III.Trial of Trademark Cases

（I）Trial and Judgment of Administrative Trademark Right Authorization and Affirmation Cases

10.Judgment of and Applicable Standards for the Principle of Non Bis in Idem

According to Article 35 of the Regulation for the Implementation of the Trademark Law of the People's Republic of China（the Implementation Regulation of Trademark Law），if the Trademark Review and Adjudication Board（TRAB）has made a ruling or decision on an application for trademark review，anyone cannot submit an application for review again containing the same facts and reasons.This is the principle of Non Bis in Idem.

In the trademark administrative dispute case of Foshan St-Flora（United）Co.，Ltd.（St-Flora Company）v.the TRAB of the State Administration for Industry and Commerce of the People's Republic of China and Johnson&Johnson（JNJ）［（2008）XTZ No.2］，the SPC defined the judgment and applicable standards for the principle of Non Bis in Idem.

The basic facts of the case are as follows：on January 30,1993，JNJ was approved for the registration of Trademark No.627498‘采樂’（traditional Chinese characters in handwriting style，the‘Cited Trademark’），which was certified to be used on Class 5 goods described as‘local antimicrobial for human use’.In July 1994，upon the authorization of JNJ，the outsider Xi'an Janssen Pharmaceutical Ltd.used the Cited Trademark on its medicine‘Ketoxonazole Lotion’which is used for treating seborrheic dermatitis and pityriasis of the scalp.The disputed trademark involved in the case was Trademark No.1214187‘采乐CAILE’，which was applied for registration on August 6,1997 and approved for registration on October 14,1998，and certified to be used in such Class 3 goods as‘soap，cleaning preparations，shampoo，hair conditioner，facial cleanser，shower gel，toothpaste，cosmetics and so on’.In November 1998 and July 2000，JNJ successively filed two applications to the TRAB requesting the cancellation of the disputed trademark's application for registration.The TRAB made their final rulings in December 1999 and September 2001 respectively，ascertaining that the reasons presented by JNJ were untenable，and maintaining the registration of the disputed trademark.On August 20,2002，JNJ applied to the TRAB for the third time to request the cancellation of the disputed trademark's application for registration，mainly based on the argument that the disputed trademark constituted a trademark similar to the cited trademark on similar goods，and the disputed trademark should therefore be deemed as a bad-faith copycat and counterfeit of the cited trademark.They further alleged that the registration of the disputed trademark violated Articles 13,28,31 and 41 of the current Trademark Law of the People's Republic of China（the Trademark Law）.

On June 23,2005，the TRAB delivered a ruling（SPZ［2005］No.1801，‘No.1801 Ruling’）holding that the cited trademark should be recognized as a wellknown trademark，and the registration of the disputed trademark constituted an imitation of a well-known trademark which would mislead the public.Accordingly，the TRAB ruled the cancellation of the disputed trademark.St-Flora Company refused to accept the ruling and lodged a lawsuit before Beijing No.1 Intermediate People's Court.In the first instance，Beijing No.1 Intermediate People's Court held that JNJ had submitted new evidence with their third application，which could not be regarded as filing a further application containing the same facts and reasons，and hence the TRAB's acceptance of the third application did not violate legal proceedings.As such，the court upheld Ruling No.1801 delivered by the TRAB.However，St-Flora Company refused to accept the judgment of the first instance and appealed to the Beijing High People's Court.In the second instance，the Beijing High People's Court held that JNJ had submitted the third application with new evidence and new facts in accordance with Article 13.2 of the Trademark Law（after amendment），and so the TRAB had not violated the principle of Non Bis in Idem.The Court thus upheld the judgment of the first instance.Against the judgment of the second instance，St-Flora Company filed an appeal to the SPC for a retrial.The SPC issued a ruling to review and retry the case and made the judgment of the retrial on October 22,2009，reversing both the judgments of the first and second instances and Ruling No.1801 delivered by the TRAB.

In the retrial，the SPC held that JNJ had cited Article 17 and Article 27 of the Trademark Law（before amendment），and Article 25 of the Rules for the Implementation of the Trademark Law of the People's Republic of China（the Implementation Rules of the Trademark Law）and exhausted the relevant legal facts and bases that could be used at that moment in its first two applications，such as provisions on publicly known or well-known trademarks，on the grounds that the disputed trademark was a bad-faith copycat and counterfeit of the cited trademark which constituted a trademark similar to the cited trademark on similar goods，and could easily mislead consumers，to request the cancellation of the disputed trademark.The TRAB had also reviewed the relevant facts and reasons，and ruled twice to maintain the registration of the disputed trademark.In its third application，JNJ cited the amended Trademark Law and requested the cancellation of the disputed trademark on the main grounds of a well-known trademark.The TRAB then accepted the application again and ruled to cancel the disputed trademark，violating the principle of Non Bis in Idem.The ruling made by the TRAB on the third application had no legal basis，despite the fact that the investigation was conducted on the basis of the amended Trademark Law and its Implementation Rules.Pursuant to Article 35 of the current Implementation Rules of Trademark Law，the TRAB cannot re-accept cases for final ruling until new facts or reasons are submitted.‘New facts’means findings that can be proven and supported by new evidence.‘New evidence’means the evidence newly discovered after the ruling or decision，or the evidence that could not be obtained in the original administrative procedure or obtained within the given period due to objective reasons.If any evidence that should have been submitted in the previous administrative procedure is accepted as new evidence，it would make the restriction on re-starting the administrative procedure nothing but an empty shell，and this is not conducive to forming a stable legal order.The evidence submitted by JNJ in its third application proving that the disputed trademark cited the well-known trademark before its date of application was not new evidence in the legal sense.Meanwhile，the modification of the applicable laws after the administrative ruling was delivered also could not constitute new reasons.

11.Retroactivity of the Trademark Law（2001 Amendment）on TrademarkDisputeswithFinalAdministrativeRulingbeforethe Enforcement of Such Law

In the previously-discussed administrative case of trademark‘采乐’，the SPC clarified the retroactivity of the Trademark Law（2001 amendment）on trademark disputes with final administrative ruling before the enforcement of such law.In the ruling of this case，based on the principle of trust protection，the SPC ascertained that the Trademark Law（2001 amendment）had no retroactive effect on trademark disputes which have been given final ruling.

In the retrial，the SPC held that the trademark dispute involved therein was given its final ruling before the enforcement of the Trademark Law（2001 amendment），and so Article 5 of the Interpretation of the Supreme People's Court on the Relevant Issues concerning the Jurisdiction Over and Scope of the Application of Laws to Hearing Trademark Cases could not be applied.Due to the fact that the Trademark Law，before amendment，adopted a final administrative system for trademark review and adjudication，as for the disputes that had already resolved in a final ruling，the legal system then in effect shall be respected and maintained，and no proceedings shall be restarted on the ground of the amended new regulations.Final ruling forms a stable order and is credible under the final administrative system.After the final ruling，continuous and large-scale publicity and the use of the cited trademark launched by St-Flora Company created a considerable commercial reputation，which should be protected by the law.Both the TRAB and the courts of the first and second instance were wrong in applying such laws，because they took JNJ's application of the amended Trademark Law as a new reason for the third application，and decided to cancel the disputed trademark in accordance with Article 13.2 of the amended Trademark Law.

12.Consideration ofSpecificHistoricalFactors in Judging the Similarity of Trademarks

Similar trademarks refer to the similarity of the overall structure in terms of the trademark's words，pronunciation，meanings，the conformation or color，or the combination of all elements，thus confusing the origin of relevant goods or making the public believe they have a specific relation.The judgment of the similarity of trademarks is subject to the public's general awareness，and should take into account the overall similarity and major elements of the trademarks，and the significance and reputation of the trademark that was preemptively registered.

In the administrative trademark dispute case of Hou Yong v.Harbin Churin Group Jointstock Co.，Ltd.（Churin Group）and the TRAB［（2009）ZXZ No.15］，the SPC further clarified that the specific historical relationship，location in the same region and other factors should also be taken into account when using the aforesaid methods to judge the similarity of trademarks，in order to determine whether the existence of two trademarks could confuse the origin of relevant goods or make the public believe they have a specific relation.

