Enterprises' Trademark Cases
China IP,[Trademark]
1.Case of Infringement on the “If You Are The One” Trademark
The Plaintiff, Jin Ahuan is possessed with the “If You Are the One” trademark designated to be used on Class 45 services as “dating service and dating agency”. According to Jin Ahuan, the program named as “If You Are the One” released by Jiangsu TV is identical to the service whose trademark right is possessed by her, so does the program name and her trademark name, which constitutes trademark infringement. In December 2014, the court of the first instance holds that, although the program named as “If You Are the One” released by Jiangsu TV is related to marriage dating, yet it is a TV program, and the relevant public shall not consider that there is specific relation between them, or further suffer confusion. As they belonged to different services and no infringement had been constituted, the claim proposed by Jin Ahuan was rejected. In December 2105, the court of the second instance holds that, the program named as “If You Are the One” released by Jiangsu TV is to provide those services as marriage-seeking, blind date and speed dating judged from its purpose, content, way and object, identical to the services as “dating service and dating agency” on which the trademark involved is designated to be used. Considering the popularity of the appellee Jiangsu TV as well as the propaganda of such program, the relevant public may be misled to generate wrong understanding of and connection between the use of the proprietor’s registered trademark and the appellee, which may cause reverse confusion. The court holds that, instead of considering the broadcasting form of the program named as “If You Are the One” only, more attention shall be paid to be content and purpose of such program, and the judgment that whether the both services belong to the same or similar category shall be made objectively. Eventually, the court of the second instance sentenced Jiangsu TV to terminate the usage of the name as “If You Are the One”
2. Caseof OEM of PretulTrademark
LAEIS is possessed with the “PRETUL and oval” trademark for assignation, which is designated to be used on Class 6 goods as metal ware for furniture, hardware lockset, padlock and lock of metal (non-electric). LAEIS holds that the padlocks manufactured for Chubo Company, an overseas customer of Yahuan Company for its authorization and exported to Mexico are equipped with the “PRETUL and oval” trademark, which infringes on the trademark right of LAEIS. In 2014, the court of the first instance held that, only the trademark marked on the packing box of padlock by Yahuan Company constituted infringement. In December 2015, the court of the second instance held that the “PRETUL” trademark used on padlocks, keys and attached specification was similar to the registered trademark. The Supreme People’s Court held that the sign enclosed on OEM products by Yahuan Company neither had the meaning to distinguish the source of processed products, nor be used to recognize the source of such products. Therefore, the sign enclosed does not enjoy the attribute of a trademark, and the act of enclosing the sign on certain products cannot be deemed as the usage of a trademark. Eventually, the judgment of first instance and that of second instance were cancelled.
3. Case of Dispute over “Aquatherm (洁水)” Trademark Infringement and False Propaganda
As the proprietor of the “Aquatherm ( 洁水)” text trademark, K.D.F. Distribution (Shanghai) Co., Ltd. possessed the exclusive selling right of water pipes manufactured by Aqargerm GmbH in China prior to July 1, 2013, after which the cooperation agreement between K.D.F. Distribution (Shanghai) Co., Ltd. and Aqargerm GmbH was terminated and Aquatherm Pipework (Shanghai) Co., Ltd. ranked to be the new agent of products manufactured by Aqargerm GmbH in China. Before July 1, 2013, K.D.F. Distribution (Shanghai) Co., Ltd. only applied the “ 洁水” text trademark registered by it to popularize and sell the products of Aqargerm GmbH. After July 1, 2013, K.D.F. Distribution (Shanghai) Co., Ltd. applied the “ 洁水” text trademark to popularize the water pipes of other manufacturers continuously. Aquatherm Pipework (Shanghai) Co., Ltd.authorized Shanghai Ousu Trading Co., Ltd. to sell the products of Aqargerm GmbH in Shanghai Exclusively. In promotional articles and leaflets, Aquatherm Pipework (Shanghai) Co., Ltd. and Shanghai Ousu Trading Co., Ltd.use such propaganda dictions as “Original Aquatherm ( 洁 水), Current Aquatherm GmbH” and “Aquatherm GmbH (Original Aquatherm) – Constant Quality”. In the meantime, there exist those expressions, namely “The original agent once applied ‘ 洁水’ for propaganda in China. Upon July 1, 2013, the Chinese