies of numerous famous brands and designated in all 45 classes, or the marks are up for sale via public platforms or private channels.

In the above two cases, however, the applicants filed rather limited number of marks (seven) and designated goods for their core business, so the “hoarding” argument won’t be persuasive as these marks appear, on its face, to have “genuine intention to use.” Not to mention that in reviewing and adjudicating administrative trademark cases, the CNIPA is rather prudent and strict in applying bad faith articles, especially at the opposition stage. Having said that, East IP was up to the challenge.

Facing an uphill fight, East IP threw the following bullets and prevailed:

1. Demonstrate with solid evidence the cited mark’s strong distinctiveness and high fame;
2. Illustrate the copied brands with great details;
3. Find and demonstrate “unique traits” of the opposed mark’s applicant.

Demonstrating the cited mark’s distinctiveness would minimize the likelihood of coincidence in creating an identical mark. At the same time, the cited mark’s high fame implies the possibility that the opposed mark’s applicant has access to the opponent’s marks and the potential benefits from securing such a copied or imitated mark.

Regarding collecting the materials to prove high fame, our well-known mark series could shed some lights.

As for demonstrating applicant’s copying of the marks, the devil lies in the details and clarifications on presenting to the CNIPA and courts with facts and evidence showing the applicant’s imitational behavior, the clearer the more likely that they will reward you with a favorable decision.

In the CISCO case, among the seven marks filed by the applicant, six are imitations of Cisco, Philips, or Siemens, whose distinctiveness and fame are well acknowledged. In the LAMAZE case, all the 14 marks filed by the applicant are copies of brands in the baby products industry, for which we prepared a straightforward chart and supportive evidence.

Last but not the least, “unique traits” of the opposed mark’s applicant could turn out to be the more crucial factor that successfully offset the lack of “hoarding” in these two cases.

In the CISCO case, the applicant is an individual as opposed to a corporation. In China, any natural person who applies for trademarks should be a responsible person running an individual business or a leased rural household, or someone with the permission to engage in business operation. Compared with legal persons, natural person is required to file trademarks with designated goods or services limited to the business scope set in their business certificates or to their own agricultural products.  Hence, it can be legitimately presumed that an individual, different from corporations who may have multiple brands and carry out various business operations, should have less needs for filing multiple trademarks in various goods and services. Accordingly, though the absolute quantity of seven marks is not large, the fact that the applicant being an individual and the ratio of 6 copies and imitations out of the total 7 marks applied overcome the lack of “hoarding” trademarks.

In the LAMAZE case, the unique traits of the applicant is being a “peer” – the applicant is engaged in the baby products industry, the marks it copied are brand owners in baby products industry, the applied-for goods under the copied marks are related to baby products. A player in the same industry not only indicates a high possibility of awareness over the copied brands, but also increases the likelihood of consumer confusion if the copied marks are to be registered and used on the identical goods.

Accordingly, the fact that the applicant resides in the same line of business and the odd proportion of copied trademarks to overall applications serve to offset the shortage of “hoarding.”

Like we stressed in Part I, there is interdependence among the relevant factors for bad faith, and that a relatively small number of trademark filings may be offset by 1) a greater degree of earlier marks’ distinctiveness, 2) a greater degree of the proprietaries’ fame, 3) a higher level of association of the professionalism of the designated goods or services, etc. Similarly, a lesser degree of similarity between the marks may be offset by 1) a closer distance of two parties’ domicile, 2) a closer relatedness of the two parties’ lines of business, 3) a larger amount of the applicant’s trademark filings, etc.

An in-depth investigation of the opposed party and a comprehensive assessment of all factors are highly recommended if one expects a good outcome.

Next, we will continue to share different cases to showcase how to tackle squatters in China.

Follow us and stay tuned!

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Tackling Bad Faith Trademark Applications or Registrations in China – Part I

by Yan Zhang, Miao Tian & Austin Chang

In this series, we are going to share our insights on how to best deal with bad faith trademark applications, a constant headache for foreign brand owners due to China’s first-to-file system. We will begin with the relevant stipulations in the Chinese Trademark Law of China (2019 Version) (“Trademark Law 2019”), the required factors when applying the laws, the current trend in tackling bad faith trademark applications or registrations, and finally demonstrate how to tackle the bad faith trademark applications or registrations with our successful cases.

1. Overview of the relevant stipulations in the Trademark Law 2019

We will start with an overview of the relevant portions of the provisions in the Trademark Law 2019.

Article 4

A malicious application for trademark registration not filed for the purpose of using the trademark shall be refused.

Article 7.1

The good faith principle shall be upheld in the application for trademark registration and in the use of trademarks.

Article 44.1

A registered trademark shall be declared invalid by the Trademark Office if […] its registration is obtained by fraudulent or other improper means. Other entities or individuals may request the Trademark Review and Adjudication Board to declare the aforesaid registered trademark invalid.

