Can Contents Generated by Artificial Intelligence be Regarded as Copyright Works? First Infringement Case Decided in China!

The Shenzhen Nanshan District People's Court concluded the first instance of dispute over infringement of copyright and unfair competition between Tencent Technology (Shenzhen) Co., Ltd. (Tencent) and Shanghai Mouying Technology Ltd. (Mouying). The court held that the defendant provided contents and articles to the public on the website “Mou Dai Zhi Jia” operated by the defendant without permission, which infringed the plaintiff’s copyright. The defendant also made them available to the public at a certain time and place, thus infringing the right of information network dissemination enjoyed by the plaintiff, and should bear the corresponding civil liability. Since the defendant has deleted the infringing works, the court in the first instance ordered the defendant to compensate the plaintiff's economic losses and reasonable protection of rights costs at at total of RMB 1,500. The judgment has been effective by now.

ZLWD Commentary：

Since AI has been invented, whether its self-generated content should be protected by the copyright law has been a controversial issue. The Nanshan District court is one of the first to break the limitation of thoughts that “contents generated by AI cannot be protected by the copyright law”. The court not only took an unique perspective to consider the originality of the contents, but also took into account AI’s significant role during the generating process. After comprehensive evaluation and consideration, it was decided that articles generated by the plaintiff’s AI shall fall within the scope for protection under the Copyright Law.

The judgment clearly reflected the evolution of the society and the development of technology. It also explained the Copyright Law from an alternative perspective, and confirmed the nature of the contents generated by AI. It is the first successful case ever to protect the legal interests of the content generated by AI before the law being perfected. This case has great referential value for the similar cases in the future.

Trademark of Alcoholic Beverages Dispute over “王者荣耀（The King of Glory）”, Judgment Still Remains Unknown

On June 19, 2018, Tencent Technology (Shenzhen) Co., Ltd. (Tencent) filed a request to revoke the No.18379954 “The King of Glory” trademark (dispute trademark) registered by Guizhou Wenquchengyu Alcohol Co., Ltd. (Chengyu). However the National Intellectual Property Administration upheld the dispute trademark. Tencent appealed to the Beijing Intellectual Property Court. The case held an online trial on March 17, 2020.

Tencent claims that the King of Glory is a mobile game developed and operated by Tencent since 2015, which has received rather high attention and popularity. Also, the King of Glory actively cooperates with products in terms of beverages, catering and other areas that are closely related to the class of dispute trademark. For example, collaboration meals with McDonald's and collaboration Sprite with Coca-Cola. Those collaborated products are highly coincident with the class of dispute trademark. Furthermore, Chengyu has applied for a series of similar trademarks containing the term "王者荣耀(Wang Zhe Rong Yao)", such as "王者荣光(Wang Zhe Rong Guang)", "荣耀之王(Rong Yao Zhi Wang)", "王者荣耀(Wang Zhe Rong Yao) 1+1", which should be considered as having the intention of registering trademarks in order to seek improper business interests.

The National Administration for Intellectual Property considered that the dispute trademark will be used on products like "cider (containing alcohol)", which are rather different from the products of "electronic publications (downloadable)" submitted by the plaintiff in terms of sales places and service objects, and therefore cannot be recognised as similar trademarks on similar products. The wording of the dispute trademark does not constitute characters “exaggerating and fraudulent” stipulated in the paragraph 7 of the Article 10(1) of the PRC Trademark Law. Also, it cannot apply the Article 44(1) of the PRC Trademark Law, provided that trademarks registered through fraudulent or unfair competition shall be revoked. Moreover, “王者荣耀(Wang Zhe Rong Yao)" are rather common printed Chinese characters and the term itself is unable to independently express the thoughts and feelings of the work, thus the term is not a protected work under the provisions of the PRC Copyright Law. The trademark registered by Chengyu did not infringe the copyright of Tencent. The case is still on trial.

