Beijing Bao Caisheng Catering Management Co., Ltd. (the 'Bao Shifu' pastry brand) launched a series of enforcement actions against the numerous copycat stores on the market—a representative example of trademark protection in the restaurant industry. On one track, the rights holder filed trademark infringement and unfair competition suits; on the other, it dismantled the squatting party's registered trademarks through invalidation, forming a three-dimensional enforcement structure running civil and administrative proceedings in parallel.
Case Overview
Bao Caisheng is the owner of registered trademark No. 12484211 'Bao Shifu' (applied in 2013, registered in September 2014, acquired by assignment in March 2017), approved for use on pastries and other goods in Class 30. Beijing Yishang Catering Management Co., Ltd. held portrait trademark No. 17899179 and Nos. 17899060 and 17899096 'Bao Shi Fu and device' marks, and conducted franchise recruitment on a large scale. From late 2016, Bao Caisheng sued hundreds of infringing stores nationwide, a large number of which were Yishang franchisees.
Issues in Dispute
- Whether the defendants' use of the 'Bao Shifu' sign infringed Bao Caisheng's exclusive right to its registered trademark;
- Whether the registered trademarks held by Yishang could legitimize its franchisees' use of the sign;
- In the invalidation proceedings, whether Yishang's registrations had been obtained by improper means.
Judgments and Case Numbers
- Nanjing case: first instance, Nanjing Intermediate People's Court of Jiangsu Province, (2018) Su 01 Min Chu No. 628; second instance, Jiangsu Provincial Higher People's Court, (2019) Su Min Zhong No. 1227. Parties included Bao Caisheng against Nanjing Ningyiyu Investment Management Co., Ltd., Chen Yu, Ding Shixian, and Yishang; the first-instance judgment awarded RMB 300,000;
- Beijing case: Beijing Intellectual Property Court, (2020) Jing 73 Min Zhong No. 2644 (appellant Yishang, appellee Bao Caisheng);
- Changsha case: in September 2019, the Tianxin District People's Court of Changsha awarded RMB 30,000 to 35,000 respectively against four stores; on February 19, 2020, the Changsha Intermediate People's Court affirmed on second instance;
- Trademark invalidation administrative cases: in October 2018 and January 2019, the Trademark Review and Adjudication Board (TRAB) respectively declared Yishang's Nos. 17899060 and 17899096 'Bao Shi Fu and device' marks invalid; on December 9, 2019, the Beijing Intellectual Property Court upheld the invalidation at first instance; in September 2020, the Beijing Higher People's Court ruled against Yishang on second instance and maintained the invalidation;
- Enforcement scale: from late 2016 to April 2020, Bao Caisheng sued 213 infringing stores nationwide, of which 163 were Yishang franchisees; of the 156 concluded cases (involving 118 Yishang franchisees), all were won;
- Sources: full judgment texts published by Jiangsu Shicheng Law Firm; 'Tracking China's IP Adjudication' by Beijing Longnuo Law Firm; Xinhua and People's Daily Online reports; Beijing News report 'Yishang, the largest copycat of Bao Shifu, loses second instance; invalidation of two trademarks finalized' (September 28, 2020).
Key Takeaways
- A registered trademark is not a shield for infringement: using one's own registered mark can still infringe where it conflicts with another's prior rights—Yishang's two marks were ultimately declared invalid;
- Enforcement must run on both civil and administrative tracks: winning individual damages cases does not solve the problem; the trademark foundation on which the other side recruits franchisees must be removed;
- Franchisees are not automatically exempt: franchisees using infringing signs cannot escape liability on the ground of 'headquarters authorization';
- Cost control in large-scale enforcement: batch litigation with uniform evidence collection and templates improves efficiency.
Lessons for Businesses
Brand owners should obtain trademark registrations in core goods or service classes as early as possible, detect squatters' applications through monitoring, and file opposition during the announcement period and invalidation after registration; against copycat franchise systems, combine litigation recovery with invalidation to cut off their expansion at the root. Franchise operators should verify the authenticity, validity, and ownership of the headquarters' trademarks before signing, to avoid being drawn into infringement when those marks are invalidated; in daily operations, keep brand promotion and sales evidence as key material proving prior rights and influence.
For the specific procedures above, you may book an invalidation filing on MyTMBee, and a filed trademark agent will provide full assistance.