Recently, Lawyer Yang Wenfeng, a partner at Longan Guangzhou and a senior researcher at the Longan Bay Intellectual Property Research Center, and Lawyer Dong Yun, a researcher at the Longan Bay Intellectual Property Research Center, successfully obtained a judgment in a case involving the China Construction Bank Co., Ltd. Dongguan Branch v. Dongguan XX Electronic Co., Ltd. and Yao et al. regarding the infringement of trademark rights by “
”. The Dongguan Intermediate People’s Court recognized the logo of China Construction Bank, “
”, as a well-known trademark under Class 36, including savings banks and financial services. The defendants, Dongguan XX Electronic Co., Ltd. and others, were found to have committed trademark infringement. The court ordered the defendants to immediately stop the infringement and pay 600,000 yuan to China Construction Bank. The defendants also had to bear all the costs of the case.
This is the first time in China that a bank’s logo trademark has been recognized as a well-known trademark through judicial procedures. This judgment has now taken effect and has been fully executed.
Basic Facts
China Construction Bank Co., Ltd. is a large commercial bank in China. The registered trademark No. 1049653, “”, was applied for registration by China Construction Bank on January 25, 1996, and was announced for registration on July 7, 1997. The services covered by this trademark include savings banks and financial services under Class 36. This trademark is the bank’s logo, and there are regulations regarding its use, as well as a visual identity manual. It has been in use since 1996.
The first defendant mainly engages in the production and sale of electronic products, computers, and monitors. Multiple trademarks, “”, were registered for products such as computer screens under Class 9. These trademarks were prominently displayed on the company’s website, official accounts, and on the products and packaging. Despite multiple requests for invalidation and objections from China Construction Bank, the defendant continued to register and use these trademarks. The second defendant and the first defendant have the same legal representative, actual controller, senior management, registration or office address, business scope, and contact information. They also hold product launches together, indicating that they operate together. The electronic components produced by the second defendant are supplied to the first defendant, making them a downstream supplier of the first defendant. Therefore, both defendants constitute joint infringement. As a single shareholder of the first defendant, the third defendant must also bear joint liability for the compensation owed by the first defendant.
After investigation, the court determined that the registered trademark No. 1049653, “”, of China Construction Bank is a well-known trademark under Class 36, including savings banks and financial services. The use of the “” trademark by the defendants constitutes trademark infringement. Thus, the court ordered the defendants to stop the infringement and compensate China Construction Bank for economic losses and reasonable expenses.
Typical Significance
This case is a typical example of the first commercial bank’s logo trademark being recognized as a well-known trademark through judicial procedures in China. It is also the first time that China Construction Bank’s logo trademark has been recognized as a well-known trademark. The challenges and achievements in representing this case are as follows:
1. Comprehensive investigation of the defendants’ infringement activities, collection of evidence, and provision of legal opinions regarding whether the defendants have committed infringement, whether the client has the right to sue, and the legal risks and responses. This provides detailed analysis for the client’s effective protection.
Initially, the client only found that the defendants had applied for trademarks similar to China Construction Bank’s logo. There was no clear information about whether the defendants actually used the trademarks or how they used them.
After receiving the client’s request, the lawyer discovered that the products of the defendants were not sold through online platforms or physical stores. Their sales method was to sell them to internet cafes or export them overseas. This made it difficult to gather evidence. However, the lawyer found clues through short videos on Douyin, and then communicated with the defendants. Finally, they managed to obtain evidence through second-hand platforms and direct purchases from manufacturers. This proved that the defendants produced many products with the same trademark, and the profits were high. The lawyer also obtained information about the defendants’ bank accounts, which helped to determine whether the infringement was valid and whether the client had the right to sue. The lawyer also prepared legal opinions regarding the legal risks and responses. During the subsequent litigation, the lawyer took measures to freeze the defendants’ accounts, resulting in a freeze of nearly 1.4 million yuan. The use of the trademark can be seen in the following images.
2. Collecting evidence of the trademark’s popularity under the approved uses, adopting the best litigation strategy, and actively claiming protection as a well-known trademark.
China Construction Bank’s logo trademark is mainly used under Class 36 (savings banks, financial services, etc.). The trademarks used by the defendants under Class 9, such as video screens and fluorescent screens, are different categories. There are three ways to protect this trademark: 1. Using the copyright of the logo as a prior right; 2. Using the registration of the logo under Class 9 as a defensive trademark; 3. Claiming that the registered trademark No. 1049653, “”, is a well-known trademark under Class 36.