Reference: “King of Glory” has been registered as a liquor trademark, Tencent sued the National Administration for intellectual property 

Chinese Economy Website

"King of glory" was sued by Tencent, a liquor company registered with the state intellectual property office

Guanchazhe Website

ZHANG Heng

Date: March 18, 2020

ZLWD Commentary:

The “King of Glory” is a competitive game developed by Tencent has become a popular term among adults and children after sweeping the country. Tencent started to file trademark applications on a variety of goods and services as early as October 2015, aiming to complete its own IP culture circle. The defendant Chengyu has somehow been neglected. The key issue of the case is whether Tencent has the prior rights to “King of Glory” trademark, meaning that they have used this trademark in similar classes i.e. alcohol and beverages before Chengyu. In addition, whether it can be recognised as a well-known trademark by the court, thus obtaining the cross-class protection. Finally, whether the trademark registration of Chengyu is malicious. Tencent’s legal department rarely loses lawsuit and we shall wait to see the results of this case.

Trying to Take Advantages of the Outbreak? Shenzhen Administration for Market Regulation Bureau: Do Not Even Think About It

"Zhong Nanshan herbal tea" "New Coronavirus Disinfection" "Li Wenliang" "Huoshen Mountain"... During the outbreak, some companies tried to register these well-known names or words as trademarks.

After strict screening by Shenzhen Administration for Market Regulation Bureau,  14 epidemic related trademark registration applications appeared in Shenzhen, including "Huoshen mountain", "Leishen mountain", "New Coronavirus", "Zhong Nanshan" and other registered names, involving 7 applicants applied through 7 trademark agencies. Within 2 days after the screening, the law enforcement officer  had meetings with the relevant applicants, and ordered them to rectify their improper behaviors immediately after explaining to them about the PRC Trademark Law, “Provisions on Regulating Application of Trademark Registration” etc. Meanwhile, the law enforcement officers also had meetings with the trademark agencies, requiring them to strictly abide the laws and regulations, as well as professional ethics. The agencies are also required to avoid immoral trademark applications. As for the trademark applications that already have been applied, it is necessary to rectify them and eliminate the bad social impact.

Shenzhen Administration for Market Regulation Bureau stated that it will further strengthen the screening and supervision of trademark applications that will have negative influence due to the relations with the outbreak. The Bureau also demonstrated that they will strictly and swiftly investigate the abnormal trademark applications in accordance with the law, strengthen the self-discipline of related industries, optimise the business environment and advocate good faith business ethics.

Shenzhen Administration for Market Regulation Bureau cracked down on immoral behaviors of using epidemic related words in trademark registration

Source: Shenzhen Evening News

LI Chao

Date: March 15, 2020

On March 9, given that improper behaviors like agencies illegally register trademarks associated with the epidemic, under the guidance of Wuhan Administration for Market Regulation (Wuhan Intellectual Property Bureau), together with Wuhan Donghu New Tech Development District Intellectual Property Office, Wuhan Intellectual Property Service Association, Wuhan Donghu New Tech Development District Intellectual Property Service Association jointly issued   jointly issued "Propose on Wuhan Intellectual Property Service Industry to Strengthen Self-discipline of Trademark Agencies and to Resist Abnormal Behavior of Trademark Agencies”, firmly opposed and criticised those malicious trademark applications relating to the outbreak. It is suggested that trademark agencies have to be strictly regulated and take responsibility in terms of prevention and control of the outbreak.

