The Beijing Intellectual Property Court recently rendered a first-instance judgment in the "Extra (Chinese version)" trademark infringement dispute represented by NTD lawyers on behalf of WM. WRIGLEY JR. COMPANY (hereinafter referred to as "Wrigley"), determining that "Extra" has constituted well-known trademark on chewing gums and ordering the defendant to cease using the marks identical or similar to "Extra" trademark on toothpaste products. The Court also fully supported Wrigley’s damages claim of RMB 50 million (about USD 7 million) through applying punitive damages. This judgment marks another milestone victory for Wrigley in its series of enforcement actions against the defendant’s malicious trademark squatting and infringement for over a decade.
Wrigley's "Extra" chewing gum has undergone continuous and extensive publicity and sales since entering the Chinese market in 1996. It has successfully shaped its brand image through a series of famous brand stories and classic advertising slogans such as "Care for teeth, care more about you" and has gained great popularity in China.
The defendant has successively acquired and registered trademarks identical or similar to Wrigley's "Extra" trademark on toothpaste and other goods since 2010. It has used various forms of "Extra" marks on its toothpaste products to carry out large-scale production and sales, reaping huge profits. Over the past decade, Wrigley has been fighting against the defendant’s malicious trademark squatting through trademark administrative procedures. In 2016, the Supreme Court ruled in a retrial that the Wrigley’s "Extra" trademark registered on chewing gums constituted prior right to the defendant's Extra-related trademark registered on toothpaste, and rejected the registration of the latter. From 2018 to 2021, the China National Intellectual Property Administration, the Beijing Intellectual Property Court and the Beijing High Court successively ruled to invalidate the defendant's Extra-related trademarks as they were deemed malicious registrations as well as copies and imitations of Wrigley's well-known trademark "Extra".
Based on victories in a series of administrative cases, Wrigley filed this civil lawsuit against the defendant for its continuous infringement over the past decade. The case lasted nearly four years, overcoming various difficulties during the epidemic, and ultimately resulted in victory in the first-instance and a historic high compensation.
This judgment rendered by the Beijing Intellectual Property Court has effectively cracked down on malicious trademark squatting and intentional infringement upon well-known trademarks. It fully demonstrates the fairness and impartiality of China's judiciary system and the equal protection for the intellectual property rights of foreign enterprises in China, which will greatly strengthen the faith of both domestic and foreign enterprises in China’s business environment and intellectual property protection.
This case was represented by two young lawyers Ms. Jenny Huang and Ms. Jane Li of NTD.
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Jenny Huang
Jenny focuses on the legal services related to trademark, domain name, copyright and unfair competition. Since joining NTD in 2014, she has assisted dozens of clients domestic and abroad in dealing with multiple intellectual property disputes, like brand protection strategy, trademark administrative litigation, trademark civil litigation, administrative raid action, trademark assignment, negotiation, domain name dispute, IPR customs protection, unfair competition and others. Her due diligence and professional knowledge enable her to gain recognition from the client.
Jane LI
Jane LI has been working in NTD since September 2013. She has been providing legal services related to intellectual property for many famous enterprises at home and abroad.
Her areas of expertise involve trademark/copyright infringement litigation, unfair competition litigation, trademark administrative litigation, investigation, administrative complaint and raid action, trademark assignment negotiation, border protection, internet infringement monitoring and complaint, copyright registration, domain name dispute and other legal consultation related to intellectual property. In many years of practice, she has represented many famous Chinese and foreign enterprises in the litigation of trademark, copyright and unfair competition disputes.