The basic facts of the case are as follows：in 1900，Russian citizen Ivan Yakovlevich Churin（Ivan YaChurin for short）incorporated a commercial trade institution in Harbin named‘Churin Foreign Firm’.In 1953，Churin Foreign Firm was taken over by the Chinese Government，and all of its subsidiaries were accordingly renamed.The trademark‘Churin’was recovered in 1984.Both the Churin Foods Factory（afterwards renamed‘Churin Foods Company’）and the Churin Sweets Factory（renamed‘Churin Sweets Company’）were the affiliates of the Churin Group.The Churin Foods Factory mainly processed bread，cakes，fruit wines and other foods.In 1997，the Churin Sweets Factory reproduced the Churin sausage，which had built a relatively high profile throughout its history.After years of operation，the Churin sausage had become one of the local specialties of Harbin and enjoyed a certain reputation among consumers.On April 21,1999，the Churin Sweets Company was approved to register Cited Trademark No.1266601，‘Churin and graphics’，which was certified to be used on‘sausage’goods in Class 29.On July 1,2003，legal representative of Churin Foods Company Hou Yong applied to the TrademarkOfficeoftheStateAdministrationforIndustryandCommerce（Trademark Office）for registration of Trademark No.3612653，‘Iya Churin’（disputed trademark），which was primarily approved by the Trademark Office upon review.During the objection period，the Churin Group submitted an objection application to the Trademark Office on the grounds of Cited Trademark No.1266601‘Churin and Graphics’.The Trademark Office held that the disputed trademark did not constitute a trademark similar to the cited trademark，and approved its registration.The Churin Group refused to accept the ruling and applied to the TRAB for review.Through trial and investigation，the TRAB delivered Ruling No.4378，reaffirming the registration of the disputed trademark.The Churin Group appealed against the ruling to Beijing No.1 Intermediate People's Court.In the first instance，Beijing No.1 Intermediate People's Court considered that the word‘Churin’in the cited trademark was its distinctive element，and could play a major role in guiding consumer recognition.The disputed trademark‘Iya Churin’completely contained this distinctive element，which could confuse consumers as to the origin of the goods，provided that the disputed trademark was registered for canned meat，sausages，dry sausages，pork products and meat similar to that being certified for the cited trademark.Thus，the disputed trademark could not be allowed to be registered for those aforesaid goods.The court of first instance elected to reverse Ruling No.4378 and ordered the TRAB to make a new review ruling.Hou Yong declined to accept the judgment and filed an appeal.In the second instance，Beijing High People's Court upheld the judgment of the first instance.Hou Yong then filed an appeal against the judgment of the second instance to the SPC for retrial.The SPC made a retrial judgment on December 15,2009，rejecting his petition.

Through its investigation，the SPC affirmed that the prior registered cited trademark was a combination of words and graphics consisting of the word‘Churin’and other graphics.For the public，the word‘Churin’in the cited trademark possessed advantages in familiarity and recognition.Besides，the owner of the cited trademark was the Churin Sweets Company，and‘Churin’was its mark.Use of the cited trademark by the Churin Sweets Company gave a certain level of market recognition to that mark across Heilongjiang Province，especially in Harbin City.The trademark was widely known to the public and recognized as the mark of‘Churin’.The disputed trademark consisted of the words‘Iya Churin’，which completely contained the word‘Churin’that played an important role in guiding consumer recognition，subject to the public's general awareness and considering the findings that the disputed trademark was applied by Hou Yong in his personal name，authorized by Churin Foods Company，which was also an affiliate of the Churin Group along with the Churin Sweets Company，and both were located in the same region.If the disputed trademark was registered and used on sausages and other goods similar to those certified for the cited trademark，it could confuse the public as to the origin of the goods or lead them to believe that the two have a specific relation.Therefore，the disputed trademark and the cited trademark were found to constitute similar trademarks.The formation of the‘Churin’brand was a historical process and Churin Foods Company played an important role in that process.However，according to the findings identified during the investigation，Churin Foods Company mainly engaged in the production of bread，fruit wines and other foods，while the disputed trademark and the cited trademark were both involved in the‘sausage’goods in Class 29.Before the application of the disputed trademark for registration，Churin Foods Company never processed sausages and similar goods，but the Churin Sweets Company had reproduced and reused the‘Churin’trademark since 1997.The‘Churin’trademark had accordingly earned a high reputation，which could be attributed to the Churin Sweets Company.Hou Yong claimed that Churin Foods Company had the right to register and use the disputed trademark for the sake of inheriting the traditional‘Churin Foods’，which was indefensible.

13.Determination of similar trademarks in cases involving the authorization and determination of trademark rights，when the prior trademark owner owns a registered famous trademark on dissimilar goods and also owns a prior registered trademark on similar goods

In cases involving the authorization and determination of trademark rights，when determining whether the trademark in dispute and the cited trademark constitute similar trademarks，if the prior trademark owner owns a registered famous trademark on dissimilar goods and also owns a prior registered trademark on similar goods，courts have different views about whether those two factors should both be taken into consideration，or should be considered separately.

In the administrative trademark dispute case of Texwood Co.，Ltd.（Texwood Company）v.TRAB and Guangdong Apples Industrial Co.，Ltd.（Guangdong Apples Company）［（2009）XTZ No.3］，the SPC elucidated that when the prior trademark owner owns a registered famous trademark on dissimilar goods and also owns a prior registered trademark on similar goods，courts should not only compare the disputed trademark with the prior registered trademark on similar goods，but also consider the factor of protecting the famous trademark.This judgment defined and unified the concepts involved in the said problem.

The basic facts of the case are as follows：upon being approved by the Trademark Office on July 15,1981，the Texwood Company registered Trademark No.14800，‘萍果牌’（‘苹果’in Chinese characters），which was certified to be used on goods of Class 25：clothing.On April 20,1994，the Texwood Company applied for the registration of Trademark No.813677，‘Texwood and Apple Graphics’，which was approved for registration on February 7,1996，and certified to be used on goods of Class 25：clothing，shoes，caps，etc.It also applied for the registration of Trademark No.805564，‘Texwood and Apple Graphics’（Cited Trademark I）on April 20,1994，which was registered on January 7,1996，after being approved，and was certified to be used on goods of Class 14：clocks，clock cases，cufflinks and tie clips.On January 11,1996，the Texwood Company applied for the registration of Trademark No.1032836，‘Texwood and Apple Graphics’（Cited Trademark II），which was approved for registration on June 21,1997，and certified to be used on goods of Class 14：jewelry，clock timers and their parts，clock cases，cufflinks and tie clips.On June 22,1998，the Guangdong Apples Company（originally named Zengcheng Apples Leather Co.，Ltd.）applied for the registration of Trademark No.1355455，‘Apple Graphics’（disputed trademark），which was approved for registration on January 21,2000，and certified to be used on goods of Class 14：clocks，watches，watch belts and watch boxes.On October 23,2000，the Texwood Company filed an application to the TRAB to request a revocation of the disputed trademark on the grounds that it was similar to Cited Trademark I and Cited Trademark II，and copied and counterfeited in bad faith those two famous jeans brands.On October 10,2004，the TRAB made a ruling［SPZ（2004）No.5456，‘Ruling No.5456’］，affirming that‘萍果牌’and‘Texwood and Apple Graphics’of the Texwood Company had become famous jeans brands.Furthermore，the disputed trademark and Cited Trademarks I&II were all used on such goods as clocks，watches and their parts，constituted a similarity in shape and were certified to be used on identical or similar goods，which could easily confuse or mislead consumers，thus constituting similar trademarks.For these reasons，the TRAB ruled the revocation of the disputed trademark.The Guangdong Apples Company lodged an administrative action against this judgment.In the first instance，Beijing No.1 Intermediate People's Court ascertained that‘萍果牌’and‘Texwood and Apple Graphics’registered by the Texwood Company on jeans had been famous trademarks before the application for registration of the disputed trademark.The grounds for Ruling No.5456 in which the TRAB ruled the revocation of the disputed trademark were irrelevant to the determination of famous trademarks.The disputed trademark did not constitute a trademark similar to Cited Trademark I，but did constitute a trademark similar to Cited Trademark II on similar goods.Therefore，Beijing No.1 Intermediate People's Court reaffirmed Ruling No.5456of the TRAB.The Guangdong Apples Company refused to accept this judgment and appealed to the Beijing High People's Court.Through its investigation，Beijing High People's Court found in the second instance that the final ruling［（2000）Ruling No.2529］made by the TRAB in November 2000 and the final ruling［（2001）Ruling No.2510］made in July 2001 judged that the other disputed trademark of the Guangdong Apples Company with the same graphics as that of the disputed trademark herein，and other trademarks cited by the Texwood Company herein with the same graphics as that of the cited trademark，did not constitute similar trademarks.The court of the second instance held that the aforesaid final rulings made by the TRAB had ascertained that the graphics of the disputed trademark were dissimilar to the graphics of the cited trademark.To guarantee unified and solemn criteria for law enforcement，it should be ascertained that Cited Trademark II and the disputed trademark did not constitute similar trademarks，and the disputed trademark should be upheld.Therefore，Beijing High People's Court reversed the judgment of the first instance and the rulings delivered by the TRAB，and upheld the disputed trademark.The Texwood Company refused to accept the second instance judgment and filed a petition to the SPC for a retrial.The SPC issued a ruling to review and retry the case on December 23,2008，and made the judgment of the retrial on November 11,2009，reversing the judgment of the second instance and reaffirming the first instance judgment and Ruling No.5456 delivered by the TRAB.