identification as ‘ 阔盛’ shall be officially launched for the market promotion in China” and “The original Chinese identification as ‘ 洁水’ is possessed by the original agent, and irrelevant to Aquatherm Pipework (Shanghai) Co., Ltd., Aquatherm GmbH and their products”K.D.F. Distribution (Shanghai) Co., Ltd. held that the usage of the aforesaid propaganda dictions by Aquatherm Pipework (Shanghai) Co., Ltd. and Shanghai Ousu Trading Co., Ltd. constituted trademark infringement and false propaganda, required the court to sentence the two defendants to terminate infringement on trademark rights and false propaganda, and compensate its economic losses and reasonable fees amounting to RMB5,000,000.00. In the first instance, the people’s court in Xuhui District, Shanghai refused all the claims proposed by K.D.FDistribution (Shanghai) Co., Ltd., dissatisfied with which K.D.F. Distribution (Shanghai) Co., Ltd. instituted an appeal.In the second instance, the Shanghai Intellectual Property Court held that, based on the fact that the “Aquatherm ( 洁水)” text trademark was once used to popularize the products of Aquatherm GmbH, in propaganda, it is essential for Aquatherm Pipework (Shanghai) Co., Ltd.and Shanghai Ousu Trading Co., Ltd. to notify consumers that the products directed by the “Aquatherm ( 洁水)” text trademark have been changed. The usage of the “Aquatherm ( 洁水)” trademark by the two companies is in good faith subjectively, and the usage mode is controlled within the reasonable limit, which shall not make consumers mislead the source of products and belong to the proper usage of trademarks. Although the propaganda dictions used by Aquatherm Pipework (Shanghai) Co., Ltd. and Shanghai Ousu Trading Co., Ltd. indeed bear inaccuracies in verbal expression, yet it neither generates the misleading effect, nor constitute false propaganda specified by the Law of the PRC against Unfair Competition. Therefore, the appeal was refused and the judgment of first instance was maintained.
4. Case of Dispute over the “KUNG FU PANDA” Trademark
Mr. Hu applied for the “KUNG FU PANDA” trademark on goods as steering wheel cover, which was designated to be used on “computer peripherals”, “mobile dolls and toys” and other similar goods.According to DreamWorks, the KUNG FU PANDA of the same name is possessed with the prior “commercialization right”. In 2014, the TRAB and the court of the first instance hold that, the commercialization right, other than a legal right according to the positive law, has its content and border of rights and interests unclear. However, in 2015, the court of the second instance holds that, when a film name or movie character and its name is no longer limited to the film for its certain popularity, and combined with the business subject or commercial behavior of specific goods or services, the relevant public may transfer their recognition and affection of the film to the film name or movie character, as well as related goods or services. When the obligee can obtain commercial value and trading opportunities in addition to the release of the film, such film name or movie character and its name has constituted the “commercialization right” and become the “prior right” in trademark registration.
5.Case of Dispute over “滴滴” Trademark
Riicy Technology is the obligee of those word trademarks as “ 嘀嘀” and “ 滴 滴”, designated to be used on Class 38 information transfer and computer assisted information as well as Class 35 picture transmission, commercial management, organization consulting, sales promotion for others and etc. Riicy Technology held that the service of “DiDi (滴滴, changed from the original ‘嘀嘀’) Taxi Hailing” overlapped with the service on which its registered trademark is designated to be used, which infringed on the exclusive right of its registered trademark. The court held that the service provided by “DiDi Taxi Hailing” didn’t directly originate from the support of telecommunication technology, and had obvious discrepancy with the items on which the trademark of the Plaintiff was designated to be used in those aspects as service mode, object and content, constituting no identical or similar services. What the court highlighted was that “instead of classifying the application program generated based on the Internet and mobile telecommunications business in form into such service mechanically, it is essential to make a comprehensive judgment from the integrated service, and distinguish the user from the provider of network and communication services”. In April 2015, the court identified that the usage of “( 滴滴, changed from the original ‘ 嘀嘀’)” by Beijing Xiaoju Technology Co., Ltd. did not infringe on the exclusive right of registered trademarks possessed by Riicy Technology.
