On 12 June 2023 the Beijing High Court rendered a decision finding that a trademark squatter that had not entered into business relations with the brand owner should be deemed as having “other relations” with the latter, as prescribed by Article 15(2) of the 2013 China Trademark Law. This clause was added to the law in 2013 to address cases of bad faith where a trademark applicant, even though it is not the agent or representative of the owner of an unregistered trademark, had "contractual, business or other relations" with it, so that it would “definitively know of the existence of this trademark”.

Over the past two years, China has been reforming and optimising its judicial and administrative systems for trademarks. As part of these reforms, the first draft of an amendment to the Chinese Trademark Law, proposed by the China National Intellectual Property Administration (CNIPA), was unveiled at the beginning of 2023. These significant developments were driven by some landmark cases.

Plaintiff Johnson Electric, which was incorporated in Hong Kong on 25 April 1960, manufactures electric motors in mainland China via half a dozen affiliated companies, with the first one having been created in 1992. These affiliates use ‘Johnson’ as their English trade name and the Chinese characters ‘德昌’ as their Chinese trade name.

TOMMY HILFIGER v TOMMY CROWN: ‘transformative use’ of registered trademark found to be infringing

In a recently surfaced administrative decision, the Beijing Intellectual Property Court has sided with the applicant for a defensive trademark, finding no foul play in the applicant’s conduct. Rendered on 26 December 2022, the decision considered whether the defensive trademark registration constituted a bad-faith application for a trademark that was not intended for use, which is banned by Article 4 of the 2019 China Trademark Law.

On January 13, 2023, the China National Intellectual Property Administration (CNIPA) published on its official website the draft fifth amendment to the Trademark Law (with a call for public comments) and some explanatory notes.

Based in Switzerland, LVMH Swiss Manufactures SA (‘LVMH Swiss’) is a wholly owned subsidiary of the LVMH Group, offering luxury watches reflecting Swiss watchmaking excellence. TAG Heuer is a watchmaking pioneer and one of the eight brands under LVMH’s Houses in the watches and jewellery sector.

Hermès is a prestigious French fashion house. Since 1837, it has remained faithful to its artisanal model and humanist values. The Hermès brand and the iconic commercial designs associated with Hermès enjoy a high reputation around the world.

The Bureau National Interprofessionnel du Cognac (BNIC) is a coordination and decision-making body for the Cognac industry, comprising an equal number of winegrowers and merchants. The primary mission of the BNIC is to represent, foster and protect the geographical indication (GI) ‘Cognac’ in France and abroad. The BNIC owns registrations for the GI collective trademarks COGNAC and 干邑 (‘Cognac’ in Chinese characters) in Class 33 in China.

In the Emerson case in April relating to the reimbursement of expenses in trademark administrative actions, the Fujian High People’s Court has confirmed the liability of the agency, Xin Jun Intellectual Property Co., Ltd. (Xing Jun), which accounted for 47 of the 48 contested trademarks.

In the beginning of the year 2018, the China Trademark Office launched a vast consultation for the fourth revision of the Trademark Law, offering three full months to all parties concerned, both nationals and foreign, for submitting suggestions.

According to article 45 of the Chinese Trademark Law, a trademark owner who discovers the existence of a trademark registered subsequently to his own and considers that it is identical or similar and covers identical or similar goods, may request the TRAD (Trademark Revision and Adjudication Department) to invalidate the trademark. However, it is not possible to request the prohibition of its use.