These are the key articles that shall be applied when the CNIPA (“China National Intellectual Property Administration,” formerly the Trademark Office and Trademark Review and Adjudication Board) and the courts (Beijing Intellectual Property Court and Beijing High People’s Court) establish a bad faith case.  Typically, at the opposition stage, examiners tend to apply Articles 7, while Article 44.1 is commonly invoked in invalidation actions; and we expect to see more application of Article 4 after the amendment of the Trademark Law 2019 that explicitly added the requirement of “intention to use” for filing trademark applications. Different from the CNIPA, the courts tend to apply Article 44.1 not only to invalidate registered trademarks, but also against applications pending in opposition proceedings. In recent years, there has been an increasing reliance on Article 44.1 in cases where the applicant squatted quite a number of others’ famous marks.

2. The required factors when applying the bad faith clause

Following the relevant laws regarding bad faith trademark applications and registrations, we will move onto the required factors when applying the bad faith clause.

First, the Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases specify what constitutes a bad faith application without intent to use provided in Article 4 and “other improper means” provided in Article 44.1 of the Trademark Law 2019.

Section 7.1 – Application of Article 4 of the Trademark Law

If any trademark applicant obviously lacks the true intent to use and falls into any of the following circumstances, this applicant may be determined to violate the provisions of Article 4 of the Trademark Law 2019:

(1) applying for registration of the trademark identical with or similar to that of various subject with certain popularity or higher distinctiveness, which is regarded as a serious circumstance;

(2) applying for registration of the trademark identical with or similar to that of the same subject with certain popularity or higher distinctiveness, which is regarded as a serious circumstance;

(3) applying for registration of the trademark identical with or similar to any other commercial signs other than trademarks of others, which is regarded as a serious circumstance;

(4) applying for registration of the trademark identical with or similar to any name of place, scenic spot, building and others with certain popularity, which is regarded as a serious circumstance; or

(5) applying for registration of a large number of trademarks without good reasons. If the trademark applicant above claims that he has the true intention of use, but fails to present the relevant evidence, this claim shall not be supported.

Section 17.3 – Determination of specific circumstances of “other improper means” relating to the application of article 44 of the Trademark Law 2019

A trademark under any of the following circumstances may be determined to fall under the circumstances that “the registration is obtained by other improper means” provided in Article 44.1 of the Trademark Law 2019:

(1) the trademark applicant in dispute applies for multiple trademark registrations which are identical with or similar to others’ trademarks with higher distinctiveness or popularity, including the application for trademark registrations of different owners on identical or similar goods or services and also the application for trademark registrations of the same owner on non-identical or dissimilar goods or services;

(2) the trademark applicant in dispute applies for multiple trademark registrations which are identical with or similar to any other corporate names, names of social organization, the names, packaging, decoration and commercial signs of goods with certain influence; or

(3) the trademark applicant in dispute sells the trademark, or file an infringement lawsuit against the users of the prior trademark after failing to transfer at a high price.

The guidelines explicitly provides that bad faith will be inferred where a squatter targets different trademarks belonging to a particular trademark owner. This will significantly improve the applicability of Article 44.1 and turn it into a powerful weapon against those “sophisticated” squatters who copy various trademarks owned by a particular trademark owner instead of different owners.

Second, the State Administration for Market Regulation also published Several Provisions for Regulating Applications for Trademark Registration, which set parameters for determining bad faith practices and bad faith applications for trademarks that are not intended for use, such as number of trademarks applied, classes of trademarks applied, transaction records of trademarks, business operation of the applicant, effective rulings on infringement or bad faith registration, and among other things.

To sum up, if the owner or applicant of a target mark fits any or all of the below circumstances, it is recommended that brand owners considering taking actions safeguarding valuable intellectual property assets.

• hoarding of massive trademarks in various un-related classes;
• applying for many trademarks identical with or similar to multiple business signs with certain popularity or high distinctiveness;
• applying for a large number of trademarks within a short period of time and obviously beyond reasonable; or
• having been found of being a squatter in earlier trademark cases.

Note, however, among the said circumstances, there is not yet a definition for “a large number” or “severe circumstances.”

In practice, we find that when performing a comprehensive assessment in establishing bad faith, some interdependence among the said relevant factors usually occur.  For instances, a relatively small number of trademark filings may be offset by 1) a greater degree of earlier marks’ distinctiveness, 2) a greater degree of the proprietaries’ fame; 3) a closer distance of two parties’ domicile, 4) a closer relatedness of the two parties’ lines of business, 5) a higher level of association of the professionalism of the designated goods or services, etc.

Further, the CNIPA published in March 2021 the Notice on Special Initiative on Cracking Down on Malicious Trademark Squatting (“Notice”), which states that the CNIPA is striving to combat the seven circumstances of malicious trademark squatting which aim at obtaining improper interests, disturbing the trademark administration order, and causing detrimental social impacts. One of the methods to reject bad faith applications is adopting a “fast rejection mechanism” when there are suggestive indications that the applications was filed in bad faith during the trademark application process. Likewise, during oppositions and cancellations, if there are suggestive indications of bad faith, these cases would be prioritize or joined for expedited examination to reject or invalidate those marks.

The Notice shows the CNIPA’s firm standpoint to combat squatting, and from the recent opposition and invalidation decisions, we see a trend in compliance with such determination.