The propose requires that all intellectual property service agencies strictly abide by the baseline of moral and professional ethics, as well as regulations and industry discipline requirements. The agencies shall spontaneously resist improper behavior, and jointly maintain the reputation of the industry. First, the agencies should study the relevant documents issued by National Intellectual Property Administration during the epidemic, actively respond to the launch of self-examination of trademark applications, pay close attention to the progress of epidemic prevention and control and take the responsibility for epidemic prevention and control. Second, strengthen internal management and the identification of the malicious registration related to the epidemic, refuse to act as an agent for such applications and do not assist malicious applications, as well as prevent such applications. Third, to actively accept the supervision of the state, society and the parties. If any authorities or practitioners violated laws and regulations, practice discipline or industry norms, there will be serious punishment. The violated individuals will be recorded on credit files and there will be public announcement in accordance with the relevant provisions. Fourth, encourage authorities to actively assist enterprises to resume work and production, give priority to providing high-quality intellectual property services to enterprises associated with the epidemic prevention, and to actively assist enterprises in dealing with prior reviewing matters, provide free intellectual property services such as rights restoration, and strengthen the legal protection of trademarks.

Wuhan issued an initiative to strengthen the self-discipline of trademark agencies in order to resist abnormal behaviors

Source: Official website of National Intellectual Property Administration

Date: March 12, 2020

ZLWD Commentary:

On February 7, the trademark review department of National Intellectual Property Administration issued the "Guidelines on Trademark Review Regarding the Epidemic Prevention and Control”, stipulated the review guidance relating to   relevant personnel name, symbols containing the name of virus or related marks, logos of COVID-19 related drugs and protective products etc. At present, China has implemented control over more than 1,500 trademark registration applications that are likely to have adverse effects related to the epidemic, and inspected the agencies involved. If any case is found at the substantive examination stage, the trademark registration application will be rejected immediately in accordance with the law.

Civil activities shall not violate public order and morals. We are experiencing a severe epidemic period and some unscrupulous companies are trying to register the trendy words as trademarks, which is obviously against ethics. The newly issued guidelines and the timely enforcement by law enforcement authorities has effectively restrained abnormal behavior, maintained the order of the society, and reflected the efficiency of China's judicial and law enforcement system.

A Piece of 29 Seconds Music Lacks Distinctiveness, Luzhou Laojiao’s Sound Trademark Application was Refused

The Beijing Intellectual Property Court recently issued the first instance judgment on a trademark application filed by Luzhou Laojiao Co., Ltd. against the National Intellectual Property Administration. The Court held that the sound cannot be registered as a trademark due to its lack of significance and dismissed the case. Neither of parties appealed. The judgment is now effective.

The Beijing Intellectual Property Court held that:

1. The sound used for application lasts 29 seconds in total. Although the music a female singing in the background is not common in the daily life, given that the sound is quite long, the background music is not distinctive enough that public will recognise it as a trademark even the plaintiff uses it everywhere. The general public will usually identify the sound as a way of advertising rather than symbol for source of goods.

2. The reading part of a man’s voice merely makes people understand the content of text itself, rather than a specific rhythm, melody and sound effects, that closely matched with sound elements of the background music. Hence the male’s voice does not have distinctiveness and also cannot increase the distinctiveness of the female singing part.

3. The evidence that Luzhou Laojiao submitted to the Trademark Review Commission and the Court is insufficient to reflect the full usage of the sound trademark. Also part of evidence did not show the specific content of advertisement and some advertisements’ length is not consistent with the applied sound trademark. Thus the submitted evidence is not enough to prove that after using the said sound the public will regard it as a symbol to identify the source of goods.

Therefore, the Court upheld the conclusion that the sound trademark in the application lacks distinctiveness.

In conclusion, the Beijing Intellectual Property Court dismissed the case and rejected the request made by Luzhou Laojiao.

Luzhou Laojiao’s advertising music cannot be registered as trademark

Source: Pengpai News

Date: March 12, 2020

From: Beijing Intellectual Property Court

ZLWD Commentary:

In 2014, China has included "sound trademark" in the trademark class. However the  sound trademark is relatively hard to be approved. Lack of distinctiveness is one of the main reasons.