6. Case of Dispute over Infringement of “CHANEL” Trademark
Chanel, a joint-stock company registered in France on August 27, 1954, is one of the world-level luxury brands, as well as the “CHANEL” text trademark designated to be used on Class 25 goods as “clothing, shoes, caps, scarf and swimwear”. Ramada Pearl Hotel Guangzhou, a branch of Triumph Hotel, and Wen Daxiang executed a rental agreement, according to which No. 2 Store in the west corridor at the first floor of Ramada Pearl Hotel Guangzhou was rented to operate those goods as clothing and leather products, and Wen Daxiang guaranteed that no counterfeit goods shall be sold in the store. As the shoes, wallets and other goods sold by Wen Daxiang used the same identification of trademarks registered by Chanel, Chanel held that Wen Daxiang infringed on the exclusive right of its registered trademarks, instituted legal proceedings against Wen Daxiang, Triumph Hotel and Ramada Pearl Hotel Guangzhou, and required the court to sentence the three defendants to terminate infringement, and compensate its economic losses and reasonable expenses amounting to RMB300,000.00. In the first instance, the people’s court at Yuexiu District, Guangzhou held that Wen Daxiang infringed on the exclusive right of trademark registered by Chanel, and shall be required to bear those civil liabilities as terminating infringement and compensating losses, while Triumph Hotel and Ramada Pearl Hotel Guangzhou didn’t constitute infringement. Dissatisfied with the judgment of first instance, Chanel instituted an appeal. In the second instance, the Guangzhou Intellectual Property Court held that, upon giving full consideration to those factors as the popularity of the trademarks involved, identity of Ramada Pearl Hotel as luxurious star level hotel, special relationship between the hotel and the store indicated by the aforesaid agreement as well as the long-term and repeated infringing act committed by Wen Daxiang, Ramada Pearl Hotel shall perform the duty of care for the store. As the counterfeiting act of Wen Daxiang was obvious, Ramada Pearl Hotel could detect that if paying a little attention.That Ramada Pearl Hotel turned a blind eye to the infringement on the trademarks involved committed by Wen Daxiang and failed to interfere with its infringing act constituted contributory infringement, for which Ramada Pearl Hotel and Wen Daxiang shall bear the joint and several liabilities. Therefore, Wen Daxiang, Triumph Hotel and Ramada Pearl Hotel Guangzhou were sentenced to compensate Chanel for its economic losses and reasonable expenses amounting to RMB50,000 jointly.
7. Case of Dispute over Infringement of “BURBERRY” Trademark
BURBERRY LIMITED is the holder of the “BURBERRY” registered trademark designated to be used on Class 25 goods as clothes.On March 20, 2012, the public security organ detected the criminal case where Chen Kai and Lu Qiumin sold counterfeit goods with the aforesaid trademark, and BURBERRY LIMITED was required to identify the counterfeit goods i nvolved on t h e next day. On August 24, 2012, the two defendants were penalized by fine and imprisonment (of probationary suspension). On August 15, 2014 , BURBERRY LIMITED proposed the litigation of this case, and required the court to sentence the two defendants to compensate its economic losses and reasonable expenses amounting to RMB1,000,000.Chen Kai and Lu Qiumin held that, BURBERRY LIMITED was aware of such infringing act on March 20, 2012 and instituted an appeal in August 2014, which exceeded the prescribed period for litigation.In the first instance, the people’s court at Yangpu District, Shanghai held that, the prescribed period for litigation in this Case shall commence from the effective date of the aforesaid criminal judgment, and the litigation proposed by BURBERRY LIMITED falls into the prescribed period. As Chen Kai and Lu Qiumin infringed on the exclusive right of trademarks under the possession of BURBERRY LIMITED, they are required to compensate BURBERRY LIMITED for its economic losses of RMB150,000 and reasonabl e expenses o f RMB15,000. Dissatisfied with the judgment of first instance, Lu Qiumin instituted an appeal. In the second instance, the Shanghai Intellectual Property Court held that, the criminal process related to this case was equipped with the suspension effect with regard to the prescribed period for litigation, and the litigation proposed by the Plaintiff in the first instance fell into the prescribed period.Therefore, the appeal was refused, and the judgment of first instance was maintained.
8. Case of Dispute over “WeChat” Trademark
On November 12, 2010 , Trunkbow Asia Pacific (Shandong) Co., Ltd. applied to register the “WeChat” trademark on Class 38 services as information transfer and telephone service. WeChat, a chat tool , was rel eased by Tencent on January 21, 2011. The Trademark Office went through the preliminary examination and made announcement on August 27, 2011.Subsequently, Mr. Zhang proposed opposition on November 18, 2011.On March 19, 2013, the Trademark Office refused the registration of the Disputed Trademark on the grounds that the registration of such trademark on relevant services may mislead consumers and further cause adverse social effect. On October 22, 2014, the TRAB made a review judgment, according to which the registration of t h e Disputed Trademark was refused as it violated the provisions specified in Article 10.1.(8) of the Trademark Law and constituted “adverse effect”.According to the Beijing Intellectual Property Court, the approval of the Disputed Trademark shall deliver great inconvenience and even losses to the work and life of mass WeChat users, namely exerting passive and negative impacts on public advantages. In addition to respecting the prior application, it is also essential to consider the public advantages as well as the stable market order already formed, and more reasonable to protect the practical interests of unspecific majority. Therefore, the judgment made by the TRAB was maintained.
