Issue involved:
Where a company owns a prior registered trademark in the class covering the allegedly infringing goods—but that mark is unused or defensive—can the company instead rely on a different trademark registered in another class to seek recognition as a well-known mark and obtain cross-class protection?
Comments/Strategies:
1. Focusing the Claim on Class 29 Rather than Class 30:
After a careful review of the facts, trademark registration history, and evidentiary record, our team strategically chose to base the infringement claim on Haipawang’s registered trademark in Class 29, rather than its Class 30 mark. Although the plaintiff held a Class 30 registration covering instant rice and noodles—the same type of goods at issue—that mark had never been used in commerce and was clearly a defensive registration.
Under the PRC Trademark Law, damages cannot typically be awarded for trademarks that have not been used in the three years preceding a civil action. To ensure full-spectrum relief, we argued that the Class 29 mark—actively used and widely promoted in the marketplace—was entitled to recognition as a well-known trademark. That recognition, in turn, would allow for cross-class protection and a full award of damages. This strategy proved essential in securing a favorable judgment.
2. Establishing Well-Known Status Through Strong Evidence:
We assembled a robust evidentiary record tracing Haipawang’s brand development, longstanding market presence, and promotional investment since its entry into the Chinese mainland in 1994. The evidence clearly demonstrated that the mark had achieved significant recognition and commercial influence in China.
3. Visual Advocacy in Court:
To clearly convey the extent and nature of the infringement, and to highlight the defendant’s bad faith, we used visual litigation tools—including charts and presentation decks—to illustrate how the defendant’s conduct overlapped with and diluted the plaintiff’s brand. These materials helped the court see why recognition of the mark as well-known was necessary to fully stop the infringement and deter further violations.
Judgment Summary:
1. Trial Court – Quanzhou Intermediate Court:
The trial court ruled in favor of Haipawang Company, holding that recognition of the Class 29 trademark as well-known was essential to the resolution of the case. Key findings included:
- The allegedly infringing goods fell under Class 30, which was not legally “similar” to the Class 29 goods.
- Because the Class 30 registration had not been used, the Class 29 mark—actively used and recognized—was a proper basis for the claim.
- Well-known mark recognition was necessary to grant cross-class protection.
2. Appellate Court Ruling:
The defendant appealed before the Fujian High Court, arguing that the plaintiff’s Class 30 registration should have precluded the need for a well-known mark determination and cross-class protection.
The appellate court rejected that argument, affirming:
- The plaintiff’s Class 30 mark was a defensive registration and had not been used in commerce;
- The plaintiff was entitled to base its claim on the more active, better-known Class 29 trademark;
- The doctrine of “case-specific necessity” supported well-known mark recognition in this context;
Judicial Commentary
Following the ruling, the presiding judge published an article clarifying the principles guiding well-known mark recognition. Under the PRC Trademark law, such recognition follows a “passive, case-by-case, and necessity-based” approach. The court emphasized that the “necessity” requirement aims to prevent parties from pursuing well-known status merely to enhance their legal position in unrelated disputes.
This case presented a unique scenario: although the plaintiff owned a trademark in the same class as the infringing goods, that mark lacked actual use and reputation. The plaintiff therefore relied on its more prominent trademark in a different class, seeking well-known mark recognition as a means of achieving meaningful relief. The court held that this approach complied with the spirit and purpose of the “necessity-based” standard for well-known trademark determinations under Chinese law.
Court:
Quanzhou Intermediate People’s Court (First Instance)
Fujian High People’s Court (Second Instance)
Final Decision Date:
2024
Case No.:
First Instance:
(2023)闽05民初811号
(2023) Min 05 Min Chu No. 811
Second Instance:
(2024)闽民终343号
(2024) Min Min Zhong No. 343