QQ‘s alert tone "di di di di di di" was registered as sound trademark in 2018. It is one of the earliest sound trademark. The Beijing People's High Court ruled that QQ has used "di di di di di di" for a rather long time and people can identify service source by hearing the sound. The court also agreed the sound trademark has distinctiveness since all the functions on QQ, such as "information transfer, online BBS, computer supportive information and image transfer, Internet chat rooms, digital file transfer, online greeting card transfer and email", use the aforementioned sound. Therefore, it is suggested that whether a certain sound can be registered as trademark is depend on whether the user can identify the service source by hearing the sound.

KIPO Provides Support Measures for Applicants Affected by the COVID-19

The National Intellectual Property Administration received an announcement from the Korea Intellectual Property Office (KIPO) recently, stating its current relief measures for patent applicants affected by COVID 19. According to the announcement, the measures include a grant of deadline extension for applicants who have failed to comply with the statutory time limits for submitting documents or paying fees to KIPO, for any reasons relating to the COVID-19. Affected applicants will be asked to submit a relief measure request or a statement of payment, together with an explanatory statement and evidential materials.  

The announcement is as follows:

Any applicant applying for a patent in the KIPO, regardless of nationality, who fails to submit the application materials or pay the fee within the prescribed time limit due to the COVID-19 may be entitled to the relief measures provided by the KIPO.

To apply for relief, the applicant shall submit a relief application or a statement of payment, together with an explanatory statement and evidential materials.  

Korean Intellectual Property Office Announced: Specify relief measures for patent applicants affected by the outbreak

Source: Official website of National Intellectual Property Administration

Date: March 13, 2020

ZLWD Commentary:

The protection of intellectual property rights has no borders. The prevention and control of COVID-19 has become a global problem. Countries around the world should also stand together for the protection of intellectual property. KIPO has made a great example with regard to how to deal with the procedure problems of intellectual property protection during the outbreak and other related issues.

The Research and Development of Chinese Patent Medicine is Well Protected by Patent Applications

Scientific prevention of the epidemic is inseparable from the support of technology. With the development and promoting of the Chinese traditional medicine treatment in the prevention and control of the outbreak, the Chinese traditional medicine has had many innovative achievement in terms of treating COVID-19. To file and analysis the patent information of the said innovations can facilitate scientific researchers with screening effective drugs, on the other hand it can also inspire researchers to take patent protection more serious.

Based on this, competent individuals from the National Intellectual Property Administration, using ”The Treatment for COVID-19 (trial version 6) published by the National Health Commission as the main document, analysed patent information regarding to recommended Chinese patent medicine during medical observation period, and recommended basic formula and prescription drugs, as well as Chinese patent medicine during treatment. They also focus on the patent technology route of recommending prescription, Chinese patent medicine and analysis of the key patent information in an attempt to provide useful reference for the research of Chinese traditional medicine.

 National Intellectual Property Administration published “The Patent Information on Chinese Traditional Medicine for Treating COVID-19”

Take advantages of particular professionalism, and worker together to fight against the epidemic

Source: Renmin Website, Official website of National Intellectual Property Administration

Date: March 13, 2020

ZLWD Commentary:

Medicine is unable to progress without science and technology, and the progress of science and technology is tightly connected with the protection of intellectual property rights. There are many effective combined therapies of Chinese and Western medicine occurred during the outbreak. It is indeed necessary to protect intellectual property rights of such therapies. The innovation of pharmaceutical industry has characteristics such as high cost and high risk. In the countries with developed market mechanism, intellectual property is an important mechanism to protect the interests of innovators and plays a crucial role in the pharmaceutical industry. Protection of intellectual property is the key to obtain market returns. It is also an important symbol showing the intellectual property protection is still evolving even during the epidemic period in China.

Beijing Intellectual Property Court has Resumed for 1 month and Received 5 Times More Cases than the Same Period Last Year

On the morning of March 5, Beijing Intellectual Property Court held a press briefing on "off-site" filing case during epidemic prevention and control. The court  introduced the situation regarding filing after 1 month of resumption. According to the court, online filing has increased significantly and the number of filing sent through mail in a month has increased 5 times than the same period last year.