While we will share CNIPA decisions and court judgments applying the bad faith clauses, we set here some drops in the bucket. Spoiler alert!

• At substantial examination stage, the CNIPA refused an individual’s applications by finding that his behaviors of filing fifteen applications in two days, totaling thirty applications as “obviously exceeding regular business needs” and “should be considered as malicious trademark applications not for the purpose of use”;
• In an opposition case, the CNIPA found the opposed party “in violation of the legislative intent of securing registration by improper means” when the opposed party has four marks in total;
• In an invalidation action, after the CNIPA already supported the proprietor under Article 30 of the Trademark Law 2019 (similar marks used on similar goods/services), it further invoked Article 44.1 and affirmed the applicant’s bad faith because it domiciled close to the proprietor and had applied seventeen marks similar to the proprietor’s mark.

Enough for this week, follow us and stay tuned for more cases in the upcoming issues!

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Well-Known Mark Recognitions in China – Part IV

by Yan Zhang, Feifei Bian & Austin Chang

In Part III of this series, we selected our representative cases to further illustrate how the courts apply well-known mark recognition and extend the scope of protection for a well-known mark. In Part IV, the finale of our well-known mark recognition in China, we would like to share with you our insights on how to collect evidence for well-known mark recognition for goods and service in the software and internet industry. Collecting evidence for intangible items is already demanding. Collecting evidence for intangible items for well-known recognition is even more challenging but possible.

1. “PHOTOSHOP” v. “photoshop”

Beijing Liantuochuangxiang Technology Development Co., Ltd. (“Liantuo”) applied for the “photoshop” mark (“Disputed Mark”) with App. No. 9329485 in Class 3 for “lipstick; nail polish; cosmetics; cosmetic pens; eyebrow cosmetics; perfume; eyebrow pencil; rouge; eye shadow cream; dyed lash oil” on April 12, 2011.

Disputed Mark	Cited Mark

Adobe owns a prior registration for the “PHOTOSHOP” mark (“Cited Mark”) with App. No. 573256 in Class 9 for “computer program.”

Adobe filed an opposition against the Disputed Mark on April 20, 2012 before the CNIPA. The CNIPA rendered a decision allowing the Disputed Mark to be registered. Unsatisfied, Adobe appealed but the CNIPA affirmed the Disputed Mark’s registration. Adobe filed an administrative appeal against the CNIPA before the Beijing First Intermediate Court. The court rejected Adobe’s appeal against the CNIPA. Adobe appealed to the Beijing High Court which, finally, ruled in favor of Adobe and ordered the CNIPA to reissue its decision.

In this case, the Beijing High Court found that Adobe submitted sufficient evidence in proving the Cited Mark enjoyed high fame through long-term and extensive promotion and use. For example, thousands of media reports from the People’s Daily, Guanming Daily, China Computer News, Computer World, etc. were submitted as evidence proving the Cited Mark enjoyed high fame. Adobe also submitted the various awards “PHOTOSHOP” received, such as “Computer World’s Annual Product Award” and “Milestone Product of China Information Industry 20 Years Award.” Adobe provided records of its annual certificate examination for “National Computer Application Technical Certificate for Photoshop 6.0” since 2001, as well as the number of “PHOTOSHOP” downloads from the Internet. Given the above, the court held that Adobe’s evidence met the criteria to recognize the “PHOTOSHOP” mark as a well-known mark.

Considering that the Cited Mark had strong inherent distinctiveness and the Disputed Mark was identical to the Cited Mark, the court found that the Disputed Mark was a copy of the Cited Mark. Although the Disputed Mark’s designated goods for “lipstick” had certain variance with the Cited Mark’s approved goods for “computer program,” the relevant consumers for the two marks would still overlap. After comprehensively considering the above analysis, namely, the Cited Mark had inherent distinctiveness, enjoyed high fame, the two marks were identical, the court concluded that the Disputed Mark’s designated goods for “lipstick” was likely to weaken the close association between the Cited Mark and its approved goods for “computer program,” dilute the Cited Mark’s distinctiveness, and damage Adobe’s interests.

2. “Mei Tu Xiu Xiu and MEITUXIUXIU” v. “Mei Tu Xiu Xiu”

An individual Rongxiong BEI applied for the “Mei Tu Xiu Xiu and MEITUXIUXIU” mark (“Disputed Mark”) on April 19, 2013 with App. No. 12454059 in Class 3 for “detergent; grinding paste; rose oil; toothpaste; dried petal and perfume mixture (perfume); animal cosmetics; air fragrance; cosmetics; shampoo; shoe polish,” and the Disputed Mark was approved for registration on September 28, 2014.

Disputed Mark	Cited Mark

Xiamen Meitu Technology Co. (“Meitu”) applied for the “Mei Tu Xiu Xiu” mark (“Cited Mark”) on December 8, 2008 with App. No. 7099841 in Class 9 for “optical disk; information processor (central processing unit); computer software (recorded); electronic dictionary; recorded computer program (program); computer; computer program (downloadable software); network communication equipment; electronic sound device with books; magnetic data medium,” and was approved for registration on October 14, 2010.

