Whether the use of a trademark in the title of a product sold online constitutes trademark infringement typically depends on whether such use is fair. When products are sold online, determining what constitutes fair use can be tricky. Two cases involving famous mobile phone manufacturers Xiaomi and Oppo illustrate this problem.
In November 2019 the China National Intellectual Property Administration (CNIPA) stated that when a trademark embossed on a bottle cannot be removed, recyclers should ensure that they cover said trademark with another label to avoid the likelihood of confusion. The CNIPA added that affixing another label bearing another trademark on a bottle, leaving the original embossed trademark visible, is insufficient to avoid confusion.
A recent Supreme People's Court (SPC) decision clarified the requirements to cite the prior use defence under Article 59.3 of the Trademark Law. In this regard, the court stated that the only person eligible to cite this defence is the prior user themselves and that such use must have occurred prior to the registration application and the trademark owner's use of the registered trademark. Further, for the first time, the SPC made it clear that geographical scope is a key element in defining the original scope of use.
An online vendor selling genuine Avène products while claiming that its platform was the official Avène website was recently found to have committed an act of unfair competition. The court held that although the website had offered genuine products, its prominent use of the plaintiff's registered trademarks and its self-identification as Avène's official website would likely lead the public to believe that its website was operated or licensed by the plaintiff, thus giving it unfair competition advantages.
The Supreme People's Court recently ruled in Michelin that reputation is a factor when evaluating trademark similarities and the likelihood of confusion. In its bold decision to raise Michelin's compensation to Rmb500,000 – the maximum amount allowed under the Trademark Law – the court considered the high reputation of the infringed trademarks, in addition to the elements of the combination marks and the infringers' bad faith.
An intermediate people's court has found that selling genuine products with modified technical information amounts to an act of infringement. Although the Michelin tyres sold by the defendant were genuine, the act of resale constituted infringement because information including load index, size and place of manufacture was modified without the trademark owner's consent.
The State Council recently released the newly revised Regulations on Customs Protection of Intellectual Property Rights. The new regulations made five revisions, most of which are favourable for IP owners. However, they underline the importance of ensuring that changes of information relating to IP rights and their owners are recorded within the required time.