By Hansen Tao
In recent years, Chinese courts have continued to strengthen the protection of well-known trademarks, particularly in cases involving “related” products that fall outside the registered scope of protection. A recent judgment issued by the People’s Court of Zengcheng District, Guangzhou, provides a clear illustration of how courts address cross-class infringement in the context of e-commerce and secondary goods.
The decision highlights the increasing judicial focus on market realities, consumer perception, and commercial intent, rather than a purely formal comparison of trademark classes.
Case Overview
The dispute concerned a well-established brand in the automatic mahjong machine industry. The trademark had been recognized as a well-known mark in China since 2010 and enjoyed substantial market recognition among relevant consumers.
The trademark was registered in Class 28, covering automatic mahjong tables and related gaming equipment. It did not extend to accessories such as cleaning agents or power cords.
An online retailer sold mahjong machine cleaning products and power cables on a major e-commerce platform. In its product listings, the retailer used the well-known trademark in product titles and promotional descriptions. The authorized licensee of the trademark initiated legal proceedings, arguing that such use misled consumers and constituted trademark infringement.
Court’s Findings
The court held that the defendant’s conduct constituted trademark infringement and ordered it to cease the infringing use and compensate the plaintiff for economic losses and reasonable enforcement costs.
In reaching this conclusion, the court emphasized that the protection of well-known trademarks is not limited to the registered class of goods. Where specific legal conditions are met, protection may extend to dissimilar products.
Legal Analysis: Key Factors in Cross-Class Protection
Under Chinese judicial practice, cross-class protection of well-known trademarks is determined through a comprehensive assessment of multiple factors.
First, courts examine the distinctiveness of the trademark. In this case, the mark was a coined term with strong inherent distinctiveness, further reinforced by long-term use and extensive promotion.
Second, the level of public recognition is evaluated. The trademark’s sustained market presence, stable market share, and continuous brand development contributed to its high level of awareness among relevant consumers.
Third, courts analyze the degree of connection between the registered goods and the accused products. Although accessories such as cleaning agents and power cords are not classified as gaming equipment, their use is functionally dependent on mahjong machines. They target the same consumer group, are commonly sold through similar channels, and are often marketed together. This close commercial and functional relationship increases the likelihood of consumer confusion.
Fourth, the defendant’s subjective intent is considered. As an operator within the same industry, the retailer was expected to be aware of the trademark’s reputation. Its deliberate use of the famous mark in product titles and search keywords was viewed as an attempt to benefit from the brand’s goodwill, constituting unfair “free-riding” behavior in violation of the principle of good faith.
Taken together, these elements supported a finding that the defendant’s conduct was likely to mislead consumers into believing that the products were authorized or affiliated with the trademark owner.
Impact of E-Commerce on Trademark Enforcement
The judgment also reflects judicial adaptation to the realities of digital commerce. In online marketplaces, consumers rely heavily on search results, keywords, and product titles when making purchasing decisions. The strategic use of well-known trademarks in online listings can significantly influence traffic and consumer trust.Chinese courts increasingly recognize that such practices, even when the mark is not physically affixed to the goods, may undermine the source-identifying function of trademarks and distort fair competition.
Legal Framework
The court’s reasoning is consistent with the Supreme People’s Court’s judicial interpretations on the protection of well-known trademarks. These rules authorize courts to prohibit the use of famous marks on dissimilar goods where such use is likely to cause confusion, dilute distinctiveness, or improperly exploit reputation.
This approach aligns with international trademark principles and reflects China’s ongoing efforts to strengthen intellectual property protection.
Practical Implications for Businesses
For brand owners, this decision confirms the availability of effective legal remedies against indirect and peripheral forms of infringement. Well-known trademarks benefit from extended protection beyond their registered classes, particularly where related products are concerned.
For manufacturers, distributors, and online sellers, the ruling serves as a clear compliance reminder. The use of famous trademarks as promotional references, keywords, or traffic-generating tools entails substantial legal risk, even in the absence of direct competition.
Businesses are therefore advised to conduct thorough trademark clearance and legal due diligence before adopting product names, marketing language, or online advertising strategies.
Conclusion
This case demonstrates that Chinese courts take a substance-over-form approach in assessing trademark infringement involving well-known marks. Rather than relying solely on formal classification, courts focus on consumer perception, market connection, and commercial intent.
Attempts to leverage established brand reputation through related products or online marketing practices will face strict judicial scrutiny. Respect for trademark rights and fair competition remains central to China’s modern intellectual property regime.
By analyzing the typical case above, two core trends in the current judicial protection of well-known trademarks in China can be identified: first, the application of substantive criteria for cross-class protection under the principle of "recognition as needed"; second, the judiciary's proactive response to the new business models in the digital economy.
Firstly, this judgment reaffirms the underlying logic of cross-class protection for well-known trademarks: the likelihood of confusion. The court did not mechanically compare "mahjong machines" with "cleaning agents and power cords" based solely on the Classification of Goods. Instead, it thoroughly examined the high degree of overlap and commonality between them in terms of "function and purpose", "sales channels" and "consumer base".
This finding of a "substantial connection" accurately reflects the legislative intent of Article 13 of the Trademark Law. It implies that the scope of protection for a well-known trademark is not unlimited but strictly adheres to the legal boundary that the use "would cause the relevant public to believe that the goods are associated with the owner of the well-known trademark to a considerable extent".
The analysis in the article regarding the distinctiveness of the "coined term" also provides a solid foundation for cross-class protection.
Secondly, this judgment provides a robust response to forms of infringement in the e-commerce environment. The defendant did not use the trademark on the physical goods themselves, but rather in the "product titles and promotional pages".
The court astutely recognized that in the era where online traffic is paramount, such "keyword-driven traffic generation" also constitutes trademark use, and its consequences in misleading the public and improperly appropriating goodwill can be even more direct.
This demonstrates the flexible application of the general provisions of the Anti-Unfair Competition Law and theories of trademark infringement in judicial practice, extending protection from tangible goods to intangible assets like "traffic" and "search entry points".
Finally, the implications for market participants are profound. For rights holders, it is essential to prioritize the preservation of evidence regarding the well-known status of their trademarks and to actively assert claims for cross-class protection during enforcement.
For business operators, this article delineates a clear red line of compliance: any attempt to free-ride on the goodwill of another party's well-known trademark, by selling ancillary or peripheral products to divert undue traffic, constitutes an unlawful act.
This not only requires enterprises to maintain independence in product manufacturing but also demands they exercise caution in every keyword and product title used in online marketing, thereby respecting the prior rights of others.