China: Strengthening Protection Of Well-Known Trademarks

Last Updated: 28 June 2017
Article by Ling Zhao

--- ExxonMobil Obtains A Compensation of RMB4,500,000 (Typical Case of Beijing Intellectual Property Court)


(2014) Jing Zhi Min Chu Zi No. 143 Judgement Of First Instance of Beijing Intellectual Property court on Case of Dispute over Infringement of Exclusive Trademark Use Right between the Plaintiff XX Company and the Defendants Beijing Beinongguoxin Technology Development Co.,Ltd., Weifang Zhongke Agricultural Technology Development Co.,Ltd., Zhang Zhimin and Zhang Dandan

[Brief Introduction to the Case]

The Plaintiff XX Company lodged a complaint to Beijing Intellectual Property Court by the reason that, its priorly registered trademarks "美孚" and "MOBIL" constituted well-known trademarks on lubricant oil goods after long-term broad use and publicity in China, and the Defendant's trademarks " ", "美孚" and "MOBIL" ("Infringing Trademarks") used on the goods pes-ticides and fertilizers infringed its prior trademark right. Beijing Intellectual Property Court found after trial that, both Beinong Company and Zhongke Company did the behaviors of producing, selling and promoting the complained Mobil series goods. Zhang Zhimin, as the registration applicant and licensed user of the Infringing Trademark " ", committed the infringing behavior together with Beinong Company and Zhongke Company, and so shall assume several and joint liabilities. Zhang Dandan, as the filed operator and actual operator of the infringing website, implemented the complained behavior together with the other Defendants through work division and cooperation, and shall also assume infringement responsibilities together with other Defendants.

The Court held that, from 2012 to the date when the Plaintiff lodged a complaint in this case, the Plaintiff's trademarks "美孚" and "MOBIL" constituted well-known trademarks used on lubricant oil goods. Both the complained goods and the Plaintiff's lubricant oil goods belonged to chemicals, they had certain degree of relevance, and the use of Infringing Trademarks would induce the legal consequence of cross-class confusion among some of relevant public. Meanwhile, the lubricant oil goods on which the Plaintiff's well-known trademarks are used will possibly be applied to household goods like cars, etc. with ordinary social public as consumers, while the relevant public using the complained goods like fertilizers and pesticides, etc. are also covered in the ordinary social public, so the relevant public of the complained goods have cognition with the trademarks "MOBIL" and "美孚" on lubricant oil. In consideration that "美孚" belongs to a fabricated Chinese phrase, and after use, "MOBIL" and "美孚" have formed corresponding relationship and have had very high popularity, so under such circumstances, the use of Infringing Trademarks would induce the legal consequence that the distinctiveness of the Plaintiff's well-known trademarks is diluted.

Finally, the Court judged that the four Defendants should assume several and joint liabilities for the damages and reasonable expenditure of RMB4,500,000 claimed by the Plaintiff.

Strengthening Protection of Well-Known [Abbreviature of Adjudication]

1. The Plaintiff claimed for damages based on its exclusive right to use well-known trademarks. The use of Infringing Trademarks will possibly induce the legal consequences of not only the cross-class confusion of relevant public, but also the dilution ofthe distinctiveness of the Plaintiff's well-known trademarks. The generation of confusion surely means that each Defendant improperly uses the popularity of the Plaintiff's trademarks, and the generation of dilution means the devaluation of the Plaintiff's trademarks, so the complained behavior will not only bring about losses to the Plaintiff, but also bring about benefits to the Defendant. Therefore, even though the Defendants did not use the complained trademarks on lubricating oil goods, each Defendant shall still assume the responsibility to compensate the Plaintiff for their complained behaviors.

2. Based on the fact that the Defendants alleged they ranked among the Top 100 Pesticide Enterprises in 2009, Top 50 Pesticide and Insecticide Enterprises in China in 2010, as well as the Top 50 Pesticide (Insecticide, Bactericide, Herbicide) Enterprises in China in 2012 and 2013, it may be presumed that, over the past two years, their annual gross sales of pesticide goods should be more than RMB100,000,000, far more than the compensation amount of RMB4,500,000 claimed by the Plaintiff, and so the Court fully supported the claims.

[Typical Significance]

Beijing Intellectual Property Court considered that, the typical significance of this case rests with that, the on-demand recognition and protection of well-known trademarks shall be considered from the aspects of stopping infringement and compensating losses in civil litigations. Generally, where a trademark registered by the trademark registrant on identical or similar goods is enough to make this trademark registrant obtain the protection which is of the same level as that for a well-known trademark, then it will be unnecessary to provide protection of well-known trademark for the trademark right holder. The protection of the same level shall be considered from at least two aspects, namely stopping infringement and compensating losses. Where the trademark registered by the trademark registrant on identical or similar goods could only stop infringement behaviors, but could not obtain economic compensation, then it shall be recognized that, the trademark registered on identical or similar goods cannot obtain protection of the same level as a well-known trademark, and in line with the on-demand recognition principle, it will be necessary to provide the protection of well-known trademark level for the trademark registrant.

Note: This decision was appealed to Beijing High Court.

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.