1. The "Pigeon in Chinese" mark was recognized as a well-known mark on goods of pacifiers and baby bottles
The Beijing High Court recently concluded a final judgment on an administrative trademark invalidation dispute over the "Pigeon in Chinese" mark with reg. no. 16530290 ("Disputed Mark"). The court recognized that the "Pigeon in Chinese" mark with reg. no. 1161193 ("Cited Mark") owned by Pigeon Corporation as a well-known mark when used on pacifiers, baby bottles, and other related goods, and invalidated the Disputed Mark citing Article 13(3) of the China Trademark Law (well-known mark recognition).
The court found that according to the trademark licensing agreement, advertising and media reports submitted by Pigeon Corporation, such as evidence of participation in exhibitions, the sales revenue, special audit advertising package, and the social welfare activities participated, and honors received, can be used to determine that before the application date of the Disputed Mark, Pigeon Corporation had been selling products in China for a long time. At the same time, Pigeon Corporation had also carried out continuous and extensive publicity of the products marked with the Cited Mark nationwide through various forms. In sum, the evidence submitted by Pigeon Corporation can prove that the Cited Mark constituted a well-known mark on the goods of "pacifiers and baby bottles" through its continuous use and extensive publicity before the application date of the Disputed Mark.
The Disputed Mark constituted a copy of the Cited Mark. The Disputed Mark was approved for use in Class 17 for "liquid rubber, synthetic rubber" and other goods that are the raw materials for the production of pacifier and baby bottle related goods. Thus, the goods under the Disputed Mark were closely related to pacifiers and baby bottles that Pigeon Corporation's well-known mark was known for. Considering that the Cited Mark enjoys relatively high fame, the owner of the Disputed Mark should have known it because they situated in the same industry, however, it did not attempt to avoid but registered multiplate marks that were identical to the Cited Mark, which cannot be deemed to have subjective good faith. Under the circumstances that the Cited Mark has been recognized as a well-known mark and that the Disputed Mark is a copy of it, the relevant public would likely to associate the two entities upon seeing the Disputed Mark being used on liquid rubber or synthetic rubber goods, which would dilute the distinctiveness of the Cited Mark and also damage the interests of Pigeon Corporation.
2. The "KISSES" and "Hershey in Chinese" marks recognized as well-known marks, and the infringer ordered to pay RMB 3 million in damages
Recently, the Shandong High Court concluded a trademark infringement and unfair competition lawsuit between the Hershey Company ("Hershey", the plaintiff), Royal Xipu (Fujian) Culture Communication Co., Ltd. ("Royal Xipu"), Fuzhou Heerxi Food Co., Ltd., (Heerxi), Anhui Diye Food Technology Co., Ltd. ("Diye"), and Qingdao Youtong Chain Commercial Co., Ltd. ("Youtong") (hereinafter referred to as "the defendants"). The court affirmed the lower court's decision in finding that Hershey's "KISSES" mark with reg. no. 159261 and "Hershey" with reg. no. 1239102 constituted well-known marks on chocolate and candy goods. The defendants' acts constituted trademark infringement and were ordered to compensate Hershey for economic losses of RMB 3 million (USD411,263).
The court found that: First, according to the evidence provided by Hershey, it was sufficient to prove that prior to Royal Xipu's trademark applications for the "KISSES" mark and the "Hershey's Kiss in Chinese" mark in August 2013, Hershey's "KISSES" mark with reg. no. 159261 and "Hershey" mark with reg. no. 1239102 have been used continuously for more than ten years, and after vigorous promotion by Hershey and its affiliated companies, the Cited Marks have gained high fame and influence on chocolate and candy goods and were widely known by the public. Therefore, they should be recognized as well-known marks on chocolate and candy goods.
Second, as an operator in the same industry as Hershey, Royal Xipu should have known the popularity of Hershey's marks and should follow the principle of good faith when applying for trademark registrations by avoiding filing identical or similar marks with others. However, Roay Xipu's filings shown obvious intention in copying and imitating Hershey's marks, taking advantage of Hershey's well-established fame and reputation in order to obtain unjustified gains. Although by the time Hershey initiated the invalidation, the five-year time limit of Royal Xipu's registered marks had passed, given Royal Xipu registered its marks in bad faith, Hershey was not subject to the five-year time limit.
Third, the allegedly infringing "KISSES" logo constituted an identical mark with Hershey's "KISSES" mark with reg. no. 159261. The "Hershey's Kiss in Chinese" mark completely included Hershey's "Hershey" mark, and it did not form other significant meanings. Considering that Hershey's marks already enjoyed relatively high fame and constituted well-known marks, Royal Xipu and Heerxi's uses were likely to cause confusion among the relevant public to believe that these entities were associated with Hershey, which would damage Hershey's interests and infringed Hershey's well-known mark rights.
3. Xiaomi awarded RMB 37 million in compensation against the "Xiaomi Pai in Chinese" mark
Recently, the Shenzhen Intermediate Court concluded a trademark infringement and unfair competition lawsuit between Xiaomi Technology Co., Ltd. ("Xiaomi") and Shenzhen Leerfu Trading Co., Ltd. ("Leerfu"). The court ruled in favor of Xiaomi and ordered Leerfu to pay Xiaomi RMB 37 million (USD 5.08 million) for economic losses.
The court, in comparing the words "Xiaomi Pai" with the Cited Mark, found that both include "Xiaomi", and the main difference is the addition word of "Pai." The alleged infringing product in this case was a tablet, and the pronunciation of the Chinese character of "pai" is similar to the English "Pad." Under these circumstances, general consumers would believe that "Xiaomi Pai" has the meaning of a tablet produced by Xiaomi. Combining with Lererfu's slogans such as "authentic product on the official website" in the title of the accused infringing products, and the defendant's own admission that use of "Xiaomi Pai" would increase product sales before the Shenzhen Market Supervision Administration, it can be determined that Leerfu intended to mislead the relevant public into believing that its tablet came from Xiaomi. Its use of "Xiaomi Pai" in its online store had actually caused confusion.
Regarding the punitive damages, the court held that the application of punitive damages is based on whether the subjective intention of Leerfu when infringing Xiaomi's Cited Mark constituted serious circumstances. In this case, (1) Xiaomi's Cited Mark enjoyed high reputation. As an operator in the same industry, it was impossible for Leerfu to be unaware that Xiaomi has the rights to the Cited Mark. Combining with the defendant's self-admission that the use of "Xiaomi Pai" can help in sales of its tablet, Leerfu's use of the "Xiaomi Pai" mark can be deemed to have taken advantage of the goodwill of Xiaomi's Cited Mark. The above factors were sufficient to determine that Leerfu has the intention to infringe. (2) With regard to the determination of the seriousness of the circumstances, in this case, first, the amount of profit made by Leerfu was RMB8.13 million (USD1.12 million), which can be deemed as a huge profit from the infringement. Second, Leerfu had sold the alleged infringing products between August 2020 and August 2021 through an online marketplace. The geographic area of its infringement was broad, the infringement duration was long. What's more, Leerfu's online marketplace was previously complained by Xiaomi but Leerfu continued its infringing acts. Last, Leerfu carried out identical infringing acts with another defendant in another case, they had jointly infringed Xiaomi's trademark right. Their infringement scale was large and relied its living on such infringement. Considering the above, Leerfu's infringing acts constituted serious circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
PIGEON CORPORATION 
