China's State Administration for Market Regulation Releases Typical Cases of Intellectual Property Enforcement for 2021-Part 1

Please be noted that this article is the first part of the report, the second part could be seen here.

On April 21, 2022, the State Administration for Market Regulation (SAMR) released the Typical Cases of Intellectual Property Enforcement by Market Supervision Departments (市场监管部门知识产权执法典型案件). The 20 cases involved trademark infringement, patent counterfeiting, Olympic logos, malicious trademark registration and the unauthorized practice of patent law, etc. Of foreign companies involved, one Chinese company was fined 10.55 million RMB for infringement of John Deere's trademark and another was fine 1.05 million RMB for infringement of Costco's Kirkland trademark.

1. The Market Supervision Bureau of Xinchang County, Zhejiang Province investigated and dealt with the case of Zhejiang Zhongye Agricultural Machinery Equipment Co., Ltd. infringing the exclusive right of registered trademark

Xinchang County Market Supervision Bureau received a report from John Deere (China) Investment Co., Ltd., claiming that the agricultural tractors produced and sold by Zhejiang Zhongye Agricultural Machinery Equipment Co., Ltd. infringed on its exclusive right to use a registered trademark. Xinchang County Market Supervision Bureau and Shaoxing City Market Supervision Bureau established a project group to investigate.

After investigation, since June 2018, the infringers have entrusted a company to make and use the deer graphic logo  on agricultural tractors . Compared with the graphic trademark with registration number G910051 held by the complainant, the logo pattern is similar in composition, design style and overall shape, and is a similar trademark. As of the investigation, the infringers produced and sold a total of 87 tractors, with 1 in stock, with a total illegal business revenue of 3.7024 million RMB and an illegal income of 46,000 RMB. The behavior of the parties violated Article 57 of the Trademark Law. On June 29, 2021, the Xinchang County Market Supervision Bureau imposed an administrative penalty in accordance with the law, ordering the parties to immediately stop the infringement, confiscate one infringing tractor, confiscate 46,000 RMB of illegal income, and impose a fine of 10.55 million RMB.

Without the permission of the trademark registrant, using a trademark similar to its registered trademark on the same kind of goods, or using a trademark that is the same or similar to its registered trademark on similar goods, will easily lead to confusion, not only infringe the exclusive right to use the registered trademark, but also mislead consumers or disrupt the market order of fair competition. The investigation and punishment of this case has effectively deterred infringement and illegal acts, and safeguarded the legitimate rights and interests of rights holders.

2. The Suining County Market Supervision Bureau of Jiangsu Province investigated and dealt with the case of Youshang Import and Export Trading (Suining) Co., Ltd. infringing the exclusive right of registered trademark

The Suining County Market Supervision Bureau received a report from the American Costco Wholesale Company and launched an investigation into the suspected infringement of the exclusive right of registered trademark by Youshang Import and Export Trading (Suining) Co., Ltd.

After investigation, from April 2019 to February 2021, the outer packaging of the nut products sold by the infringer through Taobao was marked with a logo , and "TM" mark was marked in the lower right corner, which was similar to the registered trademark of the complainant , and the involved business revenue was 2.1115 million RMB. Without the permission of the trademark registrant, the party concerned used a trademark similar to its registered trademark on the same commodity, which violated Article 57 of the Trademark Law. After the incident, the parties actively cooperated with the investigation, truthfully stated the illegal facts, provided evidence materials, and actively negotiated with the complainant to actively reduce the harmful consequences of the illegal behavior. On December 14, 2021, the Suining County Market Supervision Bureau issued an administrative penalty in accordance with the law, ordering the parties to immediately stop the infringement, confiscate the infringing goods, and impose a fine of 1.05 million RMB.

In this case, most of the labels of the prepackaged food sold by the parties on the online store are marked in foreign languages, and the trademark used is similar to the registered trademark of Costco Wholesale Co., Ltd., which is easy to cause confusion for consumers when purchasing. During the investigation, the party claimed that the outer packaging design of the nut products it sold had obtained the design patent right, but the patent right was obtained after the time when the complainant's trademark was registered. Violations shall be investigated and punished according to law.