Beijing People's High Court issued the “Notice on Adjusting Filing Methods and Working Pattern during the Epidemic Prevention and Control Period” in January 2020. Beijing Intellectual Property Court has made some adjustments to filing methods and litigation service. During the outbreak, the parties may file a case online through Beijing Courts and Trials Information website or mailing the filing documents.

According to the statistics from Intellectual Property Court, from February 3 to February 28, a total of 1,560 filing mails were received, an increase of 514% over the same period last year; 1,506 filing mails were examined, an increase of 723% over the same period last year and the court accepted 395 cases. Meanwhile, the court 207 online filing cases During the same period, the intellectual property court accepted 207 online filing applications, and accepted170 of them, including 161 trademark administrative cases, 8 patent administrative cases and 1 civil case. The number of online filing applications increased by 15% compared with the same period last year, and the number of online filing accounts for 24% of the total number of first-instance filing in the same period.

Judge LI Hui from the Beijing Intellectual Property Court said that the court will disinfect the mailing materials it receives every day, and then examine them. If the materials are not sufficient, the court will inform the parties or representatives to submit further documents through SMS. If the filing material are sufficient, the court will inform the parties through SMS on how to fill in the confirmation of the address of service on website etc.

Source: Xinjing News

WANG Wei, LI Jie

Date: March 5, 2020

ZLWD Commentary:

Digitalise and webified are the trend of the future judicial system, of which the outbreak has sped up the process. Comparing to civil and commercial litigation, intellectual property litigation requires much higher expertise and is not as common as others, thus the threshold is higher and the participants are much more professional. This is the reason why intellectual property litigation should be the pioneer of the reform in terms of push forward digitalise and webified. The statistics released by the court has also reflected the changes and progress in the field.

Bvlgari Awarded RMB 3 million and Successfully Protected its Rights in a Different Sector

Recently, Guangdong People's High Court (Guangdong High Court) concluded the case between Bvlgari S.P.A. and Hunan Taskin Investment Co., Ltd. (Taskin) and other two defendants for trademark infringement and unfair competition, ordered three defendants to stop using "Bvlgari" in real estate business activities, destroy relevant language signs, logo and marketing materials, publish an apology, and to compensate the plaintiff for economic loss and reasonable costs at a total of RMB 3.1 million.

Bvlgari is an Italian company doing jewelry business. It owns registered trademark “BVLGARI” under Reg. No. 332078, No. 334038 and No. 340247, as well as “BVLGARI宝格丽” under Reg. No. 3811212, all of which are under accessories (jewelry and watches) of Class 14.

Guangdong High Court held that during the first instance, Bvlgari has successively obtained four registered trademarks under commercial property service of Class 36, thus the fact that three defendants have used the name before the trial did not infringe the four registered trademark rights registered during the trial. However, in the first instance, Bvlgari claimed that it is necessary to identify Bvlgari as a well-known trademark, which shall be protected even in a different category, and also claimed that Taskin’s acts constituted infringement by using the name on identical or similar products, hence the court shall identify whether it is well-known and should determine the nature of the alleged infringement and relevant legal liability accordingly. The court held that the "Bvlgari" trademark under Class 14 has been used by the plaintiff for a very long time and had a high popularity and recognition, which shall be considered as well-known. Taksin using identical or similar marks, which highly likely cause public confusion, has infringed Bvlgari’s right to exclusively use the registered trademark and constitutes unfair competition.  In addition, the court took into account two factors to decide the amount of damages. First, the goodwill of the trademark involved, the nature of the infringement, the subjective malicious intention of the infringer, and the reasonable expenses of the trademark holder have been considered which greatly increased the amount of damages. Second, in the case of cross-class protection, the profit contribution by using the well-known trademarks in the sales of property, the degree of using the trademark and the connection between the classes etc. The huge amount of damages cannot be awarded merely because it is a well-known trademark or the profit for selling properties is high. Accordingly, the court decided to award Bvlgari RMB 3 million.

