China: Comments On DUCK KING Trademark Re-Trial Listed As No. 7 Of China 2013 Top 10 Innovative IP Cases

The DUCK KING trademark re-trial is listed as No. 7 of China 2013 Top 10 Innovative IP Cases (published by the Supreme People's Court on April 21, 2014).

The English translation below [CASE BRIEF and INNOVATIVE SIGNIFICANCE] is prepared by Beijing East IP Law Firm for reference merely, based on Chinese Language Version published by the Supreme People's Court. Beijing East IP Law Firm also provides comments and analysis on this case.


Beijing Duck King Roast Duck Restaurant Co., Ltd. v. Shanghai Huaihai Duck King Roast Duck Restaurant Co., Ltd. &Trademark Review and Adjudication Board (TRAB) [Supreme People's Court Administrative Ruling (2012) Zhi Xing Zi No. 9]

Shanghai Huaihai QuanJuDe Roast Duck Restaurant Co., Ltd. ("Shanghai QuanJuDe"), as the predecessor of Shanghai Huaihai Duck King Roast Duck Restaurant Co., Ltd. ("Shanghai Duck King"), filed the trademark application for registration of "DUCK KING in Chinese" ("Opposed Mark" in this specific case) designating services of "restaurant, etc." in Class 43 before the Trademark Office under the State Administration of Industry and Commerce ("CTMO") on January 29, 2002. The CTMO rejected the application based on the ground that the Opposed Mark merely describes the content and characteristics of the services. Shanghai QuanJuDe appealed for review before the Trademark Review and Adjudication Board ("TRAB"), and the TRAB ruled that the Opposed Mark shall be preliminarily published for opposition. During the opposition period, Beijing Duck King Roast Duck Restaurant Co., Ltd. ("Beijing Duck King") filed an opposition on May 31, 2005. Beijing Duck King's main argument was as follows: "DUCK KING in Chinese" is the trade name and the prior used trademark with certain influence owned by Beijing Duck King, and registration of the Opposed Mark violated Article 31 of the Chinese Trademark Law, and thus shall not be approved. The CTMO accepted the opposition grounds raised by Beijing Duck King, and ruled that the Opposed Mark shall not be approved. Shanghai QuanJuDe was unsatisfied with the CTMO decision and appealed to the TRAB, and the TRAB rendered its decision on June 18, 2007, approving the registration of the Opposed Mark. Beijing Duck King brought an administrative litigation against the TRAB decision before the Beijing First Intermediate Court. Beijing First Intermediate Court rendered the decision of the first instance, and held that "DUCK KING in Chinese" is the core part of Beijing Duck King's trade name and the prior used trademark with certain influence, Shanghai QuanJuDe filed the application of the Opposed Mark in bad faith, and thus the Opposed Mark shall not be approved for registration.  Beijing First Intermediate Court revoked the TRAB decision. Shanghai QuanJuDe appealed to Beijing High Court, and Beijing High Court rendered the decision of the second instance, affirming the first instance's decision of revoking the TRAB decision, and ordered the TRAB to render a new decision. Shanghai QuanJuDe appealed to the Procuratorial Organs, and the Supreme People's Procuratorate then counter-appealed to the Supreme People's Court against the the decision of the second instance court. The Supreme People's Court ordered Beijing High Court for a re-trial. On December 8, 2010, Beijing High Court rendered Administrative Judgment (2010) No. 53, revoked both the first instance's decision and the second instance's decision, and maintained the TRAB decision. Beijing Duck King appealed for a second re-trial before the Supreme People's Court, but the second re-trial request was dismissed by the Supreme People's Court after examination.


This case involves the issue of interpreting the provision of "unfair means shall not be used to preemptively register the prior trademark with certain influence another person has used" prescribed by Article 31 of the Chinese Trademark Law. In this specific case, the Supreme People's Court expressly clarified that "unfair means" refers to the situation that the applicant of the later trademark knows or should have known the prior trademark, AND the trademark applicant has the bad faith of obtaining benefits from the reputation of such prior trademark. Generally, if the prior trademark has certain influence, while the applicant of later trademark knows or should have known said prior trademark, and the applicant still files the trademark application for registration, it can be presumed that such applicant has the intention to invade the goodwill of others. That is, the above two factors generally overlap. However, the special circumstances such as this specific case are excluded, namely, although the prior trademark has certain influence, while the applicant of later trademark does not have bad faith, it shall not constitute an "unfair means" prescribed by Article 31 thereof.

3. Beijing East IP Law Firm Comments

On April 21, 2014, the Supreme People's Court published the list of China 2013 Top 10 Innovative IP Cases. These Top 10 Innovative IP Cases are selected from over one hundred thousand (100,000) decisions of nationwide courts, which have significant and innovative contribution to the laws and regulations.  Only two trademark cases are selected as Top 10 Innovative IP cases, both of which are trademark administrative re-trials before the Supreme People's Court. Together with another trademark case, the DUCK KING trademark administrative re-trial case represented by Mr. Jason Wang, Partner at Beijing East IP Law Firm, is on the list.

Mr. Jason Wang represented Shanghai Huaihai Duck King Roast Duck Ltd. and have prevailed both of the two administrative re-trials before Beijing High Court as well as the Supreme People's Court. This case is one of the few IP administrative cases that engaged in re-trials twice. The first re-trial is one of a few IP administrative re-trial cases initiated by the Supreme People's Procuratorate and win the case in the end.

This case lasted for more than a decade, exhausted all possible legal procedures prescribed under the law. It began with all the four administrative proceedings, i.e. rejection, rejection appeal, opposition, and opposition appeal, then both the two judicial proceedings (i.e. first and second instances), and then the first re-trial proceeding protested by the Supreme People's Procuratorate and the second re-trial before the Supreme People's Court against the first re-trial decisions.

In this specific case, the Supreme People's Court established and affirmed for the first time the new standard of "Two Elements", that is, both of the two elements of "the knowledge standard" (knew or should have known) and "riding the goodwill standard" (with intention to free ride or invade other's goodwill) shall be cited as criteria indispensable to determine the bad faith of the trademark applicant. This is a significant supplement and improvement to judicial interpretations of the Supreme People's Court regarding the bad faith filing provision prescribed under Article 31 of the Chinese Trademark Law.  [Note: Article 18 of The Supreme People's Court's Opinion on Issues Regarding to the Trial of Administrative Cases of Trademark Authorization Confirmation (FA FA〔2010〕No. 12) prescribes as follows: "If a trademark applicant filing a preemptive registration knows or should know that the trademark is being used and has certain influence by others, then it should be determined to have used unfair means."]

Before the announcement of the Supreme People's Court listing DUCK KING trademark re-trial case as China 2013 Top 10 Innovative IP Cases, Mr. Jason Wang has already conducted comprehensive and in-depth academic researches and studies and published two influential papers on authoritative media on analysis of the DUCK KING trademark case.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.