By Ms Haoyu Feng and Mr Tingxi Huo of Chofn IP and the MARQUES China Team
The latest update from the MARQUES China Team looks at three guiding cases recently published by CNIPA.
On 15 December 2020, the China National Intellectual Property Administration (CNIPA) released the guiding administrative cases on IP enforcement, aiming to provide guidance to the Administrations for Market Regulation (AMR) across mainland China to regulate the administrative enforcement.
This is the first time that the CNIPA has released guiding cases, including three trade mark cases, an invention case and a case relating to integrated circuit layout design. The three trade mark cases are summarized below for your information.
Case 1: Infringing use of trade mark in online advertisement of keyword search
Dun & Bradstreet owns the trade marks DUNS in English and Chinese, registered in China. Shanghai Zuangyuan, without extended authorization after expiration of the licence, continued to advertise its services through the search engine Baidu with the keywords, confusingly indicating its connection with the trade mark owner.
The local AMR ordered the infringer to stop infringement and imposed a fine. Through this case, the CNIPA confirms that use of keywords on search engines may constitute trade mark use, and accordingly, trade mark infringement.
Case 2: Wilful infringement proved by associated shareholders and filing history
When inspecting the market on 9 January 2018, the AMR officers of Beijing noted that the dealer HongYuanLiDe was selling sports shoes infringing ASICS’s registered trade marks.
Investigation revealed that the dealer was associated with its supplier Quanzhou AiShiKeShi as they held each other’s shares. The supplier had applied for similar trade marks which had been rejected.
The association and unsuccessful filing history prove the corresponding prior knowledge and wilful infringement.
The AMR ordered the dealer to stop infringement, confiscated the infringing shoes on stock, and imposed a fine of more than CNY55 million (€7 million), a record high.
Case 3: Contractor’s purchase and use of trade mark infringing goods constitutes trade mark infringing sale
In June 2019, the Hubei AMR found out that a contractor had been using legitimate goods, but later purchased from a suspicious salesperson some goods infringing a registered trade mark.
The AMR decided that the contractor’s purchase and preparation to use should be regarded as sales of infringing goods and constitute trade mark infringement. The contractor was fined and the infringing goods were confiscated and destroyed.
General comments: The three trade mark-related guiding cases have explicitly categorized the three types of trade mark use above as infringement and will help he AMRs nationwide to punish similar infringement more consistently and efficiently.
