Recently, the Beijing High People's Court rendered a second-instance judgement in the "Extra (Chinese version)" trademark infringement and unfair competition dispute, which upheld the rulings of the first-instance judgment. This case has aroused widespread concern due to the typical characteristics of infringement lasting for more than 16 years, malicious squatting of multiple similar trademarks and compensation of 50 million RMB in the final trial. The appellate court’s ruling represents a breakthrough by departing from conventional adjudicatory approaches. It innovatively determines that the infringer's use of different infringement marks constitutes continuous and complete infringement acts, and makes a fine division of the base of punitive damages, which provides an important reference for the trial of similar cases.
The second-instance judgment establishes a groundbreaking precedent by unequivocally ruling that when malicious infringers engage in a pattern of repeatedly registering similar trademarks and perpetuating infringement through product rebranding and new trademark filings after each invalidation decision, such conduct shall be legally recognized as a continuous and indivisible course of infringing activity subject to comprehensive liability assessment. This holistic approach expressly breaks the traditional "one case per mark" examination model that required separate evaluation of each individual trademark registration and use, which not only imposed excessive burdens on rights holders but also wasted judicial resources. Instead, this judgment makes an overall evaluation based on the consistency of the nature of infringement, which establishes significant jurisprudential value in combating serial trademark infringement through iterative modifications of infringing marks.
What’s more, the second-instance judgment refines the calculation of punitive damages, clearly dividing the time period before and after May 2014 (the introduction of the punitive compensation system in the Trademark Law). It not only adheres to the principle of non-retroactivity, but also imposes maximum statutory penalties for subsequent acts of willful infringement, reflecting the judicial philosophy of calibrating damages to the degree of bad faith.
This case directly addresses the core issue of insufficient legal deterrence against bad-faith trademark squatting. Despite Wrigley having initiated over 20 trademark opposition and invalidation proceedings, the infringer persistently profited through rotating trademark variations. The final judgment's award of 50 million RMB in damages powerfully demonstrates the judiciary's "zero-tolerance" stance toward source-level infringement. This judgment has effectively cracked down on malicious squatting and intentional infringement of trademarks, and fully reflected fairness and impartiality of Chinese justice and the equal protection of intellectual property rights of foreign enterprises in China. It will greatly strengthen the confidence of Chinese and foreign enterprises in the business environment and the protection of intellectual property rights in the Chinese market.
The second-instance of this case has been heard three times by a professional collegial panel composed of five persons. Confronting numerous challenges in the case, NTD team, armed with solid and profound professional expertise, dissected every legal point with precision. Their rigorous and meticulous work attitude served as a shield, ensuring that no crucial detail was overlooked. Guided by their extensive jurisprudence in complex litigations, they steered the case to a substantively just resolution.
This case was represented by Jenny HUANG and Jane LI from NTD.
Jenny HUANG
Jenny is specialized in legal services related to intellectual property, unfair competition, data protection, corporate compliance, and other fields. Since joining NTD in 2014, Jenny has represented numerous domestic and international clients in handling brand protection strategies and full-process protection of brand operations, including trademark administrative litigation, trademark civil litigation, administrative enforcement, trademark transfer and negotiation, domain name disputes, customs protection, commercial franchising, and commercial arbitration. Many of the cases handled by Jenny have been selected as typical/excellent cases by institutions such as the Beijing Higher People's Court, China Trademark Association, Beijing Trademark Association, and Beijing Xicheng District Lawyer Association. Meanwhile, she has successfully overturned several civil cases in the retrial procedures. Her diligent and professional spirit and rich experience in litigation and arbitration have been recognized by many clients.
Jane LI
Jane LI has been working in NTD since September 2013. She has been providing legal services related to intellectual property for many famous enterprises at home and abroad. Her areas of expertise involve trademark/copyright infringement litigation, unfair competition litigation, trademark administrative litigation, investigation, administrative complaint and raid action, trademark assignment negotiation, border protection, internet infringement monitoring and complaint, copyright registration, domain name dispute and other legal consultation related to intellectual property. In many years of practice, she has represented many famous Chinese and foreign enterprises in the litigation of trademark, copyright and unfair competition disputes.