The SPC retried the case and considered that the TRAB had judged that the disputed trademark should be revoked on the grounds that it was similar to Cited Trademark I and Cited Trademark II on identical or similar goods.Therefore，it was unnecessary to apply Article 13.2 of the Trademark Law，i.e.，the cross-category protection of famous trademarks，but this should by no means be used to deny the argument of the Texwood Company that the disputed trademark was a copy and counterfeit of its two famous trademarks.Goods of Class 25（clothing）were related to those of Class 14（clocks，watches，watch belt and watch boxes）in sales channels and consumer groups，thus they were not dissimilar goods without relation or with weak relation.Because the Texwood Company owned not only a registered famous trademark on dissimilar goods，but also owned a prior registered trademark on similar goods，the courts should compare the disputed trademark with the prior registered trademark on similar goods owned by the rights owner，while also considering the cross-category protection of famous trademarks.It is unreasonable for the protection of a rights owner who owns not only the famous trademark but also the prior registered trademark on similar or dissimilar goods to be weaker than that of a rights owner who only has a famous trademark on dissimilar goods.The rulings of the TRAB and the judgment of the first instance all ascertained that the disputed trademark was similar to Cited Trademark II on similar goods，therefore the judgment that the disputed trademark should be revoked was correct and should be upheld.

14.The time boundary for determining whether the trademark in dispute prejudices the other's existing prior rights

As Article 31 of the Trademark Law stipulates，any application for trademark registration shall not prejudice the other's existing prior rights，nor shall an application rush to register in an unfair manner a trademark that is already used by another party and has substantial influence.

In the administrative trademark dispute case of Southwest Pharmaceutical Co.，Ltd.（SP Company）v.the TRAB and Bayer Consumer Care AG.（Bayer Company）［（2009）XTZ No.1］，the SPC clarified that，when judging and determining whether the trademark in dispute damages the existing prior right of other person according to Article 31 of the Trademark Law，the people's court generally shall use the application date of the disputed trademark as the time boundary to see whether any prior right exists.

The basic facts of the case are as follows：On November 12,1987，SP Company entered into a cooperative production agreement with F.Hoffmann-La Roche Ltd.（La Roche），specifying that La Roche granted SP Company the right to use‘Saridon’（Compound Paracetamol Tablets，‘散利痛’in Chinese character）in the Chinese market，and SP Company could use Chinese raw materials to produce，promote，sell and wholesale the analgesic drug in China.‘Saridon’was included in the drug standards of Sichuan Province in 1988 and the drug standards of Shanghai in 1995.On September 20,2001，the State Food and Drug Administration（SFDA）published the national standards document［（2001）GYBZ XG-013］，specifying that the local standards for‘Compound Paracetamol Tablets（II）’（previously known as‘Saridon’）would be abolished simultaneously as from December 31,2001.On March 17,1992，SP Company applied for the registration of‘散列通’as a trademark and registered it upon the approval on February 28,1993.On July 30,1999，La Roche filed an application requesting that the registration of the trademark‘散列通’be revoked on the grounds that it infringed upon its prior right.The TRAB thought that‘散列通’was completely different from‘散利痛’in its wording，as well as in its meaning and effect.General consumers could not mistake as the same trademark.Furthermore，La Roche failed to provide sufficient factual evidence proving that consumers could regard‘散列通’as‘散利通’（Chinese characters for‘Saridon’），so it could not ascertain that the acts of SP Company went against the principle of good faith.On April 26,2005，the TRAB delivered a ruling［（2005）SPZ No.0675，‘Ruling No.0675’］，upholding the registration of the trademark‘散列通’.La Roche refused to accept the ruling and lodged a lawsuit before Beijing No.1 Intermediate People's Court.In the first instance，Beijing No.1 Intermediate People's Court determined that although the trademark‘散利通’was not registered in China，the Chinese translation of the registered trademark‘Saridon’was created by and had been used by La Roche for a long time，and it was thus the trademark used by La Roche and one which had a certain influence.The goods under the name‘散列通’were the same as those of‘散利痛’，they were both western medicines，and the sequence and form of the wording of both were also the same，so they constituted similar trademarks.SP Company registered the trademark‘散列通’that was similar to the trademark‘散利痛’despite the fact that it had clearly known that the trademark‘散利痛’had been preemptively used by La Roche；this went against Article 31 of the Trademark Law and also the principle of good faith，thus it appeared to have applied to‘register a trademark in an unfair manner’as stipulated in Article 41 of the Trademark Law.Accordingly，Beijing No.1 Intermediate People's Court annulled Ruling No.0675 of the TRAB，and SP Company filed an appeal against this verdict.In the second instance，Beijing High People's Court held that‘散列通’and‘散利痛’did indeed constitute similar trademarks.As SP Company had entered into a cooperative production agreement with La Roche，SP Company was thus granted the right to use‘散利痛’as the trademark or name of medicine from 1987 to 1992.However，SP Company registered the trademark‘散列通’that was similar to the trademark‘散利痛’after the end of said contract even though it clearly understood the ownership of the trademark‘散利痛’，and this went against the principle of good faith and was an behavior of‘getting the registration through unfair means’stipulated in article 41 of the Trademark Law.Therefore，Beijing High People's Court dismissed the appeal and reaffirmed the judgment of the first instance.Against the judgment of the second instance，SP Company filed an appeal to the SPC for a retrial.The SPC issued a ruling to review and retry the case on January 14,2009，and made the judgment of the retrial on May 25,2009，reversing the judgments of the first and second instances and reaffirming Ruling No.0675 delivered by the TRAB.

After its investigation，the SPC held that‘散利痛’had been a legally generic name of fever and pain-relieving medicine mainly consisting of acetaminophen and supplemented by caffeine and isopropyl antipyrine before October 31,2001，when the local standards of‘散利痛’were revised.Because the Trademark Law and the Pharmaceutical AdministrationLawofthePeople'sRepublicofChina（the Pharmaceutical Administration Law）prohibited the use of unregistered trademarks on the medicine，SP Company thus applied for the registration of‘散列通’.Moreover，‘散利痛’was not the unregistered trademark of‘散利痛’when the trademark‘散列通’was registered.The use of‘散利痛’on‘Saridon Tablets’by SP Company during the period of cooperation with La Roche was the mark of a generic medicine name in accordance with the Pharmaceutical Administration Law，marking administration and other relevant regulations，rather than the use of an unregistered trademark.The SPC further affirmed that‘散利痛’was not registered as a trademark when SP Company applied for the registration of‘散列通’，and so the grounds on which La Roche raised the dispute were unfounded.Although the ruling of the TRAB through Ruling No.0675 that‘散利痛’was an unregistered trademark of La Roche was wrong，the conclusion to uphold the registration of‘散列通’was correct，and should be maintained.

15.Whether the Use of a Trademark that has been Included in the National Drug Standards Can be Regarded as a Factor in Determining a Famous Trademark

Pursuant to Article 14 of the Trademark Law，the duration and extent of the advertising and publicity of a trademark，and the geographical extent of the trading areas in which the trademark is used，are all the factors that shall be considered when determining a famous trademark.During judicial practices，there are different understandings on whether the use of a registered trademark during the time when it is subject to the national drug standards influences the recognition of the popularity of the registered trademark.

