Use of recycled beer bottle without original embossed trademark deemed illegal

Facts
CNIPA reply
Comment


In November 2019 the China National Intellectual Property Administration (CNIPA) stated that when a trademark embossed on a bottle cannot be removed, recyclers should ensure that they cover said trademark with another label to avoid the likelihood of confusion.

Facts

The CNIPA was recently asked by the administrations for market regulation in Shandong and Henan provinces about recycling beer bottles with an original trademark embossed in the glass that could not be removed.

CNIPA reply

In its 20 November 2019 reply, the CNIPA indicated that when a trademark embossed on a bottle cannot be removed, the recycler should ensure that it covers the embossed trademark with another label

The CNIPA added that affixing another label bearing another trademark on a bottle, leaving the original embossed trademark visible, is insufficient to avoid confusion. Due to the original trademark's distinctiveness and reputation (Qingdao Beer 青岛啤酒), consumers could believe that the owner of the label has some kind of relationship (eg, investment or licence) with the original trademark owner. The CNIPA classifies this type of infringement under Article 57(7) (eg, "other type of infringement").

Comment

The CNIPA's reply brings to mind a previous Supreme People's Court (SPC) decision in Budweiser v Xiyingmen ([2014] MSZ 1182, 28 November 2014), which was selected as one of the top 50 cases of 2014. This case was submitted to the SPC in a retrial application against a second-instance judgment by the Shanghai High Court, which had found that the recycler had committed an infringement by not covering Budweiser's embossed trademark with its own label. In principle, the SPC ruled that, even if a recycler does not cover an embossed trademark, there is no infringement as long as it uses its own trademark and label. However, in this particular case, the SPC confirmed the infringement finding of the Shanghai High Court because the recycler had used a similar decoration to Budweiser.

The reply delivers a positive signal for the owners of trademarks embossed on bottles. Notably, the CNIPA used the same language as the Shanghai High Court in the Budweiser case, which had reproduced the Trademark Office's reply to the Jiangsu administration for industry and commerce in 1995 (SBG (1995) 373).

For further information on this topic please contact Paul Ranjard, Hui Huang or Binbin Du at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email (ranjard@wanhuida.com, huanghui@wanhuida.com or dubinbin@wanhuida.com). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.