Heavy price for insufficient coverage? MUJI ordered to pay damages for trade mark infringement in China



The Japanese brand MUJI lost in a trade mark infringement case to a local Chinese company with an earlier registered mark which highly resembles the former’s well-known trade name. China’s Supreme People’s Court has ultimately ruled against MUJI in an appeal after the claims went on for close to a decade. On 4 November 2019, MUJI was ordered by the Beijing Municipal High People’s Court to pay damages of more than RMB 600,000 (USD 87,000) and publicly apologizing to the local company.


Japanese retail company Ryohin Keikaku (“Muji”), generally known by its brand name “MUJI”, was founded in 1980 and entered into the Chinese market in 2005. China is currently its largest offshore market outside of Japan with up to 256 stores in various Chinese cities, and still rapidly expanding. Muji produces and sells a wide variety of stationery, clothing, household furnishings and personal care products under the name of “MUJI” and/or “無印良品 in Japanese Kanji characters (which are identical to traditional Chinese characters that translate as “unbranded quality goods”). Muji applied for registration of “無印良品” as a trade mark in China (the “Applications”). Despite the Applications covered most types of goods the brand sells, not all are covered, in particular a few of the sub-classes under Class 24 which includes bedspreads, pillow shams and towels etc.

The Chinese company, Hainan Nanhua had registered a trade mark “无印良品” (Chinese transliteration: Wuyinliangpin) (the “Wuyinliangpin mark”) in 2001 and later transferred the same to Beijing Cottonfield Textile Corporation (“Beijing Cottonfield”) in 2015. Beijing Cottonfield then established a brand with stores in the name of “MUJI Natural Mill” (“Natural Mill”). Natural Mill opposed against Muji’s Applications, and also brought a claim of trade mark infringement against Muji. Muji has allegedly, and subsequently found by the court to be infringing upon Natural Mill’s intellectual property rights for selling Muji-branded bedcovers and towels in association with the “無印良品” mark in China.

Similarities in the marks and in the respective goods

Natural Mill sells fabric products, mainly bed covers and towels under the Wuyinliangpin mark, which is largely visually similar to Muji’s Chinese trade name, only with the first character written differently (i.e. the former in simplified Chinese whereas the latter traditional Chinese). Both marks are aurally identical as well. While acknowledging that Natural Mill holds the rights attached to the Wuyinliangpin trade mark, Muji argued that they had legally registered almost all of its products under its name, and should be protected for being a well-known trade mark.

Similarities in product packaging and promotions

Not only the products offered in association with the marks, but also the interior design and colour tones of the retail stores of Natural Mill appear to be very similar with that of Muji’s stores.  For instance, both companies display the names consisting of the disputed marks in white words on a dark red background. Further, the products and packaging of both companies share the same design features of simplicity and plain neutral colours.

Causing confusion on part of the public and taking advantage of Muji’s reputation

Ryohin Keikaku has first introduced the “MUJI 無印良品” brand in 1989 in Japan, but the mark has only been promoted in China since the setting up of Muji Shanghai in 2005. The brand had already gained reputation in the consumer market in various countries around the world and its minimalist style had been widely recognized prior to 2005. Therefore, it may be more plausible than otherwise that the public would associate the words of “MUJI” and “無印良品” with the Japanese brand instead of Natural Mill. As such, concurrent use of both marks on similar products may easily cause confusion on general consumers and make it difficult to distinguish between the goods originating from the two separate and unrelated companies.

Current trade mark registration regime in the PRC

First-to-file system

China follows a first-to-file system for trade mark registrations. The earlier registrant generally takes priority over subsequent applicants to use such mark in the same and/or conflicting classes, and enjoys the trade mark protections attached thereto.

Classification and sub-classification system

Further, unlike the Nice Classification which is adopted by Hong Kong and most other jurisdictions, goods and services are further divided into various sub-classes under the PRC regime. Each sub-class contains a specific list of standard items. Therefore, it may be possible for a similar mark to be registered in other sub-classes within the same class as the prior mark. As such, trade mark applicants in the PRC should be minded to ensure the application covers as many types of goods and/or services they intend to provide in association with the applied-for mark. Otherwise, using the mark in connection with any sub-class of goods and/or services that it is not registered for may render serious consequences like trade mark infringement liabilities as in Muji’s case.


In view of the current trade mark regime in China, businesses should take measures to better manage their interests and priority in trade mark protections. Especially for businesses with plans to expand into the PRC, it is advisable to register their trade marks with sufficient coverage in China as much as practicable so as to outrun and prevent any dishonest trade mark squatters taking advantage of the brand’s reputation.

Businesses should also regularly monitor whether there is any potentially infringing trade mark application made in bad faith. Oppositions should be raised in a timely manner to protect their own interests. Further, updating trade mark records and urging regular communications between legal and marketing departments are also recommended.

For enquiries, please contact our Intellectual Property & Technology Department:

E:                                                                    T: (852) 2810 1212
W:                                                                F: (852) 2804 6311

19th Floor, Three Exchange Square, 8 Connaught Place, Central, Hong Kong

Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.

Published by ONC Lawyers © 2020

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