Tag Archives: trademark litigation

Why Does China Court Order New Balance a High Amount Compensation of RMB 98 Million for Trademark Infringement?

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(By Luo Yanjie) Recently, Guangzhou Intermediate People’s Court ordered New Balance Trading (China) Co., Ltd, an affiliate of US-based Sports footwear manufacturer New Balance, to compensate a Chinese shoes owner, Zhou Yuelun, with a rarely high amount of RMB 98 million for infringing his Chinese “新百伦” trademark, a Chinese transliteration from English word New Balance, in the first instance. Such high amount of compensation is unusual in China intellectual property infringement. It is for this reason that this case attracted extensive attention. Upon the public records, from the legal view, we will briefly introduce and analyze this case in today’s post.

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Supreme Court Determined Trademark Non-infringement for Using Prior Enterprise Name with Good Faith

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(By Luo Yanjie) Both the enterprise name and the trademark distinguish the sources of goods or services, so that in practice they may conflict with each other. However, trademark, an exclusive right, has functions so as to prohibit others from using it as enterprise name. Under some circumstances, the enterprise name can coexist with the trademark. In today’s post, we would like to introduce such a case.

Introduction to the Case:

Retrial Applicant (Plaintiff at first instance, appellant at second instance): Yinchuan Buma Trading Co., Ltd (the “Yinchuan Buma Trading”)

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China Court Affirmed the Exception for Registration of Geographical Name Trademark

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Munich Re Group

 (By Luo Yanjie) According to the Trademark Law, the geographical names of administrative divisions at or above the county level, and foreign geographical names well-known to the public shall not be used as trademarks, except for geographical names that have other meanings or are not geographically-oriented. However, under certain circumstances, geographical trademarks shall, if they are of sufficient distinctiveness as a whole, may be considered to have the requisite requirements of distinctiveness. In today’s post, we will introduce such a typical case for our readers.

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Could A Prior User Constitute Trademark Infringement against the Exclusive Right Holder of a Registered Trademark?

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caidiexuan

(By Luo Yanjie) Our former trademark laws had not yet stipulated whether a prior user constituted trademark infringement against the exclusive right holder of a registered trademark. However, the implementation of the update Trademark Law this year solved the problem. In today’s post, we will introduce a typical case concerning the prior user succeeded in competing against the exclusive right holder. Even though the case was judged before the implementation of the update Trademark Law, its judgment was kept pace with legislative purpose of the update Trademark Law.

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Korean Game Company Defeated China Local Agent for Cancelleation of Rush-registered Trademark

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ESTsoft

(By Luo Yanjie) Today we will introduce an example of a trademark squatting case where a Chinese online game operator rush-registered a trademark. In this case that trademark was canceled by Trademark Review and Adjudication Board.

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China Court Decision Repeals TRAB’s Ruling for Unified Review Standard

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zenpep商标

(By Luo Yanjie)Abstract: Pursuant to Chinese Trademark Law, those applications having unhealthy influences shall not be used as trademarks. “Unhealthy influences” refers to a negative, or inactive influence that may detrimental to the interests and social order of the public, including political, economic, cultural, religious and ethnic allusions  which are a registered trademark itself or a mark that is applied to goods or services. However, the Chinese Trademark Office should have a consistent attitude regarding the trademark adjudication standard for these unhealthy influences.

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GAP Defeated a Trademark Squatting in China After 20 Years

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GAP

(By You Yunting) It is well known that GAP is a famous brand in clothing. However, in China, someone attempted to register “GAP” under Class 9 for eyewear products as a trademark. GAP has been defeating similar trademark squatting for over 20 years.

Introduction to the Case:

Applicant of a retrial (Plaintiff in the first instance and Appellant the in second instance): GAP (ITM) INC.

Respondent (Defendant in the first instance and Appellee in the second instance): Trademark Review and Adjudication Board (the “TRAB”)

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Why China Court Decision the Use of Registered Trademark to Non-infringement?