9.Case of Dispute over Infringement of “Monalisa” Trademark
Monalisa Group Incorporation was the registrant of “M+ Mona Lisa +MONALISA” image-text trademark, “Head Portrait of Mona Lisa” image trademark and “Mona Lisa” text trademark, among which the image-text trademark was once identified as a Chinese well-known trademark by the Trademark Office of the SAIC, and the aforesaid three trademarks were identified as well-known trademarks by Foshan Intermediate People’s Court and Guangdong Higher People’s Court in individual cases.In addition, the “floor tiles of Monalisa brand” were awarded as “famous-brand products in Guangdong Province” for several times, whose advertising costs from 2010 to 2013 reached RMB 9.6 million.The “Monalisa joint mixture” Monalisa Group Incorporation purchased from the Taobao shop of Mincai Company was manufactured and sold by Xiayu Company.The identical or similar identification of the aforesaid three trademarks is printed on the packaging of the sued infringing products. Monalisa Group Incorporation claimed that the aforesaid three registered trademarks shall be identified as well known trademarks in this case, and the court shall sentence Xiayu Company and Mincai Company to terminate infringement, eliminate effects via statement in the newspaper and compensate economic losses of RMB500,000 and reasonable expenses of RMB65,000 jointly. Upon hearing, the Shanghai Intellectual Property Court held that, tiles and tile-seam filing, as main ingredient and auxiliary material for decoration, had a close correlation and bore overlap in such aspects as using place, marketing channels and consumers, which shall be identified as similar goodsTherefore, it is unnecessary to identify any well-known trademarks in this case. The act committed by Xiayu Company belonged to the application of a trademark identical or similar to the registered trademark for similar goods, and constituted trademark infringement available to cause confusion.The act committed by Mincai Company belonged to the selling of certain goods infringing on the exclusive right of registered trademarks. Therefore, the court sentenced Xiayu Company and Mincai Company to terminate infringement, Xiayu Company to make a statement in the newspaper to eliminate effects and compensate Monalisa Group Corporation for its economic losses with reasonable expenses inclusive equal to RMB180,000, among which Mincai Company should bear the joint and several liability for RMB5,000.
10. Case of Administrative Dispute over Invalid Announcement of “Kailuan” Trademark Kailuan (Group) Limited Liability Corporation claimed for the invalid announcement of the No. 5667073 “Kailuan” trademark registered by the Third Party Zhang Hongbin as the Disputed Trademark infringed on its enterprise name right and Zhang Hongbin rushed for registration but failed to use the Disputed Trademark actually. The TRAB held that the evidence provided by Kailuan (Group) Limited Liability Corporation didn’t involve those services as beauty parlor and public baths for hygiene purposes, and failed to verify that, prior to the registration of the Disputed Trademark, Kailuan (Group) Limited Liability Corporation had applied “Kailuan” as trade name or trademark for those services on which the Disputed Trademark was designated to be used or other similar services, and achieved certain popularity. Therefore, the registration of the Disputed Trademark was maintained. Dissatisfied with the sued judgment, Kailuan (Group) Limited Liability Corporation brought an administrative suit to the Beijing Intellectual Property Court. Upon hearing, the Beijing Intellectual Property Court held that, the registration of the Disputed Trademark “Kailuan” damaged the prior trade name rights possessed by Kailuan (Group) Limited Liability Corporation, and the identification on this subject by the TRAB was wrong, which shall be corrected. Therefore, the Shang Ping Zi (2014) Ruling No. 71444 on Invalid Announcement of No. 5667073 “Kailuan” Trademark made by the TRAB was cancelled, and the TRAB was sentenced to give a ruling again. As the parties concerned institute no appeal upon judgment of this case, this judgment has come into effect.