In the administrative trademark dispute case of Jiangxi Juyuan Biomedicine Engineering Co.，Ltd.（Juyuan Company）v.the TRAB and the third party Hangzhou Minsheng Pharmaceutical Group Co.，Ltd.（Minsheng Company）［（2009）ZXZ No.12］，the SPC held that some drug names were included in the national drug standards for specific historical reasons.If the name is not a generic name de facto after those drug standards are revised，and not taken as a generic name，it should be considered as a factor that can determine the origin of goods.Thus，when considering the awareness of the registered trademark，the use and publicity of such a trademark made by the trademark owner during the period in which it was included in the national drug standards should be taken into consideration.

The basic facts of the case are as follows：Hangzhou Minsheng Pharmaceutical Factory，the predecessor of Minsheng Company，applied to the Trademark Office for the registration of the words‘21 Super-Vita’（‘21金维他’in Chinese characters）as a trademark on January 20,1987.After being approved，it was registered as Trademark No.197849 on August 30,1987，and certified to be used on western medicines of Class 5.The goods of‘21 Super-Vita’were rated as a Hangzhou Famous Brand and a Zhejiang Famous Brand in 1989 and 1997 respectively，and rated again as famous brands of Hangzhou Municipality and Zhejiang Province in 1998.From 1997 to 2000，Minsheng Company carried out lots of advertising and publicity for‘21 Super-Vita’nationwide through TV advertising，radio advertising，outdoor advertising and so on.Nanchang Huiri Health Preparations Co.，Ltd.，the predecessor of Juyuan Company，applied to the Trademark Office for the registration of‘21 Super-Vita and Graphics’as a trademark on December 21,2000.It was approved as Trademark No.1687032 on December 21,2001，and certified to be used on the goods of Class 30：non-medical nutrition liquids.On August 8,2002，Minsheng Company requested that the TRAB revoke the registration of Trademark No.1687032.The TRAB delivered a ruling［（2004）No.3021］on June 30,2004，judging that Trademark No.279849（the‘cited trademark’）of Minsheng Company was a famous trademark that should be subject to cross-category protection，and revoking Trademark No.1687032 of Juyuan Company.Juyuan Company lodged a lawsuit against this judgment.In the first instance，Beijing No.1 Intermediate People's Court delivered an administrative judgment［（2004）YZXCZ No.727］on December 23,2004，annulling Ruling No.3021 delivered by the TRAB.However，Minsheng Company refused to accept this judgment and appealed to Beijing High People's Court.In the second instance，Beijing High People's Court made an administrative judgment［（2005）GXZZ No.122］on December 1,2005，revoking administrative judgment No.727 of the first instance and Ruling No.3021 of the TRAB，and ordered the TRAB to make a new ruling.The TRAB thus delivered a new ruling［（2004）Z No.32，‘Ruling No.32’］on May 10,2006，reversing the registration of Trademark No.1687032 of Juyuan Company.Juyuan Company filed an appeal against this judgment.After investigation and trial，Beijing No.1 Intermediate People's Court reaffirmed Ruling No.32 made by the TRAB.Juyuan Company refused to accept this judgment and appealed to Beijing High People's Court，which upheld the judgment of the first instance and dismissed the appeal.Juyuan Company then filed an appeal to the SPC for a retrial on the grounds that‘21 Super-Vita’of Minsheng Company was a generic name rather than a trademark from 1984 to July 1,2000，and that the findings of the courts in the first and second instance ascertaining that the cited trademark of Minsheng Company was a famous trademark were erroneous.The SPC dismissed the appeal of Juyuan Company on October 27,2009.

After investigation and retrial，the SPC held that‘21 Super-Vita’had indeed been a legal generic name from 1984 to July 1,2000 because of its inclusion in the national drug standards，but Minsheng Company enjoyed the exclusive rights to register the trademark before the cited trademark was not cancelled by legal proceedings，and shall be entitled to use the cited trademark on certified goods.According to the duration and extent of advertising and publicity for the cited trademark，the geographical extent of the trading areas in which the trademark was used and the records of protection，the cited trademark was already famous when the registration of the trademark in dispute was applied for.After the national drug standards Multivitamin Formula with Minerals（21）［（2000）GYBZXG-005］were implemented as from July 1,2000，the historical problem of whether‘21 Super-Vita’was a generic name or a registered trademark was solved.The existing evidence was unable to prove that‘21 Super-Vita’was a generic name of multivitamin formulas with minerals.

16.Consideration of the Use of a Trademark Before it is Registered in Determining its Degree of Fame

Pursuant to Article 14 of the Trademark Law，the advertising and publicity of a trademark shall be considered when determining a famous trademark.According to Article 5.2 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases of Civil Disputes over the Protection of Famous Trademarks，the time，scope，method，etc.shall include the continuous use of the trademark before it is approved for registration

In the administrative trademark dispute case of Beijing China Railway Express Co.，Ltd.（Beijing CRE Company）v.the TRAB and the third party China Railway Express Co.，Ltd.（CRE Company）［（2009）ZXZ No.1］，the SPC held that the continuous use of a mark before and after its registration as a trademark should be taken into consideration when determining the trademark's degree of fame.

The basic facts of the case are as follows：Beijing CRE Company submitted an application to register‘中铁’as a trademark（disputed trademark）on August 28,1997；it was approved for registration and certified to be used on service items of Class 39 on September 21,1998.Beijing CRE Foreign Forwarding Express Company applied for the registration of‘CRE中铁快运’（‘Express’is excluded from the scope of exclusive use，‘cited trademark’）as a trademark on February 20,1995，and was approved for registration on January 14,1997，and certified to be used on service items of Class 39：delivery service（information or goods）and parcel delivery.After China Railway Foreign Service Co.，Ltd.（CRFS Company）and Beijing CRE Foreign Forwarding Express Company jointly established CRE Company in 1997，the cited trademark was approved to be transferred to CRE Company（later renamed the CRE Corporation）.On September 12,2003，CRE Company requested that the registration of the disputed trademark be revoked on the grounds that the disputed trademark violated Articles 13.2,28 and 31 of the Trademark Law.On June 23,2005，the TRAB delivered a ruling［（2005）SPZ No.1804］，‘Ruling No.1804’affirming that the cited trademark was a famous trademark and the registration of the disputed trademark indeed violated Article 13.2 of the Trademark Law，and thus revoked the registration of the disputed trademark.Beijing CRE Company filed a lawsuit with Beijing No.1 Intermediate People's Court against the ruling.In the first instance，Beijing No.1 Intermediate People's Court made an administrative judgment［（2005）YZXCZ No.842］on December 23,2005，annulling Ruling No.1804 delivered by the TRAB.Both the TRAB and the CRE Corporation refused to accept this judgment and filed an appeal.Beijing High People's Court delivered an administrative judgment［（2006）GXZZ No.261，‘Judgment No.261’］on July 21,2006，dismissing the appeal and upholding the judgment of the first instance.The TRAB formed a collegial panel and delivered a ruling［（2005）SPZCS No.60，‘Ruling No.60’］on June 6,2007，ascertaining that the valid evidence presented by the CRE Corporation could not prove that the cited trademark had been a famous trademark when the registration of the disputed trademark was applied for，and sustained the disputed trademark of Beijing CRE Company.CRE Company refused to accept this ruling and lodged a lawsuit before Beijing No.1 Intermediate People's Court.After investigation and trial，Beijing No.1 Intermediate People's Court reaffirmed Ruling No.60 delivered by the TRAB.The CRE Corporation appealed to Beijing High People's Court against this judgment.In the second instance，Beijing High People's Court held that the cited trademark had been a publicly-known trademark in China，reversed the judgment of the first instance and Ruling No.60 made by the TRAB，and ordered the TRAB to make a new ruling.Beijing CRE Company refused to accept this judgment and filed an appeal to the SPC.The SPC made a retrial judgment on September 21,2009，and rejected its appeal for a retrial.

