Trademark Administrative Litigations

Case #1 Objective description of pharmaceutical’s effects does not constitute deception (Trademark Law, article 10)

Representing Guangzhou Pharmaceutical Group Co., Ltd. in its litigation against the Trademark Review and Adjudication Board’s “Drink Wanglaoji to Avoid Heat” Trademark Refusal Review Administration Dispute

Significance

This case is a typical one regarding whether or not advertisement slogan can be registered as trademark. After 10 years of consistent promotion, “Drink Wanglaoji to Avoid Heat” became enormously popular. However, the application for the registration of this trademark was refused by the Trademark Office and the Trademark Review and Adjudication Board. The ruling of this case provided a clear explication of the criteria for “deception” described in article 10 paragraph 1 clause 7. The court eventually held that the trademark did not violate this piece of regulation.

Case #2 Inclusion in online dictionary but not in professional dictionary cannot prove the lack of distinctiveness (Trademark article 11)

Representing DYK Automotive in its litigation against the Trademark Review and Adjudication Board in “SeaFoam” Trademark Refusal Review Administrative Dispute

Significance:

The Trademark Review and Adjudication Board held that the literary meaning of the applied trademark was “sea-soaked stone” and expressed the characteristics of the raw materials of the product when used on type 4 “machine oil” designated product. In the litigation process, the attorney illustrated the applicability of the registered trademark through the origin of the trademark’s text, the meaning of the word, the public reputation of the foreign trademark, the time of creation of the word, the usage and application of the trademark, the acknowledgement of consumers and the responsibility of the Trademark Review and Adjudication Board to cite evidence. The attorney approved that the registered was not connected to “sea-soaked stone” at all, in terms of meaning, expression, nature of the product, market recognition and many other aspects. The adjudication of the Trademark Review and Adjudication Board was repealed, making this case a classical one that overturns the decision of lack of distinctiveness.

Case #3: The cross-category protection of well-known trademark for time-honored brand (Trademark Law article 13)

Natural person Li’s litigation against the Trademark Review and Adjudication Board and the third-party Guangzhou Baiyunshan Pharmaceutical Group Co., Ltd. (represented by Janlea) “Qi Xing” trademark opposition review administration dispute

Significance:

This is case is a classical one that protect the lawful rights of time-honored brands through the legal regulations of well-known trademarks. It was selected to “2016-2017 Excellent Representing Cases” of China Trademark Association. The ruling held that the cited trademark, as a time-honored brand, had been broadly recognized by the relevant public before the application of the disputed trademark and thus constituted a well-known trademark used on pharmaceutical products for human patients. The registration of the disputed trademark weakened the distinctiveness of the cited trademark and injured the lawful rights of the well-known trademark. The disputed trademark was refused for registration

Case #4 The protection of well-known trademark for internationally famous brand (Trademark Law article 13)

Representing Similac Company in its litigation against the Trademark Review and Adjudication Board “Ya Pei” trademark opposition review administrative dispute 

Significance:

This case is a classic one that protects an internationally famous brand through the legal regulations of well-known trademarks. After both the Trademark Review and Adjudication Board and the first-instance court refused to grant the protection of well-known trademark, the second-instance court adopted the opinion of the attorney. The court held that “Similac” trademark achieved the well-known status on dairy and related products, that the disputed trademark’s registration on type 24 “towel” products had the intention of copying and imitating Similac Company’s well-known trademark. Objectively, the disputed trademark exploited the market reputation of the well-known trademark and injured the interests of Similac company. Eventually, the second-instance court cancelled first-instance ruling and the adjudication decision of the Trademark Review and Adjudication Board, applying cross-category protection for the “Similac” trademark.

Case #5 The trading relation of product transaction constitute the contractual, business-related and other relations described by article 15 paragraph 2 of the Trademark Law (Trademark Law article 15)

Representing UMC Company in its litigation against the Trademark Review and Adjudication Board “UMC” trademark invalidation declaration administrative dispute

Significance:

This case involved the judgment of “other representing relations” in article 15 paragraph 2 of the Trademark Law. The subsidiary of the principal, who had business relations with the principal, preemptively registered the trademark of the principal in bad faith. Such scenario constituted a typical situation of “covering the illicit intention with lawful procedures”. This action corresponded to the situation described in article 15 paragraph 2 of the Trademark Law, which should be restricted or confirm as “harmful complicity”. The second-instance court held that Dimai Company and UMC company and the trading relation of product transaction and therefore held that the Dimai Company and UMC Company constituted the contractual, business-related and other relations described by article 15 paragraph 2 of the Trademark Law, correct the wrong judgment of the first-instance court and the Trademark Review and Adjudication Board.