11.Case of Infringement over “New Balance” Trademark
The Plaintiff, Zhou Yuelun claimed that, New Balance Company, an affiliated company of American New Balance Company, without his permit, applied the “新百伦” trademark for the propaganda and marketing of its products as shoes in a long-term and intensive manner, which seriously infringed on those trademarks as “百伦” and “新百伦” possessed by the Plaintiff designated to be used on Class 25 goods as shoes. The court was required to sentence termination of infringement, elimination of influences and compensation of economic losses equal to RMB98 million. According to the court, those acts committed by New Balance Company as applying “新百伦” to identify and introduce its goods involved in this case and sold via network, or for selling receipts and product propaganda shall be deemed as using those characters as “新百伦” to distinguish good source, and identified as trademark use. The court holds that, according to the evidence produced by the Plaintiff, the information and products at mainstream online sales platforms the “新百伦” trademark is linked to or directs to are related to the Defendant, New Balance Company, which may cause confusion among relevant public, and infringe on the lawful rights of the proprietor of the “新百伦” trademark. In April 2015, the court sentenced New Balance Company to compensate the Plaintiff for its economic losses equal to RMB98 million. Dissatisfied with the judgment of first instance, New Balance Company instituted an appeal, and the second instance is in progress.
12. Case of Dispute over Infringement of “GUCCI” Trademark Right and Unfair Competition
GUCCIO GUCCI S.P.A (GUCCI) is the exclusive trademark owner of of “GUCCI” bag and service trademarks of goods exhibition. Milan Company serves as the manager of Milan Plaza.
Panduofu Company and Xinggao Company rented the stores in Milan Plaza to operate bags and other goods of “GUCCI” brand, and highlighted the character “GUCCI” in shop signs and indoor decoration. Moreover, Milan Company listed “GUCCI” into the stationed brands at its official website and Sina Microblog, and carried out corresponding reports and publicity. As a result, GUCCI brought a lawsuit against the three defendants for trademark infringement and unfair competition, and required to sentence the three defendants to terminate infringement and compensate GUCCI for its economic losses of RMB1 million.In the first instance, the people’s court in Yangpu District, Shanghai held that, as the goods operated by Panduofu Company and Xinggao Company were certified products of “GUCCI” brand, no infringement on good trademarks as “GUCCI” bag possessed by GUCCI had been constituted. However, that the two companies highlighted the character “GUCCI” in shop signs and indoor decoration may make relevant public confuse and mislead the relationship between the operators of the stores involved and GUCCI, and enable the operators of the stores involved to obtain undue competitive advantages . The a foresaid act infringed GUCCI’s service trademarks right, and constituted unfair competition. Although Milan Company was aware that the stores involved were not operated by GUCCI, yet it still provided assistance and convenient instead of preventing the aforesaid act, which constituted unfair competition of false publicity.Therefore, the three defendants were sentenced to terminate the infringing act, Panduofu Company compensating GUCCI for RMB30,000, Xinggao Company compensating RMB190,000, and Milan Company compensating RMB20,000 and bearing the joint and several liability for the aforesaid compensation.Dissatisfied with the judgment of first instance, the three defendants filed an appeal. In the second instance, the Shanghai Intellectual Property Court rejected the appeal and maintained the first instance judgment.
13.The Case Concerning Squatting of Alibaba’s Trademark in Russia Won a Lawsuit
In December 2014, the Russian Supreme Court agreed to the judgment made by a lower court, and decided to cancel a series of Alibaba trademarks registered and used by Holmrook in Russia.On March 24, 2015, the website of the 9th appeal court in Russia released the information that the court maintained the judgment made by a lower arbitration office. In other words, Alibaba, the largest network company in China, is prohibited from rushing to register the alibaba.ru domain name used by Holmrook Limited. Now this decision has come into effect.
14.NBA Superstar Michael Jordan Finally Lost His Trademark Registration Lawsuit in China
NBA superstar Michael Jordan lost his trademark lawsuit against the Chinese sports company, Qiaodan Sports Co. in the final judgment. Beijing Higher People’s Court upheld the original judgment on July 27, 2015 rejecting Michael Jordan’s appeal and retaining the registered trademark of “Qiaodan”. In February 2012, Michael Jordan filed a lawsuit against Qiaodan Sports Co. for wrongful use of his name on Qiaodan’s marketing materials and products . Qiaodan Sports Co. has gained a high reputation on sports clothing, shoes and accessories in the Chinese market. Its attorney claimed that “‘Qiaodan’ is very different from Michael Jordan’s family name. Since in US ‘Jordan’ is an ordinary family name, it’s difficult to prove that the brand ‘Jordan’ and Michael Jordan are necessarily related. The NBA superstar’s social celebrity cannot ensure him the privilege in trademark registration.”
