Authored by He Wei

Werfen, a spanish company active in the in vitro diagnostics (IVD) sector, produces and sells chemical or biochemical products (reagents) used for performing, outside the body, various types of medical analysis on samples (like blood, urine, or tissues), to guide diagnosis and clinical decisions. Since 2003, Werfen has built its presence in China through affiliated entities, distributor networks, professional promotion and participation in medical conferences and exhibitions.

The defendant, Haining Werfen / HAININGWERFEN AUTOMATION EQUIPMENT CO. LTD established in 2015, is a manufacturer of automation equipment - machines or robotic systems - using reagents to perform IVD tests. The defendant applies the mark WERFEN on its machinery, including blood glucose strips, pH strips, rapid test strips and urine test strips. Haining Werfen also appears at the same IVD-related trade fairs attended by Werfen.

What made the dispute complex was that the defendant is an upstream supplier, rather than a direct competitor selling the same finished medical products. Besides, it also owned its own Class 7 registered marks, such as “” and “”for the relevant machinery, which gave it a potentially strong defense.

Furthermore, Werfen did not obtain the trademark registration in Class 5 until 2022, which is later than the above infringing activities. So, Werfen had to rely on its trade name right. However, unlike consumer-facing brands, medical companies do not usually build market recognition through mass advertising campaigns, making it difficult for Werfen to justify the required reputation for the trade name protection.

First-instance judgment and appellate reversal

The Jiaxing Intermediate People’s Court dismissed all of Werfen’s claims in December 2024. It held that Werfen’s Class 5 diagnostic reagents and the defendant’s Class 7 machines were not similar goods, and also found that the accused signs were not sufficiently similar to Werfen’s rights. It further rejected the unfair competition claims relating to the English trade name and the domain name, largely because it considered the evidence on influence in China insufficient.

On appeal, the Zhejiang High People’s Court took a much more practical view.

First, it looked beyond the formal class difference and focused on market reality. Although the defendant’s products were machines, they were specifically promoted for use in the IVD field and could be used in the production and processing of Werfen’s diagnostic reagent products. That was enough for the court to find sufficient overlap in function, purpose, sales channels and customer groups.

Second, the High Court rejected the defendant’s reliance on its own registered mark. It held that the defendant had not used that mark in the approved form, but had instead split and altered its elements in actual commercial use. As a result, the registration did not shield it from infringement liability.

Third, the appellate court accepted a broader and more industry-specific body of evidence to establish Werfen’s influence in China. Rather than relying only on traditional advertising materials, Werfen supported its case with evidence such as distributor arrangements, sales records, professional journal advertising, hospital use, and participation in conferences and exhibitions. On that basis, the court found that "WERFEN” had acquired substantial recognition in China’s medical, and especially IVD, field.

The court therefore recognized protection for Werfen’s English trade name in China and held that the defendant’s use of such name in its business identifiers constituted unfair competition. It reached the same conclusion for the domain name chinawerfen.com.

The significance of the case

This case shows that a brand owners can rely on trade name right against an upstream supplier where the products are closely connected within the same industry chain.

Second, the case is particularly useful for medical and life sciences companies. It shows that reputation and influence in China can be proved through a broader mix of industry-facing evidence, such as hospital procurement, distributor networks, trade journals, conference participation and sustained sales, rather than only through mass-market advertising. A more tailored evidentiary showing of market recognition would be key for the enforcement of such kind.

Finally, the judgment confirms that a defendant’s own registration is not necessarily a safe harbor. If the actual use falls outside the approved registered form, that registration may offer little defense.