Meitu filed an invalidation against the Disputed Mark with the CNIPA on July 24, 2015. Upon adjudication, the CNIPA held that the Disputed Mark shall be invalidated. BEI appealed to the Beijing IP Court. The Beijing IP Court rejected BEI’s appeal. BEI then appealed to the Beijing High Court. The Beijing High Court affirmed the CNIPA’s decision and ruled in favor of Meitu. BEI, still unsatisfied, petitioned to the Supreme People’s Court for retrial but the petition was rejected.

In its decision, the Beijing High Court found that prior to the Disputed Mark’s application date, the Cited Mark had occupied a rather large market share and covered wide range of regions for sales through long-term, extensive, and continued promotion and use on its approved goods for “computer software (recorded), recorded computer program (program), computer, etc.” The Cited Mark constituted as a well-known mark because it had been known to the relevant public and enjoyed high fame.

The court reasoned the Cited Mark consisted of four Chinese characters “Mei Tu Xiu Xiu” that did not have particular meaning and had inherent distinctiveness. The Disputed Mark was a copy and imitation of the Cited Mark because the Disputed Mark’s distinctive part was identical with the Cited Mark. Although the two marks designated goods in difference classes, the relevant consumers and target consumers overlapped. Considering the Cited Mark was a well-known mark and that the Disputed Mark’s distinctive part was identical to the Cited Mark, the relevant consumers were likely to be confused regarding the relationship between the two marks when purchasing the Disputed Mark’s designated goods. Such confusion would weaken the Cited Mark’s distinctiveness, unfairly exploit the Cited Mark’s market reputation, and damage the Cited Mark and Meitu’s interests.

3. Beijing East IP analysis and comments

As you may have reckoned, the photoshop and Mei Tu Xiu Xiu cases shared some similarity in that the courts recognized both cited marks as well-known marks on computer program related goods and gave cross-class protection against lipsticks and cosmetic related goods. The two focal points in these two cases are: 1) evidence collection for obtaining well-known mark recognition in connection with software application related goods, and 2) the association between disputed mark’s designated goods or services and cited mark’s approved goods or services.

a. Evidence collection for obtaining well-known mark recognition mark designating software related goods

It is important to note not to apply Article 14 of the Chinese Trademark Law verbatim when collecting evidence for well-known mark recognition. Instead, consider utilizing relevant public’s understanding and recognitions on the marks and the goods involved. In the photoshop case, we supplemented large amount of evidence in the second instance trial to prove that the cited mark had reached well-known status prior to the disputed mark’s application date, including media reports, awards, rankings, sales records, Chinese brochures, China subsidiaries information, China and worldwide judicial and administrative adjudications, to name a few. Since Photoshop is a software, we particularly emphasized Photoshop’s versions, downloads, and user numbers, as well as other facts reflecting that Photoshop is now included in national certificate examinations, included as part of national computer examination, and used as teaching materials. We argued that Photoshop can be considered as well-known because it is included in the national computer application certificate examination and numerous people had taken such exam. Compared to foreign entities, domestic entities such as Meitu tend to have the up hand in collecting evidence originated from China. However, it is more challenging for internet companies than traditional companies collecting evidence for well-known mark recognitions considering the evidence are often intangible. When collecting evidence for Meitu’s cited mark, we collected large amount of use evidence, number of users, product sales records, promotional and advertisement records, and awards received to prove that the cited mark satisfied the well-known mark recognition threshold. For example, for use evidence, evidence of earliest use and software product update records were presented. For product sales records, revenue, profit, tax, sales agreements, collaborators, and regions that products bearing the cited mark covered were presented. Other evidence such as commercial and promotional agreements, fees, media reports, and the actual awards received were submitted as evidence proving the cited mark has reached well-known status. The second instance court found that although Meitu’s profit between 2010 and 2013 was relatively low, profit was merely one of the many factors in determining the cited mark’s well-known status and fame. When determining whether a mark reached well-known status, the focus should be laid on the distinctiveness and well-known status of the cited mark on the approved goods, as well as the internet industry’s operation features, namely, software development and market promotion related investment would likely exceed profit at the beginning.

b. The association between disputed mark’s designated goods or services and cited mark’s approved goods or services

Often, it is difficult to prove the association between disputed mark’s designated goods or services and cited mark’s approved goods or services, especially when these goods or services are in different classes. For example, in the photoshop case, we submitted online media reporting that the approved goods, software, for Adobe’s “PHOTOSHOP” mark can provide various beautify functions and use visual aids during trial to detail how the relevant public use cosmetics prior to taking photos, and subsequently edit photos using the PHOTOSHOP software for beautify purposes to create better photos or pictures presentations. We argued that the disputed mark’s designated goods for “cosmetics” and the cited mark’s approved goods for “software” all carried the functions of beautify human’s faces or images. Thus, the target consumers overlapped and are closely related. Combining the above evidence with the “PHOTOSHOP” mark’s distinctiveness and fame, we further argued that the disputed mark’s registration and use would weaken the one-to-one and unique association between Photoshop and Adobe, dilute the distinctiveness of the well-known “PHOTOSHOP” mark, and damage Adobe’s interests.