15. Case Dispute over Infringement of “Picasso” Trademark
Picasso is the proprietor of the No. 2001022 image-text trademark designated to be used on Class 16 goods. In 2008, Picasso authorized Shanghai Pafuluo Stationery Co., Ltd. to use such trademark exclusively and filed the licensing agreement for reference. However, Picasso terminated the filing of the aforesaid licensing agreement ahead of schedule in 2012, and then authorized Shanghai Art Imagine Stationery Co., Ltd. to use the trademark involved exclusively, for which Shanghai Pafuluo Stationery Co., Ltd. suffered heavy losses. Shanghai Pafuluo Stationery Co., Ltd. held that the act committed by Picasso and Shanghai Art Imagine Stationery Co., Ltd. was “malicious collusion to damage the legal interests of a third party”, and the court was required to sentence the licensing agreement between them as invalid. The court holds that, although the filing of the licensing agreement between Picasso and Shanghai Pafuluo Stationery Co., Ltd. has been terminated, yet the licensing agreement still exists, so does the exclusive usage of the trademark involved. As Shanghai Art Imagine Stationery Co., Ltd. is not the third party acting in good faith, the exclusive right to use obtained by Shanghai Pafuluo Stationery Co., Ltd. in advance can withstand any rights available to Shanghai Art Imagine Stationery Co., Ltd. later on.
16. AH HY v.s. Trademark Office
On January 4, 2013, AH HY applied to the Trademark Office for the registration of the “HY Pharmaceutical” and pattern trademark with similar group as 3509. On January 11, 2013, China Resources applied to the Trademark Office for the registration of the “Huayuan” trademark with similar group as 3509. On January 28, 2013, Yixintang Company applied to the Trademark Office for the registration of the “Huayuan” trademark with similar group as 3509. The Trademark Office sent a Notice on Negotiation of Trademark Registration Applied on the Same Day to AH HY, according to which the parties concerned shall conduct negotiation independent l y within thirty (30) days upon receiving this Notice, retain the application of either party, and deliver a written agreement to the Trademark Office. Should the parties concerned fail to submit a written agreement or reach a valid agreement, it shall be deemed as the failure of negotiation, in which circumstance the Trademark Office shall notify the parties concerned additionally and determine one applicant by drawing lots.Dissatisfied with such decision, AH HY brought an administrative suit, claimed that the Trademark Office violated the provisions specified in Article 31 of the Trademark Office as deeming the application on identical or similar service items newly increased proposed from January 1 to 31, 2013 as the application “on the same day”, and required the court to examine its legality. Upon hearing and examination, the court identified the provision the Trademark Office based on as illegal
17.Swatch Won Trademark Lawsuit
The No.9333453 宝曼 BALMAIN trademark was filed by Swatch Group for registration in April 2011, certifying to be used in Class 14 goods like clock. After that, the Trademark Office under the SAIC decided to reject the application of 宝曼 BALMAIN because it constituted similarity with the cited trademark 宝缦 Bermo and its figure. The disgruntled Swatch Group applied for a review to TRAB. The disgruntled Swatch Group then filed an administrative lawsuit. Recently, the Beijing First Intermediate People’s Court held that although the two trademarks have the similar pronunciation, the cited trademark have been revoked by TMO, which cannot claim priority right, thus, withdrew the decision made by TRAB in first instance.
18. Moncler Won Its Trademark Infringement Lawsuit in China
On November 16, 2015, Moncler, a French clothing brand, sued Beij ing Royalcat Garment Co. , Ltd. to the Beij ing Intellectual Property Court, and claimed that the latter was engaged in the manufacturing and selling of counterfeit jackets with the “Moncler” trademark. Upon hearing, the court supported the claims for trademark infringement proposed by Moncler, and sentenced the Defendant to compensate Moncler for its economic losses about RMB2,880,000. It is such judgment that marks that the attitude toward counterfeit goods held by the Chinese official has witnessed certain alteration.According to He Maochun, the director of China Democratic League, considering that the IP law is characterized by strong expertise, quite a few places in China have established an IP court or IP tribunal, where both capacity and talents have witnessed great progress. The perfection of the Trademark Law also protects IP, which is beneficial for the fair competition in commercial activities as well as the creation of an innovationoriented society in China. Either the infringement on a foreign enterprise’s IP by a Chinese enterprise, or the infringement on a Chinese enterprise’s IP by a foreign enterprise shall be subject to severe legal sanctions.