Bvlgari wins trademark dispute in China

Source: China Intellectual Property News

Date: March 4, 2020

ZLWD Commentary:

A well-known trademark is a trademark with high value. Facing the increasingly competitive market and higher professional requirements from the market, the market share of companies with well-known trademarks have obvious advantages, and the trademark is an important asset to them. Due to the huge commercial value of the well-known trademarks, the law will generally provide special protection for them, such as providing cross-class protection. Article 13 (3) of the PRC Trademark Law stipulates the cross-class protection for a registered well-known trademark that where a trademark for registration to be used on different or dissimilar goods is a copy, imitation, or translation of a well-known trademark of another party which has been registered in China, misleads the public, and may cause damage to the interests of the registrant of the well-known trademark, it shall not be registered and shall be prohibited from use.

Hytera was Found Guilty of Infringement in the US and May Pay USD 765 million for Damages

Since the Spring Festival of 2020, the outbreak of COVID-19 has put a pause on the trade war between China and the USA. However, business is as fierce as war and there is no pause button for the competition between Chinese and the USA enterprises. A 3-year long litigation has been given final judgment recently. On March 9, Hytera announced that the the lawsuit with Motorola Solutions was concluded and a jury in the Northern District of Illinois found that Hytera engaged in illegal trade secret theft and copyright infringement, validating Motorola Solutions USD 346m in compensatory damages and USD 419 million in punitive damages, for a total of USD 760 million (about RMB 5.3 billion). Hytera is disappointed by this court’s verdict, and respectfully disagrees with the jury.

Hytera was fined RMB 5.3 billion for double agent case, the company’s net profit was less than RMB 2 billion in the previous 8 years

Source: Sina Finance and Economy

CHEN Lixiang, ZHANG Qian Yao

Date: March 17, 2020

ZLWD Commentary:

The RMB 5.3 billion compensation could be a huge burden for Hytera. From 2011 to 2018, Hytera’ total net profit was less than RMB 2 billion, and its  profitability is extremely unstable. The net profit has fallen dramatically in 2012, 2014 and 2017. Due to the ruling of the case Hytera slashed its 2019 revenue forecast, from the expected profit of more than RMB 480 million to expected loss of RMB 4.8 billion. Given that Hytera has admitted the infringement act, this dispute has the following two main issues: first, whether Hytera has done has infringed intentionally, if so, what is the seriousness of the infringement and second, whether the amount of damages is reasonable and how did it calculated from. Motorola Solutions was awarded USD 346m in compensatory damages, which is lower than the USD 419 million in punitive damages. Generally, compensatory damages in intellectual property is a type of psychiatric compensation, thus it is common that punitive damages is higher than compensatory compensation in intellectual dispute. The patentee can have some comfort from the awarded damages and the infringed party can be punished as well, in order to prevent the infringement in the future. The compensation standard of legal practice in China is different from international  standards, in the light of differences in terms of thinking mode and evaluation method. There are other disputes between Hytera and Motorola Solution other than the intellectual property dispute, thus there may not be a settlement between the parties and it is highly likely that Hytera will appeal again.

EDPB Publishes Final Version of Guidelines on Territorial Scope of the GDPR

At the end of 2019, the EDPB adopted a final version of Guidelines on the Territorial Scope of the GDPR. The major amendments to the previous drafts are as follows:

1. The key to identify whether “data control” and “data process” is covered by the GDPR should be defining the place in which the controlling or processing is carried out, rather than the location of controller and processor.

2. If the data controller based outside the EEA while the date processor located within the EEA, and there exists certain relations between them, they will be subject to the GDPR.

3. Controlling or processing the data of Non-EU individuals traveling in the EU inadvertently and incidentally will not trigger the application of the GDPR.