The SPC held that the continuous use of a mark before and after being registered as a trademark should be taken into consideration when determining whether or not it is a famous trademark.According to the findings，the CRE Corporation was an enterprise directly controlled by the Ministry of Railways，its predecessor CRE Company and the CRFS Company（the parent of CRE Company），mainly specializing in parcel delivery according to the relevant provisions of the Ministry of Railways.It had piloted parcel delivery in Beijing，Shanghai，Tianjin，Guangzhou，Shenzhen，Shenyang and Zhengzhou since 1993，and formally operated its business nationwide since 1997.During this period，CRE Company，and the CRFS Company and its subsidiaries extensively used and publicized the cited trademark，making it become a well-known trademark with the public long before Beijing CRE Company applied for the registration of the disputed trademark.

（II）Trial of Civil Trademark Cases

17.Consideration of Unused Registered Trademarks when Determining the Similarity of Trademarks

Pursuant to Article 9.2 and Article 10 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases Involving Trademark Disputes，trademarks being‘similar’shall mean，through comparison between the allegedly infringing trademark and the plaintiff's registered trademark，that the two marks are similar to each other in the overall structure in terms of the trademarks'words，pronunciation，meaning，conformation or color，or the combination of all elements，or the similarity of the three-dimensional form or the combination of color，each of which is liable to make the public confuse the origin of the relevant goods or mistakenly believe that they have a specific relation.When determining whether two trademarks are identical or similar，a people's court should be subject tothepublic's general awareness，andalsogivecomprehensive consideration to both the overall similarity and major elements of the trademarks，.Such comparisons shall be conducted respectively under the circumstance of separation of the two marks.Meanwhile，the significance and reputation of the registered trademark shall also be taken into account.

In the trademark exclusive right infringement dispute case of Yunnan Chengtou Real Estate Stock Co.，Ltd.（Yunnan Chengtou Company）v.Shandong Taihe Century Investment Co.，Ltd.（Taihe Investment Company）and Ji'nan Honghe Beverage Preparation Sales Department（Ji'nan Honghe Sales Department）［（2008）MTZ No.52］，the SPC further clarified the factors to be considered when determining the similarityoftrademarks.Specifically，whenjudgingsimilarityintrademark infringement disputes，in addition to comparing the similarity of the overall structure of the words，pronunciation，meaning，etc.，the courts should consider whether such similarity could cause confusion in the market.Moreover，the significance and actual use of the relevant trademark，whether an illegitimate intent was involved，etc.，should also be considered in reaching a comprehensive determination.

The basic facts of the case are as follows：Daxing'anling Beiqishen Health Products Co.，Ltd.（Beiqishen Company），the outsider，was approved to register the word trademark‘红河红’（Chinese characters）on June 7,1997，certified to be used on beer and beverage preparations.On November 28,2000，after being approved by the Trademark Office，the trademark‘红河红’，was transferred to Ji'nan Honghe Sales Department.Founded on November 14,2000，with a registered capital of RMB 20,000，Ji'nan Honghe Sales Department mainly engages in the wholesale and retail of beer and beverages，the sales of hops，and the development and sales of beer and beverage additives.Registered on April 20,2001，with a registered capital of RMB 5 million，the Taihe Investment Company mainly focuses on investment in hi-tech and environmental protection projects，and the sales of water andbeveragespreservedatnormaltemperature.Ji'nanHongheSales Department later granted the Taihe Investment Company the exclusive right to use the trademark‘红河红’across China，and the Trademark Office filed the trademark use contract in August 2002.The predecessor of Yunnan Chengtou Company was the Yunan Honghe Beverage Factory，which was established in 1982，renamed Kaiyuan Guangming Beer Factory in May 1992，and then restructured as Yunnan Guangming Co.，Ltd.after being approved by the administrative authority.It was then renamed Yunnan Honghe Guangming Co.，Ltd.（Yunnan Honghe Company）on October 23,1998.Yunnan Honghe Company issued shares and went public at the Shanghai Stock Exchange in 1999，thus becoming a listed company.Before 2001，Yunnan Honghe Company had used‘红河红’as the name of its beer but unregistered it as a trademark.After 2002，it used‘红河红’（Chinese characters）instead.On July 24,2001，Yunnan Honghe Company submitted an application to the Trademark Office for the registration of‘红河红’as its trademark，which was primarily approved upon review.However，the Taihe Investment Company filed an objection to the Trademark Office within the objection period.Yunnan Honghe Company conducted material asset restructuring in October 2007，and renamed itself Yunnan Chengtou Company.In March 2004，through notarization，the Taihe Investment Company bought‘红河红’beer made by Yunnan Honghe Company in a convenience store in Chancheng District，Foshan City，Guangdong Province.It then joined Ji'nan Honghe Sales Department in lodging a lawsuit before the Foshan Intermediate People's Court of Guangdong Province，requesting the court to order Yunnan Honghe Company to terminate their infringement of the exclusive rights to use the trademark‘红河红’and compensate for economic losses of RMB 10 million.The court of first instance held that Yunnan Honghe Company used and highlighted the term‘红河红’on its products and advertising，which constituted a mark similar to the‘红河红’trademark of Ji'nan Honghe Sales Department and could lead the relevant public to confuse the origin of goods，thereby infringing on the plaintiffs'exclusive rights to use the trademark.Furthermore，Yunnan Honghe Company hung an advertising banner with the words‘Honghe Beer’in red letters in its Sales Department，which also constituted trademark infringement.The available evidence indicated that Yunnan Honghe Company had committed such acts of infringement for at least two years.According to the annual reports disclosed by Yunnan Honghe Company，‘红河红’beer derived gross profits of RMB 22 million during this infringement period.The plaintiffs’claim for damages was reasonable.Therefore，the judgment of the first instance ordered Yunnan Honghe Company to cease their infringement and indemnify the plaintiffs for losses of RMB 10 million.Yunnan Honghe Company filed an appeal to the Guangdong High People's Court，and the court of the second instance affirmed the judgment of the first instance.Against the second instance judgment，Yunnan Chengtou Company filed a petition to the SPC for a retrial.The SPC issued a ruling to review and retry the case on October 21,2008.During the retrial and investigation，the SPC ordered the two respondents to present evidence proving that they had truly used the trademark‘红河红’to produce and sell products，and evidence that could support their reputations.However，they failed to submit such evidence，and the SPC subsequently held that‘红河红’and‘红河红’did not constitute similar trademarks in the sense of trademark infringement.Yunnan Honghe Company's use of‘红河红’did not infringe upon the respondents'exclusive right to trademark.Thus，the SPC delivered a ruling on April 8,2009，reversing the judgments of the first and second instances and dismissing all of the claims of the Taihe Investment Company and Ji'nan Honghe Sales Department.

The SPC retried the case and held that，when determining whether or not infringement is constituted，besides comparing the similarity of the overall structure of the words，pronunciation，meaning，etc.of the trademarks，consideration should be given to the factor of whether such similarity would cause confusion in the market.Furthermore，the significance and actual use of the relevant trademark，whether an illegitimate intent was involved，etc.，should also be considered in reaching a comprehensive determination.As to this case，the registered trademark‘红河红’is the name of an administrative region at the county level and a renowned river，so its significance as a trademark is weak and there is no evidence proving that its significance has been enhanced through actual use as a trademark.Consumers would not associate‘红河红’beer with the respondents as a result of the weak identifying function of the respondents'trademark.On the contrary，‘红河红’has enjoyed a certain market popularity and formed a distinctive meaning of goods identification through its long-term and continuous use by Yunnan Honghe Company，resulting in an obvious overall difference from the trademark‘红河’.From the perspective of the awareness of general consumers，it is easy to distinguish the origin of the‘红河红’beer，thus，it is insufficient to cause confusion and misattribution.In respect of the actual use of Yunnan Honghe Company and the trademark‘红河红’on its bottle sticker and exterior packaging，it did not have subjective illegitimate intention to cause confusion with the respondents’registered trademark‘红河’.Based on the aforesaid factors，the SPC held that the two trademarks did not constitute similar trademarks.Yunnan Honghe Company's act of using the trademark‘红河红’did not infringe upon the respondents’exclusive right to trademark use.