19.Trademark Disputes bewteen QUALCOMM and GOTOP
On March 17, 2015, GOTOP convened a press conference for suspected trademark infringement committed by QUALCOMM, and claimed that the Chinese trademark “高通” of QUALCOMM was suspected of infringement. Established in 1992, GOTOP is engaged in the manufacturing of font library chips.In its early days, GOTOP registered the “高通” trademark. As a worldlevel well -known company of chips for cell phone, QUALCOMM entered the Chinese market in 1998, and initiated to use the Chinese character “高通” as the trademark of its products and services since then. In July 2014, GOTOP began to sue QUALCOMM for its long-term application of the Chinese trademark “高通” without identification. At that moment, the principal of GOTOP indicated that, GOTOP registered the Chinese trademark “高通” according to law in 1992, while QUALCOMM, upon entering the Chinese market in 1998, was always using the Chinese character “高通” illegally, whose infringing act delivered baneful influences and huge losses to GOTOP. Therefore, QUALCOMM is required to terminate its infringing act, make an apology by publishing in the newspaper and compensate infringement losses amounting to RMB100 million.
20.SPEEDO Won the Trademark Infringement Lawsuit in China
The case of trademark infringement field by SPEEDO came into conclusion in January 2015. SPEEDO won a lawsuit in China. SPEEDO detected that the customs/business sectors in Fujian, Zhejiang and Shanghai investigated a Brazilian infringing group engaged in the manufacturing of counterfeit products with SPEEDO trademark for export.In 2012, SPEEDO instituted a civil lawsuit against the relevant parties checked and detained by business/customs sectors, and the court in Fujian and that in Zhejiang sentenced SPEEDO successful in the case. The court held that the manufacturing of counterfeit products with SPEEDO trademark infringed on the lawful rights and interests of SPEEDO in China, and the infringer shall be required to pay compensation. In addition, it is ascertained that the application of the trademark involved in OEM belongs to the “use” specified in the Trademark Law, and such infringing act may cause confusion among relevant factories and workers.
21. Scotch Whisky Achieved Great Legal Breakthroughs in China
The SWA, as the trade association of Scotch whisky industry, has its members cover major manufacturers of Scotch whisky, bottling merchants and brand holders.Anhui Guangyu Packing Technology Co., Ltd. was engaged in the manufacturing of those bottle caps with “ScotchWhisky” printed, which were applied for the counterfeit Scotch Whisky products manufactured subsequently and sold to Burma. The SWA sued Anhui Guangyu Packing Technology Co., Ltd. and its legal representative to the court for infringement on its trademark right of “ScotchWhisky”.Although Anhui Guangyu Packing Technology Co., Ltd. defended for itself in trial, yet the court, upon hearing in July 2015, supported the claims proposed by the SWA, and sentenced Anhui Guangyu Packing Technology Co., Ltd. to terminate the act of infringing on the exclusive right of trademarks registered by the SWA instantly and to compensate the economic losses suffered by the SWA.
22. JDB V. Wanglaoji on the Red Tank Battle
Guangdong Higher People’s Court delivered the verdict of JDB V.Wanglaoji on the Red Tank Battle on December 19th 2014, ruling that the red tank packaging of JDB constituted infringement to Wanglaoji’s, Wanglaoji can use the Red Tank exclusively afterwards. It is considered as the largest amount of compensation in the aspect of JDB during the disputes between JBD and Wanglaoji since 2012. The Court believed that the specified packaging decoration of “Wanglaoji herbal tea” refers to the mark on the red tank of “Wanglaoji herbal tea,” including three vertical yellow font “ 王老吉,” red background color, and other colors, pictures as well as their permutations and combinations. The Court ordered JBD to immediately stop selling and begin to destroy the red tankrelated products, pay compensation of RMB150 million for Wanglaoji’s economic loss and RMB265,210 for reasonable maintenance fee within seven days since the date of judgment coming into effect, and consecutively to publish apologizing statement on the designated media for seven days in a bid to eliminate related impacts.
23. Danfoss Defeated Trademark Infringement
Recently, Shanghai Pudong New Aera People’s Court accepted a suit filed by Danfoss Co., Ltd with one nature people and three companies as defendants. Danfoss asked for a compensation of over RMB1.1 million for the defendants’ trademark infringement and unfair competition.Danfoss, a transnational corporation headquartered in Denmark, is a famous company in refrigeration, heating, water treatment and transmission control manufacturing filed. Danfoss claimed that, its “ 丹佛斯” and “DANFOSS” trademarks registered in China were infringed by the four defendants.Danfoss held that the four defendants’ action was trademark infringement and unfair competition, and asked for them to stop the infringement act, eradicate the ill effects, and pay a compensation of totally 1.1 million yuan.