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bianzuiba

(By Luo Yanjie) Abstract:A trademark shall be distinctive and a rational use of the characters in a trademark does not constitute infringement. The 2013 version of the Trademark law clearly stipulates that where an identical or similar trademark has been used in connection with the same goods or similar goods by others before the registrant’s application, the exclusive right holder of said registered trademark shall have no right to prohibit other people from using the aforesaid trademark from continuous use of such trademark within the original scope, but may request its users to add proper marks for distinction.

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Why Couldn’t the “CASTEL” Trademark Prevent AnotherFrom Registering As Enterprise Name?

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castel

(By Luo Yanjie ) Abstract: Generally, the trademark-right and the right of an enterprise-name are independent of each other. However, these rights, which also act as an enterprise-business-mark-right and are comprised of an intellectual property right, are likely to be so similar in their nature and characteristics that they may objectively cause disputes. To reach a judgment on whether there has been a breach of the principle of good faith and recognized commercial-morality as regulated in the anti-unfair Competition Law, the court would make a judgment based on the particular circumstances of a case.

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Should An Enterprise Change its Enterprise Name that Infringed a Registered Trademark in China?

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巴黎春天

(By Luo Yanjie) Abstract: Marks that only bear the generic names, devices, or model numbers of the goods shall not be registered as trademarks. This restriction was just limited the generic names of the same goods. Trademark right is a unified national right all over the China and shall be under equal protection. In practice, for an act of an enterprise name infringing a registered trademark, the court may make a comprehensive judgment of different kinds of infringement liabilities.

With regard to some well-known brands, an act of using another’s well-known brand as an enterprise name is a typical infringement manner, which annoys the right holder. In today’s post, we’d like to introduce and share a typical case that the infringing party was finally convicted of infringement by the courts and ordered to stop using its enterprise name for the following.

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China’s Courts won’t Prohibit a Trademark Squatting with Post-Approval

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古珀行

(By Luo Yanjie) Abstract: “Agent” in conduct of Agent’s preemptive registration refers to “trademark agents, representatives or other agents and representatives based on sales and agency relationship such as distribution and agency”. Commodities that no agent or representative may apply for registration include commodities same as the commodities where the trademarks of the principals or the persons represented are attached to as well as other similar commodities. Considering trademark is a private right, judicial institutions shall fully respect parties’ autonomy.

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Does Using “Counterfeit Goods” Constitute Trademark Infringement?

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Abstract: generally, consumers’ acts of purchasing infringing goods are not considered to constitute trademark infringement. However, some limits shall be given by laws and regulations to those that intend to manufacture and sell infringing goods to damage a trademark holder’s legitimate rights and interests. Based on such analysis, we don’t fully agree with the Chinese court’s decision in today’s post.

(By You Yunting) Pursuant to the Trademark Law, infringement refers to “manufacturing and selling” goods or services of a registered trademark without authorization, but does not include consumers’ acts of purchasing and using infringing goods or services. If laws entirely indulge consumers’ infringements, it is not entirely effective in protecting a trademark holder’s legitimate rights and interests. In today’s post, we will discuss a typical case evidencing such legal limitations. Here is our analysis:

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Is It Infringing to Show Others’ Trademarks on Exhibitions?

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By Luo Yanjie

Previously, our website introduced issues of trademark and patent in China exhibition: Legal Issues concerning Trademark during the Exhibition in China, Patent Issues for Attention on the Exhibition in China. Recently, a customer told our attorneys that they found a company using their registered trademarks for the promotion on similar goods in an exhibition. The company learned a little Chinese law and they know only Chinese patent law provides that “offer to sell” is infringement. So they ask our advice about that if using other’s registered trademarks constitute trademark infringement?

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McDonald’s Lost the First Instance of the Trademark Administrative Lawsuit against Wonderful

We once reported the administrative refusal on Mcdonald’s opposition on Wonderful’s trademark (the W trademark) which is similar to Mcdonald’s “M” trademark (you may check the details in How Could McDonald’s Beat Free Rider of Trademark in China?). After that, Mcdonald’s initiated the administrative lawsuit on the refusal.

According to Beijing Morning Post’s report on 10th December, Beijing First Intermediate People’s Court judged on the first instance of the administrative lawsuit, refusing the claims of Mcdonald’s.

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