Thank you for tuning in to our well-known mark recognition series. If you have any questions, please feel free to contact us.

Next, we will share our experience and insights regarding bad faith trademark registration and how to counter trademark squatting. We selected this topic because China’s first-to-file system can be difficult to navigate for foreign stakeholders who may not always have the need to apply for trademarks in China when they first start their businesses outside of China.

Follow us and stay tuned!

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Well-Known Mark Recognitions in China – Part III

by Yan Zhang, Feifei Bian & Austin Chang

In Part II of this series, we shared our representative cases on how to apply the concept of anti-dilution for the protection of a well-known trademark in administrative trademark litigations. In Part III, we selected our representative cases to further illustrate how the courts apply well-known mark recognition and extend the scope of protection for a well-known mark.

1. RITZ-CARLTON v. “LI SI KA ER DUN in Chinese”

Chengdu Zhi Zhi Real Estate Development Co., Ltd. (“Zhi Zhi”) applied for the “LI SI KA ER DUN in Chinese (丽思卡尔顿)” mark (“Disputed Mark”) with App. No. 5336988 in Class 36 for “commercial housing sales services; insurance; capital investment; art valuation; real estate agency; agency; guarantee; raise charitable funds; entrusted management; pawn shop” on May 9, 2006. The Disputed Mark was approved for registration on October 14, 2009.

Disputed Mark	Cited Mark 1	Cited Mark 2

Ritz-Carlton owns prior registrations for the “RITZ-CARLTON” mark (“Cited Mark 1”)  and the “LI SI KA ER DUN in Chinese (丽思卡尔顿)” mark (“Cited Mark 2”) in Class 42 (Class 43) for “hotels; restaurants; barbeque restaurants; tea rooms; etc.”

Ritz-Carlton filed a dispute cancellation against the Disputed Mark on March 28, 2010 before the CNIPA (then the Trademark Review and Adjudication Board). The CNIPA issued a decision that maintained the Disputed Mark’s validity on August 29, 2011. Unsatisfied, Ritz-Carlton appealed to the Beijing First Intermediate Court.

On December 20, 2012, the Beijing First Intermediate Court reversed the CNIPA’s decision. Zhi Zhi was unsatisfied and appealed to the Beijing High Court. On July 31, 2013, the Beijing High Court, as the second instance court, issued the final decision that affirmed the Beijing First Intermediate Court’s decision against Zhi Zhi.

In this case, the Beijing High Court found that the Disputed Mark consisted of “LI SI KA ER DUN in Chinese (丽思卡尔顿)” and before the Disputed Mark’s application date, media and the Internet had widely adapted and used “LI SI KA ER DUN in Chinese (丽思卡尔顿)” to refer to RITZ-CARLTON. Ritz-Carlton submitted sufficient evidence during the administrative and judicial proceedings to prove that they had received great businesses in the hotel industry, received numerous awards, and attracted high levels of media’s attention before the Disputed Mark’s application date. Namely, before the Disputed Mark’s application date, “LI SI KA ER DUN in Chinese (丽思卡尔顿)” could often be seen on various newspapers and the Internet, and such constant media reports subjectively expanded the societal influence of the “LI SI KA ER DUN in Chinese (丽思卡尔顿)” brand, allowed Ritz-Carlton to enjoy high fame among the relevant public in China. Thus, the Disputed Mark constituted as a translation of “RITZ-CARLTON.” Consider the “RITZ-CARLTON” mark obtained relative high fame on hotel related services through uses and promotions, and the Disputed Mark’s approved services for “sales services for commercial real estate and real estate agency” were related to the hotel services, the Disputed Mark’s registration was likely to cause confusion to the public and damage Ritz-Carlton’s interests. The Beijing First Intermediate Court correctly recognized the “RITZ-CARLTON” mark as a well-known mark, based on the evidence submitted, to protect Ritz-Carlton’s trademark rights according to Article 13(2) of the 2001 Chinese Trademark Law (“TM Law”)  (Article 13(3) of the 2019 TM Law).

2. “YAHOO!” v. “YahaoSoft”

Beijing Jing San Pu Business Trading Co., Ltd. (“Jing San Pu”) applied for the “YaohaoSoft” mark (“Disputed Mark”) with App. No. 3610948 in Class 42 for “intellectual property supervision; computer leasing; computer programming; computer software coding; computer software maintenance; creation and maintenance of websites for others; hosting computer stations (websites); computer hardware consulting” on June 30, 2003. The Disputed Mark was published for opposition on May 28, 2005.

Disputed Mark	Cited Mark

Yahoo! owns prior registrations for the “YAHOO!” mark (“Cited Mark”) in Class 42 for “computer service; namely: to query and retrieve the information used on the computer network.”

Yahoo! filed an opposition against the Disputed Mark with the CNIPA on December 1, 2009 and the CNIPA refused the Disputed Mark for registration. Jing San Pu appealed to the Beijing First Intermediate Court. Yahoo! attended the hearing as a third-party attendee. The Beijing First Intermediate Court affirmed the CNIPA’s decision.