18.Consideration of the Actual Use of Trademarks when Determining the Similarity of Trademarks

In the trademark exclusive right infringement dispute case of Luzhou Millennium Liquor Industry Co.，Ltd.（Millennium Liquor Company），Sichuan Zhuge Brewery Co.，Ltd.（Zhuge Brewery Company）and Sichuan Zhugeliang Liquor Co.，Ltd.（Zhugeliang Liquor Company）v.Sichuan Jiangkouchun Liquor Industry（Group）Co.，Ltd.（Jiangkouchun Group）and Zhou Wen and Yan Dequan（defendants in original trial）［（2007）MSJZ No.37-1］，the SPC defined that the actual use of the trademark，in particular prior use and concrete ways of use etc.，should be taken into account when determining the similarity of trademarks.

The basic facts of the case are as follows：Millennium Liquor Company was registered and incorporated on November 12,1999，and the assignment of its registered trademark‘诸葛亮’（Chinese characters）was approved in June 2002.‘诸葛亮’is the trademark wording reading horizontally from left to right，and certified to be used on goods of Class 33：alcoholic beverages（except beers），rice alcohol，spirits（beverages），rice wine，wine，edible alcohol，aperitifs，brandy，and spirit with fruit extracts（including alcohol）.Millennium Liquor Company started using the trademark on October 28,2002，and reached a contract on the licensed use of the trademark with Zhugeliang Liquor Company（which was registered and established on September 28,2003，according to the materials for registration with the Administration for Industry and Commerce）on June 15,2003，permitting the latter to use the trademark‘诸葛亮’.On August 1,2003，Zhuge Brewery Company was founded and began to engage in making‘诸葛酿’liquor.On November 20,2003，Millennium Liquor Company signed a contract for the licensed use of the trademark‘诸葛亮’with Zhugeliang Liquor Company，granting the latter the right to use the trademark.On April 25,1999，Jiangkouchun Group（formerly the Sichuan Pingchang Distillery）signed a product development agreement with an outsider to jointly develop‘诸葛酿’spirit and use the mark‘诸葛酿’（Chinese characters）on their products.On June 5,1999，Jiangkouchun Group formally launched‘诸葛酿’spirit in Guangdong.From 2002 to 2004，‘诸葛酿’spirit produced by Jiangkouchun Group was mainly sold in Guangdong，Sichuan，Hunan and other regions，saw a good sales volume and created a certain influence and reputation in some southern areas of China.The mark‘诸葛酿’used by Jiangkouchun Group on its products consists of traditional Chinese characters，mixing the calligraphy of the Wei Dynasty and official scripts，and surrounded by stamps with an outer frame.On September 24,2009，Millennium Liquor Company，Zhuge Brewery Company and Zhugeliang Liquor Company（Millennium Liquor Company et al.）filed a lawsuit before the Changsha Intermediate People's Court of Hunan Province to sue Jiangkouchun Group，seeking a ruling for the defendant to cease its infringement and compensate for the losses thus incurred.Jiangkouchun Group lodged a countercharge on the grounds that the trademark‘诸葛亮’infringed upon its famous trademark‘诸葛酿’and constituted unfair competition.The court of first instance thought that‘诸葛酿’spirit enjoyed a unique and well-known name as goods，but as‘诸葛亮’himself was a historical figure，it was uncreative and of weak significance as a trademark.When paying due attention，general consumers could not confuse the defendant's‘诸葛酿’spirit with the plaintiff's registered trademark‘诸葛亮’，nor assume that‘诸葛酿’spirit was produced and made by the plaintiff，and thus could not causeconfusionandmisunderstanding.Therefore，‘诸葛酿’spiritof Jiangkouchun Group did not infringe upon the exclusive trademark use rights of Millennium Liquor Company et al.The fair and legitimate use of the registered trademark‘诸葛亮’by Millennium Liquor Company et al.constituted neither the infringement of the unique name of‘诸葛酿’spirit，nor unfair competitive conduct.The court thus dismissed the claims of both the plaintiff and the defendant.Both Millennium Liquor Company et al.and Jiangkouchun Group filed appeals against the judgment.In the second instance，the Hunan High People's Court ruled to dismiss both appeals and uphold the judgment of the first instance.Millennium Liquor Company et al.refused to accept the judgment of the second instance and filed an appeal to the SPC for retrial.The SPC made a retrial judgment on January 16,2009，rejecting their petition.

After its investigation，the SPC considered that comprehensive consideration should be given to relevant factors when determining whether the registered trademarks‘诸葛酿’and‘诸葛亮’constituted similar trademarks in the meaning of trademark infringement.First，they were compared in terms of their pronunciation，word conformation，word style and meaning.‘诸葛亮’and‘诸葛酿’were indeed similar in regard to their pronunciation and word conformation.However，in respect of the word style，‘诸葛亮’ran horizontally from left to right in general boldface，while‘诸葛酿’ran vertically from top to bottom in traditional Chinese characters，mixing the calligraphy of the Wei Dynasty and official scripts，and surrounded by stamps with an outer frame，which was obviously different from that of‘诸葛亮’in concrete ways of use.As for the meanings，‘诸葛亮’itself was a historical figure and had the specific meaning of being sensible and resourceful，while‘诸葛酿’consisted of‘诸葛’and‘酿’rather than an independent term，which denoted the liquor itself，and was thus completely different from the meaning of‘诸葛亮’.As to this case，‘诸葛亮’enjoyed a unique particular meaning，which played an important role in analyzing and comparing the similarities between the registered trademark‘诸葛亮’and the goods name‘诸葛酿’，and thus the relevant public could easily distinguish them.Second，consideration should be given to the significance of the registered trademark‘诸葛亮’and its actual use.‘诸葛亮’did not have a strong significance in general cases due to its inherent unique meaning，except that it was used as a registered trademark on the goods of liquor.Before being acquired by Millennium Liquor Company，the trademark‘诸葛亮’was not actually used and had no reputation.Furthermore，Millennium Liquor Company failed to provide evidence proving that‘诸葛亮’enjoyed strong significance after it had acquired and used it.Under such circumstances，the trademark‘诸葛亮’had a relatively repulsive force to the similar trademark.Although‘诸葛酿’was similar to‘诸葛亮’in both the pronunciation and word conformation，this didn’t suffice to determine that it constituted a similar trademark in the sense of the infringement of exclusive trademark use rights.Moreover，Jiangkouchun Group had used‘诸葛酿’as the name of its goods before the trademark‘诸葛亮’was registered，so it had no bad intention of exploiting‘诸葛亮’.Besides，‘诸葛酿’spirit had formed a preliminary scale，enjoyed a relatively high reputation in Guangdong，Sichuan and Hunan Provinces，and was known to the relevant public before the trademark‘诸葛亮’was registered，thereby acquiring a certain reputation and significance，and forming the function of identifying the origin of goods.For these reasons，according to the font and the concrete ways of use of‘诸葛酿’，and the weak significance of‘诸葛亮’as a trademark，relevant members of the public paying due attention could not confuse or misunderstand them.

19.MeaningofTrademarkUseintheSenseofTrademark Infringement

Article 52 of the Trademark Law stipulates that the use of marks identical or similar to a registered trademark on the same or similar goods without the permission of the trademark registrant shall constitute the infringement of the exclusive rights of trademark.However，the use of trademark in the sense of trademark infringement shall take the function of identifying the origin of the mark and manufacturer as necessary conditions.

In the exclusive trademark right infringement dispute case of Pfizer Products Inc.（Pfizer Company）and Pfizer Pharmaceuticals Co.，Ltd.（Pfizer Pharmaceuticals Company）v.Jiangsu Lianhuan Pharmaceutical Co.，Ltd.（Lianhuan Company），and the defendant in the original trial Guangzhou Welman Pharmaceutical Co.，Ltd.（Welman Company）［（2009）MSZ No.268］，the SPC clarified that the use of any mark that could not play a role in identifying the origin of the mark and manufacturer should not be recognized as the use of a trademark.Another's use of the mark in this way shall constitute neither the act of using the identical or similar trademark，nor the act of infringing upon the trademark rights.