Compared to the first two methods, the third method can ensure that the defendant is held accountable for their infringement, ensuring that the client receives adequate legal protection. However, this requires the client to provide extensive and detailed evidence of the trademark’s use and popularity. This is a significant task. In the banking industry, other banks like Industrial and Commercial Bank of China, Minsheng Bank, and HSBC have also had their logos recognized as well-known trademarks. However, no bank’s logo has been recognized as a well-known trademark through judicial procedures. The client tried to recognize the trademark through administrative procedures, but failed. Although it is difficult to recognize the trademark in this case, the lawyer spent nearly half a year collecting and searching for evidence, and managed to gather over two thousand pages of evidence. The lawyer also submitted documents to the judge, including a report on similar cases, a request for evidence, and legal opinions.
3. Combining industry trends and actual circumstances, using theories of confusion and dilution to argue that the trademark infringement is valid.
Another challenge in this case is that even if the trademark is recognized as a well-known trademark, the court may not necessarily provide protection across all categories. Since Class 36 and Class 9 are different categories, it is difficult to determine whether the products are confusing or misleading, and whether they reduce the significance of China Construction Bank’s logo trademark or damage its reputation. The lawyer found that the digital transformation of banks is becoming more common, and the percentage of offline services has increased. This means that people use computers, phones, and tablets more often, which increases the likelihood of confusion. Additionally, the public involved in both cases is diverse, and there is a large overlap between the services provided by both banks. The lawyer also found an article from a third-party user about a product with the same trademark, which caused confusion.
In summary, the Dongguan Intermediate Court supported the lawyer’s claim that China Construction Bank’s logo trademark is a well-known trademark under Class 36. The court also supported the lawyer’s claim that the defendants’ related companies operate together and share responsibility. The case was successfully executed shortly after the judgment came into effect.
This case is a significant intellectual property case where a commercial bank’s logo trademark is recognized as a well-known trademark through judicial procedures. It has been praised by China Construction Bank, and it has a significant impact on the protection of intellectual property rights in China’s banking industry.
You can view the judgment below:
Lawyer Profile
Lawyer Yang Wenfeng
Lawyer Yang Wenfeng graduated from Guangdong University of Technology. He is a partner at Beijing Longan (Guangzhou) Law Firm, and a senior researcher at the Longan Bay Intellectual Property Research Center. He is also a member of the Guangdong Lawyers Association’s Copyright Committee and an expert at the Dongguan Intellectual Property Operation Center.
Lawyer Yang Wenfeng has many years of experience in intellectual property litigation, commercial disputes, and criminal defense. He specializes in trademarks, copyrights, trade secrets, unfair competition, and economic crimes. He has represented many well-known domestic companies, including those in the internet, communications, high-end manufacturing, gaming, and electronics industries.
Lawyer Yang Wenfeng is skilled in handling complex and difficult intellectual property and commercial disputes. He has represented several important and typical intellectual property cases in China. He has been recognized as one of the top ten intellectual property cases in Guangdong courts in 2021, the top ten typical cases in Guangzhou courts in 2021, and one of the top ten copyright cases in the AIPPI China分会 in 2020. He has also been recognized as one of the top ten intellectual property litigation cases in Guangdong lawyers in 2015.
Lawyer Dong Yun
Lawyer Dong Yun graduated from South China University of Technology. He has a combined education background in law and science. He is a professional lawyer with expertise in both areas. He is a member of the Guangdong Foreign Lawyers New Talent Pool, the Dongguan Intellectual Property Operation Center, and the Longan Bay Intellectual Property Research Center.
Lawyer Dong Yun has many years of experience in public institutions and large foreign-funded enterprises. After becoming a lawyer, he specializes in intellectual property and corporate law. He serves as a legal advisor for many companies, providing legal services for many technology companies. He has extensive experience in litigation and legal advice.
Lawyer Dong Yun has deep professional knowledge and excellent skills. He is one of the leading litigation lawyers in Guangdong in the fields of intellectual property and corporate law. He has extensive experience in handling complex and difficult intellectual property and corporate law cases. He can provide legal services related to patents, trademarks, copyrights, trade secrets, unfair competition, and franchising.