The CNIPA indicated in November 2019 that when the trademark embossed on the bottle cannot be removed, the recycler should make sure that it covers, with another label, the embossed trademark, to make it invisible and not to create likelihood of confusion.

Facts:

The China National Intellectual Property Administration (CNIPA) was recently asked by the AMR of Shandong and Henan provinces about the possibility to recycle bottles of beer, when the original trademark has been embossed in the glass and cannot be removed.

CNIPA Reply:

In its reply of November 20, 2019, the CNIPA indicated that when the trademark embossed on the bottle cannot be removed, the recycler should make sure that it covers, with another label, the embossed trademark, to make it invisible.

The CNIPA added that affixing on the bottle another label bearing another trademark, leaving the original embossed trademark still visible, is insufficient to avoid confusion.  Because of the distinctiveness and reputation of the original trademark (Qingdao Beer 青岛啤酒), consumers may believe that the owner of the label has some kind of relation (investment, license, etc.) with the original trademark owner. CNIPA classifies this type infringement under article 57(7), e.g. "other type of infringement".

Comments:

The REPLY reminds us of a previous decision of the SPC in Budweiser v Xiyingmen ([2014] MSZ No. 1182, Nov. 28, 2014) which was selected as one of the Top 50 cases of the Year. This case was submitted to the SPC in a retrial application against a second instance judgment made by the Shanghai High Court, which had found that the recycler had committed an infringement for not covering the embossed trademark of Budweiser with its own label.  In principle, the SPC ruled that, even if the recycler does not cover the embossed trademark, there is no infringement as long as he uses his own trademark and label. But, in this particular case, because the recycler had used a similar decoration as Budweiser, the SPC confirmed the infringement finding of the Shanghai High Court.

The REPLY delivers a positive signal for the owners of trademarks embossed on bottles. It can be noted, incidentally, that it used the very same language as the Shanghai High Court in the Budweiser case, who, itself, had reproduced the reply of the Trademark Office to the Jiangsu AIC in 1995 [SBG (1995) No 373].

Authored by Huang Hui, Paul Ranjard & Du Binbin