Case # 6 Similarity of major elements of trademarks is not equivalent to similarity of trademarks (Trademark Law article 13)

Representing Beijing Huanxiang Zongheng Internet Technology Co., Ltd’s litigation against the Trademark Review and Adjudication Board “Panda Reads Book and Picture” trademark refusal review administrative dispute

Significance:

This case is a classic case that involves judgment of trademark similarity when the major elements of trademarks are similar. The ruling pointed out that the practical value of trademark is determined by whether or not it can help distinguish the source of product. Trademark owner should not be permitted to simply occupy certain symbols exclusively. The cited trademark cannot prevent other panda related trademarks that have certain particularity from usage or registration, simply because it contains “panda” text or picture on its trademark design. The trademark cannot monopolize the application of panda materials and resources in designing trademarks. Eventually, the applied trademarked was recognized as not similar to the cited trademark.

Trademark Civil Cases

Case #7 Prior usage of trademark does not constitute trademark right infringement

Representing China National Building Materials Group Corporation and Sinoma International Engineering (Beijing) Co., Ltd. in their litigation against Cao Limin trademark right Non-infringement confirmation dispute

Significance:

The case is a classic case that confirms non-infringement on trademark right, as well as the first trademark right non-infringement confirmation case handled by Zhongguancuan Tribunal of Haidian People’s Court. The ruling pointed out that, when the other party priorly uses the same or similar trademark, which has certain influence, on the same or similar products before the trademark owner does, the trademark owner has no right to prohibit the trademark user from continuing using the trademark within the original range of usage. The ruling thus confirmed that China National Building Materials Group Corporation and Sinoma International Engineering (Beijing) Co., Ltd. did not infringe trademark right by using “Johnson” trademark on “auto film and construction film” products.

Case #8: Inappropriate usage of registered trademark constitutes trademark right infringement

Representing Sephora in its litigation against Shanghai Lannuo Cosmetics Co., Ltd. trademark right infringement dispute.

Significance:

This case is a classic case of the confirmation of inappropriate usage of registered trademark as trademark right infringement. Shanghai Minhang District conducted an open trial of this case as a typical legal protection of intellectual property rights. The ruling pointed out that the exclusive usage of registered trademark is restricted to the trademark that is approved for registration and to the products it is designated to be used on. When using the symbol above, the defendant did not use the approved “Lannuo Shifulan” trademark format but separated “Lannuo” and “Shifulan” in their usage. The size of “Shifulan” was notably larger, which implied the intention of highlighting these characters rather than “Lannuo” and that of exploiting the business reputation of trademark of the plaintiff, “Sephora”. This action constituted trademark right infringement.

Case #9 Aggravation of legal compensation in case of the infringer’s repeated preemptive registration

Significance:

The significance of this case was that the repeated bad-faith preemptive registration of the trademark owner’s trademark was taken into consideration of the legal compensation. The ruling pointed out that the “Ba Wang Zui” trademark, after long-term usage of promotion, had obtain high reputation in China. When the defendant should have acknowledged that “Ba Wang Zui” trademark had been approved for the registration and usage of the plaintiff, the defendant applied for the registration of “Ba Zhong Zui”, “China Ba Wang Zui” and “Shengxi Ba Wang Zui” trademarks on the same product. Despite of several refusals from the Trademark Office of the State Administration for Industry and Commerce, the defendant kept on applying and used the Trademark Registration Application Acceptance Notice in promotion of sale of liquor with “Ba Wang Zui” symbol. The subjective fault of infringement was obvious, the infringement occurred for a long period of time, and the behaviors caused great loss in the reputation and market value of “Ba Wang Zui” trademark of the plaintiff. The ruling, therefore, decided that the defendant should compensate the plaintiff with 1 million yuan for the economic loss and reasonable expense.

Case #10: Confirmation of trademark right and confirmation of trademark non-similarity are not equal to non-infringement the actual usage of trademark

Represent Make Up For Ever in its litigation against Guangzhou Wei Mei Xiu Cosmetics Co., Ltd. and Guangzhou Laiqian Cosmetics Co., Ltd. trademark right infringement and unfair competition dispute

Significance:

The significance of this case was that the non-similarity confirmation made by the Trademark Office and the Trademark Review and Adjudication Board in trademark right confirmation case could not be used as the reason for defense in trademark right infringement case. One should compare the involved trademark that is actually used by the defendant to the registered trademark of the plaintiff in order to judge whether or not the usage constitutes trademark right infringement.