CASE 11 :
“乐高” AND “LEGO” TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
◆ First instance: (2017) Hu 0107 MinChu No. 18141
Shanghai Municipal
[Synopsis]
Plaintiff: LEGO Juris A/S
Defendant: Shanghai Tonghui Culture Communication Co., Ltd.
The Plaintiff is the owner of a series of trademarks such as “LEGO” and “ 乐高” and is the owner of the domain names of lego.com and lego.com.cn. The Defendant opened two “Lego Activity Centers” and used the LEGO series of trademarks in the business activities and publicity of the two centers, including using LEGO trademarks in the decoration of the stores, posters, course introductions, contract receipts, etc.; opening a website with www.legosh. com as the domain name and using LEGO trademarks on the pages; using LEGO trademarks on Weibo and WeChat public accounts. In addition, the Defendant also stated in the publicity that it was the “Lego Activity Center” authorized by the Plaintiff and used information related to LEGO Education. The Plaintiff requested the court to order the Defendant to immediately stop the infringement, cancel the relevant domain name and compensate the losses. The Defendant denied the existence of trademark infringement and false propaganda on the grounds that it had obtained authorization to sell LEGO brand products and conduct after-sales instruction.
The court of first instance found that the Defendant’s use in its shop decoration, promotional materials, course price list, official website, etc. constituted trademark infringement. With respect to the Defendant’s argument that it had the right to use the trademark under the authorization it had got for the sale of the LEGO toys, the court of first instance held that the use by the Defendant had exceeded the scope necessary for the sale of the goods and it failed to attach other identifiers to distinguish the source of the service as it used the trademarks at dispute, which was enough to cause confusion among the public. With respect to the relevant claims on the domain name, the court of first instance found that the domain name at dispute which was registered by the Defendant constituted infringement of the “LEGO” trademark of the Plaintiff. Besides, the Defendant’s domain name was similar to the main body of the Plaintiff’s domain name “lego,” which was enough to cause misunderstanding and thus had constituted unfair competition. At the same time, the Defendant tried to establish an association relationship with the Plaintiff in the propaganda, so as to obtain the relevant competitive advantage, which behavior had constituted false propaganda. The judgment of the first instance: the Defendant shall immediately stop the infringement and wrote off the domain name of www.legosh.com, and compensate the Plaintiff for economic losses and reasonable expenses totaling 500,000 Yuan. After the judgment of the first instance, neither party appealed.
[Judge's Comment]
This case is a trademark infringement and unfair competition case involving multiple trademarks and featuring complicated infringement. The court analyzes and considers each accused behavior separately. Considering that the accused, under the circumstance that it has obtained the authorization to sell the products, uses a series of educational service trademarks of others with high reputation in its store layout, curriculum setting, website construction and marketing promotion, it should have the intention to establish a false connection to the trademarks of the Plaintiff, whose act can easily lead to consumer confusion, seriously damage the interests of the right holder, and thus has constituted infringement. The judgment of this case clarified the boundary of the indicative use of trademarks, protected the legitimate rights and interests of the trademark owner, and maintained the order of market competition.
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