In its decision, the Beijing First Intermediate court found that except intellectual property supervision, all other services such as computer leasing, computer programming, etc. were similar to the Cited Mark’s approved services “computer service; namely: to query and retrieve the information used on the computer network.” The “Soft” of the “YahaoSoft” can be understood meaning “software” when used on computer related services, which had weak distinctiveness, and the “Yahao” part was the distinctive part of the Disputed Mark. When compared the Disputed Mark’s distinctive part “Yahao” with the Cited Mark “YAHOO!,” it was obvious that the font and pronunciation were similar. If both marks were to co-exist on identical or similar services, it was likely to cause relevant consumer to be confused or mistaken on the source of services. Thus, the Disputed Mark constituted a similar mark with the Cited Mark according to Article 28 of the 2001 TM Law (Article 30 of the 2019 TM Law).

Yahoo! submitted sufficient evidence during the administrative proceeding to prove that Yahoo! had been using its English trade name “YAHOO!” for computer network related services prior to the Disputed Mark’s application date. Yahoo!’s trade name had attracted market reputation from the relevant public through use. There were strong associations between the computer network related services provided by Yahoo! and the Disputed Mark’s designated services of computer leasing, computer software coding, etc. Accordingly, when the Disputed Mark was registered on the said designated services, the relevant public was likely to be confused as to the source of services and Yahoo’s prior trade name right would be damaged according to Article 31 of the 2001 TM Law (Article 32 of the 2019 TM Law).

The evidence Yahoo! submitted during the administrative proceeding proved it had attracted market reputation before the Disputed Mark’s application date on computer related services, namely, to query and retrieve the information used on the computer network. Combined with the fact that the Disputed Mark’s main distinguishable part was similar to the Cited Mark in font and pronunciation, which constituted as the Cited Mark’s imitation. Although the intellectual property supervision services designated under the Disputed Mark was not similar to the computer services designated under the Cited Mark, given that the Cited Mark had reached well-known status, the Disputed Mark’s use on the said services would likely to cause the relevant public to mistaken that the Disputed Mark had certain association with the Cited Mark, and potentially damage the Cited Mark owner’s interests according to Article 13(2)of the 2001 TM Law (Article 13(3) of the 2019 TM Law).

3. Beijing East IP analysis and comments

In Part I of this series we mentioned that a mark can be recognized as well-known based on the principles of case-by-case recognition and need-based recognition. The main issue presented in the two cases is when and how to apply well-known mark recognition in each case.

First, in the RITZ-CARLTON case, Ritz-Carlton based its grounds on Article 10(1)(viii), Article 13(2), Article 31, and Article 41(1) of the 2001 TM Law. The court found that the Disputed Mark’s registration does not fall into the conditions described in Article 10(1)(viii), Article 31, Article 41(1). The court only applied Article 13(2) in finding that Zhi Zhi’s trademark registration in Class 36 would damage Ritz-Carlton’s well-known mark in Class 42 (Class 43). Here, although Ritz-Carlton based its grounds on four different articles, the court held that the articles other than Article 13(2) did not apply, and that it was necessary to recognize the cited mark as a well-known mark to protect Ritz-Carlton’s trademark rights.

In the YAHOO! case, Yahoo! based its grounds on Article 13(2), Article 28, and Article 31 of the 2001 TM Law. The court applied Article 28 in finding that the Disputed Mark constituted as a similar mark to the Cited Mark when used on similar services. The court also applied Article 31 in finding that the Disputed Mark’s registration on services similar to those services approved under the Cited Mark would damage Yahoo!’s prior trade name right. Here, since the court had applied Article 28 and Article 31 in protecting Yahoo!’s rights against the designated services on computer related services under the Disputed Mark, the court did not apply Article 13(2) for cross-class protection regarding the computer related services. The court’s application of laws clearly demonstrated that when the interest party’s rights can be protected by certain articles raised in its argument, the court will not apply the article regarding well-known mark recognition.

Second, although well-known mark recognition provides cross-class protection, such protection only extends to the relevant goods or services covered by the level of the mark’s well-known status, that is, the cross-class protection does not extend to all 45 classes. In the RITZ-CARLTON case, the court recognized the “RITZ-CARLTON” mark was well-known in hotels services. The Disputed Mark’s approved goods on commercial housing sales services and real estate agency services were related to hotels services. Based on this finding, the court concluded that the Disputed Mark’s registration on the said services would be likely to cause confusion to the relevant public and damage Ritz-Carlton’s interests. The court, however, did not grant protection against other services (insurance; capital investment; art valuation; agency; guarantee; raise charitable funds; entrusted management; pawn shop) under the Disputed Mark. In the YAHOO! case, the court granted cross-class protection on the intellectual property supervision service based on Yahoo!’s arguments that, in the Internet industry, intellectual property supervision was closely related to Yahoo!’s well-known search engine related services and serves similar consumers.