The basic facts of the case are as follows：On May 28,2003，the Trademark Office approved the Pfizer Company to register the blue diamond-shaped tridimensional trademark on goods of Class 5：medical preparations.On March 10,2005，the Pfizer Company authorized Pfizer Pharmaceuticals Company to use the tri-dimensional trademark.On June 2,1998，Welman Company applied to the Trademark Office for the registration of the word trademark‘Viagra’（‘伟哥’in Chinese characters）to be used on drugs for human use.The trademark was primarily approved by the Trademark Office upon review in 2002.In April 2004，the trademark was assigned to Guangzhou Welman New Drugs Development Center Co.，Ltd.On January 5,2005，the Guangzhou Welman Company and Lianhuan Company signed a trademark license contract authorizing Lianhuan Company to use‘Viagra TM’on its phentolaminemesilate dispersible tablets.Phentolaminemesilate dispersible tablets made by Lianhuan Company were packed in boxes with opaque interior packaging materials and the words‘伟哥’，‘TM’and‘Jiangsu Lianhuan Pharmaceutical Co.，Ltd.’.The tablets were baby blue in a diamond shape approximating to the compass shape and were marked with‘伟哥’and‘TM’.On October 11,2005，the Pfizer Company and Pfizer Pharmaceuticals Company filed a lawsuit on the grounds that the aforesaid acts infringed upon its exclusive right of trademark use，requesting the court to order Beijing New Concept Company to stop selling the drugs，and Lianhuan Company and Welman Company to stop making and selling the allegedly infringing products，stop using the mark involved therein and assume the civil liabilities arising therefrom.Beijing No.1 Intermediate People's Court ascertained that the acts of Lianhuan Company and New Concept Company had infringed upon the Pfizer Company's exclusive right of trademark use and should bear the liabilities of infringement.Lianhuan Company refused to accept the judgment and appealed to the Beijing High People's Court.In the second instance，the Beijing High People's Court held that although the allegedly infringing drugs were similar to the tri-dimensional trademark involved therein，but consumers could neither confuse them when buying the drugs，nor believe that the drugs have a specific relation with those of the plaintiffs.The acts of Lianhuan Company et al.did not infringe upon the Pfizer Company's exclusive right of trademark use，nor harm the interests of Pfizer Pharmaceuticals Company.Thus，Beijing High People's Court reversed the first instance judgment and dismissed the plaintiffs'claims.Against the judgment of the second instance，the plaintiffs filed an appeal to the SPC for a retrial.The SPC made a retrial judgment on June 24,2009，rejecting their petition for retrial.

After its investigation，the SPC considered that although the packaging of‘phentolaminemesilate dispersible tablets’made by Lianhuan Company matched the corresponding diamond-shaped protuberance and‘伟哥’on the box had the khaki diamond-shaped graphics substrate，consumers purchasing the drugs could not identify the exterior shape according to these elements.Because the tablets were packed in opaque materials，their color and shape could not supply the function of identifying the origin of the goods and manufacturer，which could not be regarded as use in the sense of infringing upon the exclusive right of trademark use.Consumers could neither confuse the drugs with the involved tri-dimensional trademark of the Pfizer Company，nor believe that the drugs had a specific relation with the Pfizer Company and Pfizer Pharmaceuticals Company，even though the drugs were identical or similar to the tri-dimensional trademark in the exterior shape.

20.Consideration of Historical Factors in Judging Fair Use of Trademarks

Fair use of trademark is not only a restriction on the scope of the exceptions of trademark rights，but also the key to correctly demarcating the boundary of trademark rights and safeguarding legitimate public interest.In 2009，through the ruling of an individual case，the SPC further clarified the considerations that should be considered when judging the fair use of trademarks，and specified the judgment standards for the acts of the fair use of trademarks.

In the exclusive trademark right infringement dispute case of Goubuli Group Co.，Ltd.（Goubuli Group）v.Tianfengyuan Restaurant of Ji'nan Daguanyuan Shopping Center（Tianfengyuan Restaurant）［（2008）MSJZ No.10-1］，the SPC held that，when judging whether the act of using another's registered trademark constituted fair use，full consideration should be given to relevant historical factors，and necessary and moderate restrictions should be placed on the acts according to the principle of fairness.

The basic facts of the case are as follows：the predecessor of Goubuli Group registered the word trademark‘Goubuli’（‘狗不理’in Chinese characters）on October 7,1994，and the trademark was certified to be used for service items in Class 42：restaurant，catering，fast-food restaurants and self-service restaurants.On December 29,1999，the trademark was rated as a well-known trademark.Established in 1973，Tianfengyuan Restaurant mainly traded in steamed dumplings stuffed with pork and soup，and increased the operating items of‘Goubuli steamed dumplings stuffed with pork and soup’in September and November 1986.Tianfengyuan Restaurant had continually traded in the snack‘Goubuli’steamed dumplings since the 1980s，and it was honored as a‘Famous（Traditional）Snack of Ji'nan’in 2005 by the Trade Bureau of Ji'nan and Restaurant Association of Ji'nan.Also in 2005，‘Goubuli steamed dumplings stuffed with pork and soup’were included in the Ji'nan Consumption Guide published by the Consumers Association of Ji'nan.Time-Honored Brands in Ji'nan published in August 1990 mentioned that，they had always had a ready market from the 1940s when‘Goubuli’steamed dumplings in Ji'nan were initially launched to 1948 when Ji'nan was liberated.Especially after the liberation of Ji'nan，Tianfengyuan Restaurant saw a surplus of customers every day.Moreover，Tianfengyuan Restaurant had always hung a tablet bearing‘Goubuli steamed dumplings stuffed with pork and soup’over the gate of its restaurant，and also hung a black tablet near the stairs of the 1 floor bearing the three Chinese characters for‘Goubuli’.On October 16,2006，Goubuli Group lodged a lawsuit alleging that Tianfengyuan Restaurant had infringed upon its exclusive right of trademark use，and seeking for the court to order Tianfengyuan Restaurant to immediately cease its trademark right infringement，eliminate the adverse effects and compensate for the losses arising therefrom.In the first instance，Ji'nan Intermediate People's Court of Shandong Province ascertained that Tianfengyuan Restaurant had a long history of trading in‘Goubuli steamed dumplings stuffed with pork and soup’in its particular territory，and its business territory and service items had never changed.Besides，Tianfengyuan Restaurant had never used the specific writing style of Goubuli Group's‘Goubuli’trademark，therefore its use of‘Goubuli’for introducing and promoting its steamed dumplings stuffed with pork and soup did not infringe upon the exclusive right to use the registered service trademark‘Goubuli’of Goubuli Group.The court thus rejected the claims of Goubuli Group，which filed an appeal against the judgment.In the second instance，the High People's Court of Shandong Province held that Tianfengyuan Restaurant used‘Goubuli’as the name of its dish，and had a long history of trading in‘Goubuli steamed dumplings stuffed with pork and soup’in that particular region of Ji'nan.Tianfengyuan Restaurant did not intentionally use the three Chinese characters for‘Goubuli’for market competition after the trademark‘Goubuli’was registered by Goubuli Group and determined as well-known.Tianfengyuan Restaurant did not violate the commercial ethics generally recognized in the market，and did not make use of the reputation of the registered service trademark‘Goubuli’of Goubuli Co.，Ltd.in bad faith or in a hitchhiking way.Therefore，Tianfengyuan Restaurant's use of‘Goubuli’was a prior use.However，its use of the three Chinese characters for‘Goubuli’on its tablets，wall advertisements and direction signs，and distinctive use of the three Chinese characters for‘Goubuli’or use of those characters separately from the trade name‘Tianfengyuan Restaurant’，could easily confuse consumers.To standardize the market order and fully protect the well-known trademark‘Goubuli’of Goubuli Group，Tianfengyuan Restaurant should not use the three Chinese characters for‘Goubuli’on its tablets and wall advertisements，but may still keep the dish named‘Goubuli Steamed Dumplings Stuffed with Pork and Soup’.Hence，the High People's Court of Shandong Province delivered a verdict revoking the judgment of the first instance，ordering Tianfengyuan Restaurant to stop using the three Chinese characters for‘Goubuli’on its tablets and wall advertisements or otherwise using them for publicity purposes，and rejecting the other claims of Goubuli Group.However，Goubuli Group refused to accept the judgment of the second instance and filed an appeal to the SPC for a retrial.The SPC made a retrial judgment on February 5,2009，rejecting the petition.

The SPC held that，since Tianfengyuan Restaurant had continuously used‘Goubuli’as the name of its dish for a long period before Goubuli Group registered the service trademark of‘Goubuli’，Tianfengyuan Restaurant may keep‘Goubuli’as the name of its dish，but，according to the principle of fairness，it could not expand the original scope of use.