3. The Anshan Municipal Market Supervision Bureau of Liaoning Province investigated and punished the case of infringement of the exclusive right of registered trademark by Xiaozhang Communication Accessories Firm in Tiedong District

According to the clues transferred by the public security organs, the Anshan Municipal Market Supervision Bureau conducted an investigation on the suspected sale of counterfeit goods by Xiaozhang Communication Accessories Firm in Tiedong District.

Law enforcement officers seized 60 mobile phone batteries, 293 mobile phone assemblies, 772 touch screens, and 850 back covers of different brands sold by the parties using "HUAWEI""honor""" "Vivo", "OPPO", "MI" and other registered trademarks. The parties admitted that the purchase price of the accessories involved was lower than the market price of genuine products, the total value of the goods was 65,388 RMB, and the illegal income was found to be 410 RMB. The behavior of the parties violated Article 57 of the Trademark Law. On March 16, 2022, the Anshan Municipal Market Supervision Bureau imposed administrative penalties in accordance with the law, confiscated infringing goods and illegal gains, and imposed a fine of 263,192 RMB.

Mobile phone accessories are commodities that are frequently subject to trademark infringement. Due to the limited of ordinary consumers to detect fakes, illegal operators deceive consumers to accept their goods or services, which not only infringes the legitimate rights and interests of the trademark owner, but also increases the security risks in the use of mobile phones.  The investigation and punishment of this case have severely cracked down on infringements and violations, and safeguarded the interests of rights holders and consumers.

4. Jiangxi Anyuan County Market Supervision Bureau investigated and punished the case of Jiangxi Yuhui Industrial Co., Ltd. infringing the exclusive right of registered trademark

Anyuan County Market Supervision Bureau received a report from AkzoNobel (Shangha) Co., Ltd., claiming that Jiangxi Yuhui Industrial Co., Ltd. used "ICI Professional"  exterior wall paint in the "Scholarly Park·Yuefu" community in Anyuan County infringing its exclusive rights to their registered trademarks  and the Bureau immediately went to the site to conduct investigations.

Law enforcement officers found 324 barrels of  paint with the words "ICI Professional" printed on the them, which were identified as counterfeit products. After investigation, the parties were responsible for the construction of the exterior walls of the residences in the "Scholarly Park·Yuefu" residential area in Anyuan County. In order to reduce the construction cost, the party purchased 380 barrels of  paint with the words "ICI Professional" at the price of 105 yuan per barrel. The party did not check the relevant certification documents of the product. As of the incident, the parties have used 56 barrels, which are deemed to have been sold. According to the agreed contract price of 120 RMB/barrel, the value of the goods involved is 45,600 RMB. The behavior of the parties violated Article 57 of the Trademark Law. On May 27, 2021, the Anyuan County Market Supervision Bureau issued an administrative penalty in accordance with the law, ordering the parties to immediately stop the infringement, confiscating 324 barrels of infringing goods and fined 50,000 RMB.

In this case, in order to reduce costs, the parties used goods infringing the exclusive right to use a registered trademark in the construction activities of contracting labor and materials, which constituted an illegal act of selling goods infringing the exclusive right to use a registered trademark. The investigation and handling of this case effectively cracked down on the illegal acts of trademark infringement in processing and contracted business activities, and safeguarded the legitimate rights and interests of the trademark owner.

5. The Nanning Municipal Market Supervision Bureau of Guangxi Zhuang Autonomous Region investigated and punished the case of infringing the exclusive right of registered trademark by Nama Gas Station of Nanning Zhongwei Petrochemical Co., Ltd.

After receiving a report from Sinopec Sales that Nanning Zhongwei Petrochemical Co., Ltd.'s Nama gas station had infringed upon its right to the exclusive use of a registered trademark, the Nanning Market Regulatory Bureau immediately conducted an investigation.

Source: natlawreview.com-Aaron Wininger, Schwegman Lundberg Woessner IP Law Firm

Editor: IPR Daily-selly