Finally, the evidence we submitted on behalf of our clients during the administrative litigation proceedings was key in obtaining the well-known mark recognition. Generally, courts do not always admit new evidence in administrative litigation. In the RITZ-CARLTON case, the CNIPA and the courts have different views as to whether the “RITZ-CARLTON” mark could be recognized as a well-known mark. The difference lies in the admissibility of the large amount of new evidence submitted during the court proceeding. We collected and submitted copies of various evidence found through the National Library, the Shanghai Library, the China Tourism News, the People’s Daily, Xinhua Net, CNKI and other media as corroborative evidence. Meanwhile, we further submitted the notarized documents as corroborative evidence to satisfy the formality requirement. The courts affirmed that the new evidence is to strengthen the evidence submitted during the CNIPA proceeding, in which Ritz-Carlton submitted substantial evidence to support its arguments. If not admitted, Ritz-Carlton’s rights would be severely damaged. Especially under the circumstance that when comprehensively consider all evidence submitted, the cited mark can be recognized as a well-known mark, not admitting the supplemental evidence would be unjustified.

As you may have guessed, evidence collection is an important phase in obtaining well-known mark recognition. Next, we will share different cases to further elaborate how to best collect evidence for a well-known mark.

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Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

Well-Known Mark Recognitions in China – Part II

by Yan Zhang, Feifei Bian & Austin Chang

Previously, we shared our insights on how to secure well-known mark recognitions in China and its benefits. In the next few articles, we will be sharing cases with analysis on how the courts apply well-known mark recognitions to various facts.

1. “Cisco in Chinese” v. “SIKE and SI KE in Chinese”

Foshan City Shunde District Lunjiao Junze Electrical Appliance Factory (“Lunjiao”) applied for the Disputed Mark No. 13618667 on November 27, 2013 and was approved for registration on November 28, 2016 in Class 11 for “electric cooker; electric kettle; electric water heater; electric yogurt maker; electric pressure cooker (pressure cooker); gas stove; gas water heater.” Cisco applied for the Cited Mark No. 3999024 on April 6, 2004 and was approved for registration on September 7, 2006 in Class 9 for “network communication equipment; telephone; etc.”

Disputed Mark	Cited Mark

Cisco filed an invalidation request on February 27, 2017 before the CNIPA. The CNIPA affirmed the Disputed Mark’s validity. Cisco appealed the decision to the Beijing IP Court. On May 24, 2019, the Beijing IP Court reversed the CNIPA’s decision and ordered the CNIPA to re-render its decision based on the Beijing IP Court’s decision.

In its decision, the Beijing IP Court found that the evidence submitted by Cisco is sufficient to prove the well-known mark status of “CISCO in Chinese (思科)” on “network communication equipment” in Class 9 prior to the application date of the Disputed Mark. Further, the Beijing IP Court found that the Disputed Mark’s specific composition combining “SIKE” and “SI KE in Chinese (思科)” copied and imitated Cisco’s well-known mark. The Disputed Mark’s approved goods for “electric cooker; electric water heater; etc.” were common household consumer goods that were likely to attract relevant consumers who were attracted to the Cited Mark’s approved goods. Meanwhile, Lunjiao failed to provide reasonable explanations regarding the idea that shaped the Disputed Mark’s creation. Cisco’s evidence also showed that in addition to the Disputed Mark, Lunjiao applied for six other trademarks, one identical to the Disputed Mark and five “3M” marks, which inevitably suggested the likelihood of Lunjiao’s bad faith intention in free riding other’s goodwill. Similarly, the Disputed Mark’s relevant consumers were likely to associate Cisco’s well-known mark “Cisco in Chinese (思科)” upon seeing the identical Chinese characters used in the Disputed Mark. The Disputed Mark may also dilute the well-established corresponding relationship between Cisco and its well-known mark “Cisco in Chinese (思科),” impaire the distinctiveness of Cisco’s well-known mark, and damage Cisco’s well-known trademark rights.

2. “McFlurry in Chinese” v. “MAI XUAN FENG in Chinese”

China Top Foods Co., Limited (“Top Foods”) applied for the Disputed Mark No. 12049136 on January 15, 2013 and was approved for registration on November 28, 2015 in Class 35 for “advertisement promotion; advertising design; commercial management of franchising; marketing for others; personnel management consulting; business enterprise migration; compiling information into computer databases; accounting; vending machine rental; seeking sponsorship.” McDonald’s applied for the Cited Mark 1 No. 1646857 in Class 29 for “meat products; pork products” and Cited Mark 2 No. 8666342 in Class 30 for “ice cream, etc.” prior to the Disputed Mark’s application date.

Disputed Mark	Cited Mark 1	Cited Mark 2

McDonald’s filed an invalidation request on August 19, 2016 before the CNIPA. The CNIPA affirmed the Disputed Mark’s validity. McDonald’s appealed the decision to the Beijing IP Court. On August 1, 2019 the Beijing IP Court reversed the CNIPA’s decision and ordered the CNIPA to re-render its decision based on the Beijing IP Court’s decision.