21.Judgment of Fair Use of Descriptive Trademark

Due to its descriptive nature，a descriptive trademark cannot function as a mark to directly identify the origin of goods，thus greatly restricting the scope of rights to prohibit the use of the trademark by others.Article 49 of the Implementation Regulation of Trademark Law stipulates，‘Where a registered trademark contains the generic name or model number of the goods concerned or a device depicting the goods，directly represents the quality，primary raw materials，functions，intended purposes，weight，quantity，or other characteristics of the goods，or contains a place name，the owner of the exclusive right to use that trademark shall have no right to prohibit any fair use of the trademark by others.’

In the exclusive trademark right infringement dispute case of Zhangzhou Hongning Home Chemicals Co.，Ltd.（Hongning Company）v.Zhangzhou Pien Tze Huang Pharmaceutical Co.，Ltd.（Pien Tze Huang Company）［（2009）MSZ No.1310］，the SPC held that when a registered trademark is a descriptive term，any other producer's use of such trademark with good intentions or in the objective description of its goods accompanied by the necessary remarks.If the aforesaid use of the trademark does not lead the relevant public to confuse the origin of the goods，it shall be regarded as fair use.Business practices and other factors can be referred to when judging whether such use is of good intentions and necessary.

The basic facts of the case are as follows：Pien Tze Huang Company owned the registered trademark‘PIEN TZE HUANG’（‘片仔癀’in Chinese characters）that was approved to be used on toothpaste and cosmetics in Class 3 and medicine in Class 5.In 1999，‘片仔癀PIEN TZE HUANG’used for medicine was rated as well-known.Hongning Company mainly produced and sold 27 types of cosmetics and daily-used chemical necessities，including‘Lizhi Brand Pien Tze Huang Pearl Cream（Lucent）’and‘Pien Tze Huang Special-effect Toothpaste’.All of the names of the products contain the words‘Pien Tze Huang’.Furthermore，Hongning Company highlighted‘片仔癀’or‘PIEN TZE HUANG’on the product packages，and the font was basically the same as that of Pien Tze Huang Company's registered trademark.On April 29,2007，Pien Tze Huang Company sued Hongning Company and sought for the latter to be ordered to cease their infringement，make a public apology and compensate for losses thus incurred.In the first instance，the Zhangzhou Intermediate People's Court of Fujian Province held that Hongning Company had infringed upon Pien Tze Huang Company's exclusive use rights of the registered trademark.After this judgment was appealed，the High People's Court of Fujian Province upheld the judgment of the first instance.Hongning Company filed an appeal to the SPC for a retrial.The SPC made a retrial decision to reject the appeal on October 27,2009.

The SPC considered‘Pien Tze Huang’to be a generic term of medicine.If the allegedly infringing product contains the constituent of‘Pien Tze Huang’，and Hongning Company had used the term out of good intentions or in the objective description of its goods，and given the necessary remarks to some extent，and such use could not lead the relevant public to confuse the origin of the goods，it could be regarded as fair use of the trademark.Business practices and other factors could be referred to when judging whether such use was of good intentions and necessary.According to business practices，Hongning Company should give necessary remarks in an appropriate manner to indicate that its goods contain the constituent of‘Pien Tze Huang’.However，in this case，Hongning Company highlighted‘片仔癀’or‘PIEN TZE HUANG’in a notable position on the goods package，and obviously larger than its own trademark and other remarks.Moreover，the font was basically the same as that of the registered trademark of Pien Tze Huang Company.Such an act exceeded the boundary of fair use in statements or objective descriptions of the goods，which could not be out of good faith and may lead the relevant public to confuse the origin of the goods，for the registered trademark of Pien Tze Huang Company had built a very high reputation.Hence，Hongning Company's claim of fair use was untenable.

22.Influence of Intention and Acts of Mark Use on the Acquisition of Protection for Unregistered Trademarks

An unregistered mark can be subject to certain legal protection according to the mark's reputation through use.However，the party who claims the trademark must conduct actual acts of using the mark and have the intention of taking the mark as its trademark.

In the case of dispute over unfair competition and infringement upon an unregistered well-known trademark Pfizer Inc.（Pfizer Company）and Pfizer Pharmaceuticals Co.，Ltd.（Pfizer Pharmaceuticals Company）v.the Bankruptcy Liquidation Team of Shanghai Oriental Pharmaceutical Co.，Ltd.（Oriental Company）and the defendants in the original trial Beijing Health New Concept Drug Store Co.，Ltd.（New Concept Company）and Guangzhou Welman Pharmaceutical Co.，Ltd.（Welman Company）［（2009）MSZ No.313］，the SPC defined that the retrial petitioners had clearly asserted that they had never used a certain mark within the territory of China；another's act of promoting such a mark could reflect the true meaning of taking such a mark as a trademark，so it could be regarded as neither a trademark，nor an unregistered well-known trademark.

The basic facts of the case are as follows：on November 28,1997，Trademark No.1130739，‘VIAGRA’in words，of Pfizer Pharmaceuticals Company was approved to be registered in China.On January 28,2001，the trademark was transferred to Pfizer Products Inc.（Pfizer Products）.On September 29,1998，Health Weekly reported that‘伟哥（Viagra）’was the trade name of‘Sildenafil Citrate’.The abstracts of reports in more than 20 newspapers and magazines including Haikou Evening News from October 16,1998 to September 28,2003 referred to‘Viagra’as‘伟哥’，and reported that the manufacturer of‘伟哥（VIAGRA）’was the Pfizer Company or Pfizer Pharmaceuticals Company.These reports mostly introduced the effects，sales and side effects of‘Viagra’and made relevant comments.Page 1,601 of the New Age Chinese-English Dictionary（2000 Version）and Page 1,232 of the New Age Chinese-English Dictionary（2002 Version）explain that‘伟哥’can also be called‘威尔刚Viagra’or‘万艾可Viagra’，and was an American drug trademark used for treating male dysfunction.On January 28,2001，the Pfizer Company transferred the word trademark‘VIAGRA’to Pfizer Products.On March 17,2005，attorney of the CCPIT Patent and Trademark Law Office Qiu Hongyan purchased through notarization four boxes of‘伟哥’that were made by the Oriental Company and sold by the New Concept Company.The Oriental Company was authorized by Welman Company to use the trademark‘伟哥’.On October 11,2005，the Pfizer Company and Pfizer Pharmaceuticals Company filed litigation before Beijing No.1 Intermediate People's Court on the grounds of unfair competition and infringement upon an unregistered well-known trademark.In the first instance，the plaintiffs conceded that they had never used‘伟哥’in mainland China.The court held that the plaintiffs were unable to prove that‘伟哥’was their unregistered well-known trademark，thus they enjoyed no legitimate rights and interests regarding that trademark，and rejected all of their claims.The plaintiffs refused to accept this judgment and filed an appeal.The Beijing High People's Court reaffirmed the cause of judgment and upheld the first instance judgment.Against the judgment of the second instance，the Pfizer Company and Pfizer Pharmaceuticals Company filed a petition to the SPC for a retrial.The SPC made a retrial judgment on June 24,2009，dismissing the appeal.

After its investigation，the SPC held that the Pfizer Company transferred the word trademark‘VIAGRA’to Pfizer Products on January 28,2001.Thus，the Pfizer Company was not the owner of the trademark‘VIAGRA’in this case，and did not enjoy the rights and interests regarding the word trademark‘VIAGRA’and‘伟哥’（Chinese translation of the words trademark‘VIAGRA’）that it claimed.Although many media outlets reported‘伟哥’as‘Viagra’，those reports were not the drug publicity promoted by the Pfizer Company and Pfizer Pharmaceuticals Company.Moreover，Pfizer Pharmaceuticals Company announced that‘万艾可’（Chinese translation of‘VIAGRA’）was its formal trade name.They conceded that they had never used‘伟哥’in mainland China.Hence，the media's report of‘伟哥’as‘Viagra’could not prove that the Pfizer Company and Pfizer Pharmaceuticals Company had used‘伟哥’as their trademark.The existing evidences could not prove that‘伟哥’was their unregistered trademark or unregistered well-known trademark.