4. Responsibility of EU representative appointed by non-EU controller and processor.

The duties of the GDPR representative and the data protection officer (DPO) shall not overlap. The representative represents the interest of data controller or processor, while the DPO shall exercise its functions and powers independently.

ZLWD Commentary：

The EDPB released final version of Guidelines on the Territorial Scope of the GDPR following a year of public consultation. The Guidelines clarifies the "place of action" as the criterion for determining whether controlling and processing are covered by the GDPR, as well as emphasises the connection between the information controller and processor. Although the Guidelines provided that controlling or processing the data of travelers inadvertently or incidentally will not trigger the application of the GDPR, the definition of "traveler", "inadvertent" and “incidental" will definitely be addressed as arguable concepts in the future. The Guidelines is of great significance to Chinese enterprises, especially to those internet enterprises.

UK Government Responds the Public Consultation on Online Harms White Paper

The UK’s “Online Harms White Paper” has been remaining its controversy since it was published in April 2019. It has received a lot of attention and opposition after a 12-week public consultation period. Medias and citizens in the UK even showed their objections to the White Paper by using the headline "White Paper, Shortcut to Internet Censorship". The UK government released its latest official response to the public consultation, which mainly focused on: 1. Strict limitations imposed on the definition of harmful information; 2. The boundary of "duty of care" for online platforms and information providers; 3. User privacy protection; 4. Regulatory and supervision powers of OFCOM, etc.

ZLWD Commentary：

How to regulate and control harmful information on the internet has always been a hot topic among internet practitioners. The topic is often involved boundary issues such as government power, user privacy and freedom of speech. The UK government's attitude and respond towards the Online Harms White Paper has reflected the latest understandings of western governments on this very issue, which  could be a valuable reference to Chinese multinational enterprises.

Featured Case

In 2017, Nestlé China Ltd. filed a lawsuit with the Chaoyang District People’s Court of Beijing, claiming that the non-dairy creamer called "咖啡伴旅(Coffee Travel Mate)" sold by Hogood Coffee Ltd. infringed its right to exclusively use the registered trademark "咖啡伴侣(Coffee-Mate)". ZHEN Qinggui attorney’s team from Zhonglun W&D represented Hogood Coffee in the case for the first the second instance, which both courts held that Hogood's use of “Coffee Travel Mate” did not violate Nestlé's exclusive trademark rights over "咖啡伴侣(Coffee-Mate)".

Nestlé refused to accept the judgment of the first instance and appealed to the Beijing Intellectual Property Court. The court of the second instance concluded according to  the defense opinions and evidence provided by Zhen’s team, that the word "咖啡伴侣(Coffee-Mate)" has been extensively used as the name for non-diary powder for so long that Hogood using “咖啡伴旅(Coffee Travel Mate”) is not sufficient to cause public confusions, and therefore it was not a trademark infringement. The court of the second instance issued a final judgment in the beginning of 2020 and Nestlé appeal was dismissed.

Beijing Intellectual Property Court ruled that “Coffee Travel Mate” is not a trademark infringement to “Coffee-Mate”

Source: Zhonglun W&D Law Firm

Date: March 2, 2020

Case Comment:

The duration for the first and the second instance was three years. After detailed analysis, it is suggested by ZHEN Qinggui attorney’s team that the term "Coffee-Mate" is a functional description of non-diary powder, since Nestlé's use of "Coffee-Mate" is merely using it as a general name for non-diary products, there is no trademark distinctiveness. Zhen’s team gathered evidence on this very point and the court  adopted their opinions, confirming that: "咖啡伴旅（Coffee Travel Mate）" is not a similar trademark to "咖啡伴侣（Coffee-Mate）", and using "咖啡伴旅(Coffee Travel Mate)” in Hogood’s marketing and sales cannot be regarded as trademark infringement. The clients’ legal interests have been upheld.

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