24. Fake Goods Seller Sentenced
A woman who sold counterfeit products on social media platform WeChat was sentenced to three years in prison with a suspension of three years and fined RMB135,000 ($21,725) by a court in Changshu on March 20, 2015. The court found the woman bought counterfeits, including leather products carrying Chanel and Louis Vuitton logos, from Guangzhou, the capital of Guangdong province, and sold them to WeChat contacts as well as in a shop in Changshu from October 2012 to March 2014.
25. “Jie Rou” Failed in Suing “Rou Jie”
In July 2014, C&S Paper Co.,Ltd., the owner of the trademark “Jie Rou” (meaning clean and soft in Chinese) and the first modern household paper manufacture company in mainland China which has been successfully listed in Shenzhen stock exchange, found that a paper corporation in Nantong (Jiangsu Province, China) used the Chinese characters “Rou Jie” on its paper products without permission. Considering that the latter corporation infringed its trademark rights, C&S brought the lawsuit to court, demanding that the defendant stops infringement immediately, compensating the economic loss of RMB10,000 and publishing a statement in the newspaper to eliminate negative influence. Recently, the court delivered the first verdict, announcing that the characters “Rou ” and “Jie” in C&S’ s trademark are general words and it is hard to determine whether these characters used in the defendant’s products constitute trademark use. Therefore, the court rejected C&S’s claims.
26. BMW Won Trademark Lawsuit in China
Zhang Chongwei, the legal representative of Shandong Baoma Clothing Co., Ltd., wanted to apply for registration of “Baomachidu” trademark on clothing and other goods, leading to the objection by BMW AG (BMW). When facing objection of registration from the Trademark Review and Adjudication Board, Zhang Chongwei filed an administrative lawsuit to the Beijing First Intermediate People’s Court. In January 2015, the first instance of the court maintained the decision by TRAB. The court held that, the “ 宝马” trademark mastered by BMW had become correspondence with “BMW” trademark. The questioned trademark completely contained a “ 宝马,” and if coexisting on clothing and other goods with cited trademarks, it would easily lead to consumers’ confusion, which constituted the using of the same or similar goods on similar trademarks. In addition, since BMW’s previously registered “宝 马” had a certain reputation, the registration of questioned trademark had a damage to the earlier trade name rights of BMW.
27. First Case to Examine the Legality of Normative Documents by National Ministries with Seven Review Committees as Beijing Intellectual Property Court Engagement
The judicial committee of Beijing Intellectual Property Court held a court to hear the case of administrative dispute over trademark where AH HY prosecuted against the Trademark Office of the SAIC.
This case served as the first case to examine the legality of normative documents issued by national ministries upon implementation of the Administrative Procedure Law, and the first case with all the committees of the judicial committee of Beijing Intellectual Property Court engaged (Chief Judge: Su Chi, Vice-president: Chen Jinchuan and Song Yushui, committees of the judicial committee: Du Changhui, Jiang Ying, Zhang Xiaojin, Zhang Xiaoxia) and a public court hearing held directly.
On December 8, 2015, this case witnessed a public judgment at the Beijing Intellectual Property Court. Eventually, the court ruled that the relevant provisions specified in the Notice on Application and Registration of Trademarks on Newly Increased Retail or Wholesale Services released by the Trademark Office of TRAB in 2014 were unlawful.
28. LV Instituted Legal Proceedings against Jinkailide in “Zoo” Garment Market
As quite a few merchants in Jinkailide sold goods infringing on the exclusive right of trademarks possessed by LV in a long-term and sustainable manner, LV instituted legal proceedings against Jinkailide in the court located at Xicheng District, Beijing, and required it for compensation. In the indictment, LV claimed that many merchants in Jinkailide infringed on the exclusive right of trademarks registered by LV in a long-term and sustainable manner, while Jinkailide performed neither the premise management obligation of guiding and persuading merchants involved to conduct standard operation, nor the finalperiod management obligation as education, warning and winding-up proceeding. Now, LV sues to the court, and requires the court to sentence Jinkailide to terminate the infringement on the exclusive right of trademarks registered by LV and disclose relevant information of merchants involved as rental agreement executed by them or operators. Moreover, the court is required to sentence Jinkailide to compensate LV for its economic losses of RMB500,000, reasonable expenses as attorney fees and notarial fees incurred by LV for evidential investigation and prosecution of tort liability equal to RMB110,000 and undertake the legal fare of this case. Currently, this case is being further proceedings.
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