In its decision, the Beijing IP Court found that the Cited Mark 1 and Cited Mark 2 (“Cited Marks”) could be recognized as well-known marks based on the evidence McDonald’s submitted. The evidence showed that prior to the Disputed Mark’s application date, McDonald’s carried out long-term, extensive, and numerous promotions for the Cited Marks “McFlurry in Chinese (麦旋风)” on milk products, ice cream, etc. in mainland China. The Chinese characters used in the Disputed Mark were identical to the Cited Mark 2. The only undiscernible difference between the Disputed Mark and the Cited Mark 1 was that the Disputed Mark used traditional Chinese and the Cited Mark 1 used simplified Chinese. Based on foregoing reasons, the Disputed Mark copied the Cited Marks. Moreover, because the Cited Marks had strong distinctiveness with high fame, even if the approved services “advertisement promotion, etc.” under the Disputed Mark were unrelated to the approved goods “milk” and “ice cream” under the Cited Marks, the relevant consumer would inevitably associate McDonald’s and its well-known marks upon seeing the Disputed Mark. Such association would damage the well-established correspondence between McDonald’s and the Cited Marks, decrease the distinctiveness of McDonald’s well-known mark, and damage McDonald’s interests.

3. Beijing East IP analysis and comments

The standard applied for well-known mark protection can be found in Article 9(2) of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving Well-Known Trademark Protection (“SPC Interpretation”) which states that associations that are capable of confusing the relevant public to believe that the accused trademark has a considerable degree of association with a well-known mark, thereby weakening the distinctiveness of that well-known mark, derogating the market reputation of that well-known mark, or improperly using the market reputation of that well-known mark. This standard shall be consistently applied across administrative and civil trademark litigations. The SPC Interpretation established that, instead of likelihood of confusion, courts shall focus on impairing a well-known mark’s distinctiveness, harming a well-known mark’s reputation, or improperly using a well-known mark’s market reputation when finding damage for a well-known mark. Such approach is aimed at protecting a well-known mark’s distinctiveness from impairment and preventing harm from the one-to-one association established between a well-known mark and its particular goods and services.

In judicial practice, when determining the scope of protection for a well-known mark, courts should comprehensively consider the well-known mark’s distinctiveness, fame, similarity between the marks, actual use of the approved goods, degree of overlapped relevant consumers and their attentions, and the subjective state of mind of the disputed mark’s applicant.

The Cisco and the McFlurry cases reflect how well-known mark protection extends the scope of protection in administrative trademark litigations to not only eliminate potential likelihood of confusion but also prevent well-known mark from dilution.

In this Cisco case, the disputed mark’s approved goods “electric stove; electric water heater, etc.” are common consumer goods that face a wide range of relevant public, which overlaps with the targeted consumer of Cisco’s approved goods “network communication equipment.” Considering Cisco’s cited mark “CISCO in Chinese (思科)” has strong distinctiveness and has established a close association with Cisco through long-term promotion and use. In recognizing Cisco’s cited mark as a well-known mark and granting cross-class protection, the court considered whether the disputed mark would break the one-to-one association and the well-established connection between Cisco’s famous network communication equipment and its cited mark, and whether the disputed mark would impair the cited mark’s distinctiveness. Similarly, in the McFlurry case, although the approved goods “advertisement promotion” for the disputed mark are not necessarily related to the approved goods “milk” and “ice cream” for the cited mark, the court applied the dilution principle when recognizing McDonald’s cited marks as well-known because of its relative high fame and granted the cited marks with additional protections. In other words, the scope of protection of a well-known mark shall match its degree of fame, namely, potentially expand its scope of protection.

Moreover, the subjective state of mind of the disputed mark’s applicant is also an important factor. In the Cisco case, Lunjiao failed to provide reasonable sources of its idea in creating the disputed mark. Together with the five “3M” marks Lunjiao applied, its bad faith in free riding other’s fame can hardly be ignored. In the McFlurry case, Top Foods applied “M MACCAS” marks in many Classes and its only shareholder applied for “Man Ji in Chinese (满记) (A famous desserts shop from Hong Kong),” “HILTON,” “Xin Zhou Kan in Chinese (新周刊) (A famous magazine in China), etc.” These trademark filings suggest bad faith in copying and imitating other’s highly famous trademarks.

Finally, when considering whether a mark shall be recognized as well-known, judicial and administrative authorities usually refer to Article 14 of the Trademark Law. Additionally, financial statistics are proven to be important supporting evidence for well-known mark recognition such as sales numbers, tax, audit report, etc. Foreign entities, however, may have difficulties in providing such information as supporting evidence. In helping our clients tackle such a challenge, we devote crucial time and efforts to find evidence from all angles and connect each piece of evidence found into a complete evidence chain. In building such evidence chain, we strive to find essential data and locate critical evidence five years prior to the disputed mark’s application date. Under the circumstances that the clients were unable to provide its sales number and market share data in China directly to us, we parsed through targeted online and offline media that reported the sales number and market share data in China, combining with rankings from authoritative magazines such as Fortune and Businessweek, published annual reports, and awards received to persuade the courts to recognize the well-known mark.

Next, we will continue to share different cases to showcase how well-known mark protection is done in China.

Follow us and stay tuned!

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China

E-commerce Law and E-commerce Intellectual Property Protection Forum, which was sponsored by Beijing Municipal Intellectual Property Office and Beijing Higher People’s Court, and hosted by Beijing Intellectual Property Protection Association and the Intellectual Property Protection Alliance of E-Commerce, was successfully held on September 12, 2019 in Beijing.