TYPICAL TRADEMARK CASES IN CHINA
China IP,[Trademark]
According to the latest statistics, by the end of first quarter of 2016, China had cumulated 19.137 million trademarks applied for registration and 10.745 million trademarks effectively registered, ranking the first place in the world for 14 years consecutively. The above statistics show that the trademark in China is under through vigorous development. Therefore, the trademark related disputes are also growing. In this trademark specialized issue, China IP selects some typical trademark cases among the cases recommended by China’s courts at all levels, many of them involve foreign enterprise. We hope these cases can give some enlightenments and provide reference to foreign enterprises when they are doing or planning to do business in China.
[Keywords]
The Court rejected the argument of Hua Wei based on its business success, sanctioned the refusal of Hua Wei to disclose its accounts and awarded an amount of damages far exceeding the statutory limit.
The Court held that “the market share and existing consumer group of Hua Wei built from its continuous trademark infringement activities, if being recognised by the Court, will undoubtedly encourage trademark infringers to circumvent liabilities through enlarging infringing scales, which clearly contradicts the legislative purpose and undermines the intrinsic value of the Chinese Trademark Law”.Furthermore, the Court found that Hua Wei should bear the adverse consequences of its obstruction to the burden of proof and awarded an amount of RMB3.5 million, far exceeding the statutory limit provided in the 2001 version of the law.
[Synopsis]
The 3M Company (3M), formerly known as the Minnesota Mining and Manufacturing Company (1902– 2002), is an American multinational conglomerate corporation based in Minnesota, USA.
3M is the owner of two registered trademarks “3M” (No. 884963 of 21/10/96 and No. 5966501 of 07/03/10) (the “3M Trademarks”) in class 17, which are used respectively on “thin sheets or strips made from retro-reflective materials” and “retroreflective plastic film, other than for packing (to improve and boost visibility and safety)”. 3M China Limited (“3M China”) is a subsidiary of 3M in China, licensed by 3M to use the 3M Trademarks in China and has been manufacturing and distributing vehicle retro-reflective marking products since 2004 (“the products”).
On December 16, 2005, Changzhou Hua Wei Advanced Material Co., Ltd.Hua Wei) filed the “3N” trademark in Class 19, with the designated goods CASE 1 : ◆ZHEJIANG PROVINCE ◆First Instance Case No.: (2013) Zhe Hang Zhi Chu Zi No. 424 Second Instance Case No.: (2015) Zhe Zhi Zhong Zi No. 152 3M trademark and products 3N trademark and products covering luminescent sheet and paving. The trademark application was preliminarily approved by the CTMO on December 23, 2008. On May 27, 2009, 3M Company filed an opposition against the applied mark. The CTMO decided on August 3, 2011 to approve the registration of the opposed mark, but only for certain goods. Hua Wei appealed before the TRAB. On July 29, 2013, the TRAB ruled not to approve the registration of the 3N mark, citing the prior registered trademark “3M” in class 19. Hua Wei did not appeal.
On November 27, 2013, 3M and 3M China filed a lawsuit against Hua Wei and its local distributor before the ◆Case Type: Civil CaseHangzhou Intermediate Court on the ground of trademark infringement, seeking a court injunction not to produce and sell, damages of RMB5.1 million (which was later raised to RMB13 million by 3M and 3M China on January 15, 2015) and another RMB 200,000 to cover the reasonable cost for ceasing the infringing activities.
Before the Court, Hua Wei claimed that: 1) its 3N mark was not similar to the 3M Mark, 2) and in view of the duration and extent of its use, as well as of the price difference, a stable market order had been formed and the relevant public could differentiate the two marks; 3) Hua Wei had no deliberate intention to take advantage of the reputation of the 3M mark and that its 3N mark was the initials of its corporate philosophy of “New Concept, New Technologies, New Products”.
Therefore, there was no foul play with Hua Wei’s act.
The Intermediate Court made a decision on June 30, 2015, affirming the trademark infringement, ordering the distributor to immediately cease selling (the production activity had already ceased) and ordering Hua Wei to pay RMB 3.5 million to the plaintiffs.
The Court dismissed Hua Wei’s defence, and held that the 3M trademark had a high distinctiveness and reputation, that it was visually similar to the 3N mark, and that the consumers were likely to confuse Hua Wei’s 3N products with those of the plaintiffs, or at least to assume there was certain association between them.
Furthermore, the Court found that Hua Wei’s acts were obviously intentional, and noted that Hua Wei had never promoted the alleged meaning of “New Concept, New Technologies, New Products” for its 3N trademark.
Finally, when assessing the amount of damages, the Court considered the long duration and large scale of the infringement activity, and more importantly, the fact that Hua Wei had deliberately refused to furnish its financial records proving the quantity of the infringing products and the financial gains obtained from the infringement. So, even though the limit of the statutory damages provided in the trademark law (the 2001 version applicable to this case) was only RMB500,000, the Court awarded an amount of RMB3,500,000. Hua Wei appealed to the Zhejiang Higher People’s Court.
On September 9, 2015, at the very end of the hearing, the Zhejiang Higher People’s Court made its decision upholding the judgment of the first instance.
The Court expressed the opinion that if the market share and existing consumer group of Hua Wei built from THE CHONGQING INTERMEDIATE COURT APPLIES ARTICLE 63.2 OF THE TRADEMARK LAW AND SANCTIONS AN INFRINGER WHO SUBMITTED UNVERIFIABLE ACCOUNT BOOKS ◆ CHONGQING MUNICIPAL ◆ First Instance Case No.: (2015) Yu Yi Zhong Fa Min Chu Zi No. 01153 its continuous trademark infringement activities, were to be recognised by the Court as a valid defence against an infringement claim, it would undoubtedly “encourage trademark infringers to circumvent liabilities through enlarging infringing scales, which clearly contradicts the legislative purpose and undermines the intent of the Chinese Trademark Law”.
In the calculation of the damages, the Court followed the same reasoning as the first instance court and ordered Hua Wei to indemnify the plaintiffs for an amount of RMB 3.5 million.
WAN HUI DA represented 3M Company and 3M China in this case.
[Judge’s Comment]
The Zhejiang Courts’ explicit denial of the argument based on market share built by continuous infringing activities seems to indicate that the socalled “inclusive development theory” proposed by the Supreme People’s Court in its Opinions of 2010 and 2011 has less influence. According to such theory, when two similar trademarks have reached a significant size in the market, they should continue to coexist in order to preserve market stability.
The case also shows that refusing to cooperate in the finding of the fact, when the infringing is established, may have very negative consequences. [Keywords] The Chongqing First Intermediate Court applied Article 63.2 of the 2013 Trademark Law in the determination of damages for trademark infringement.
Legal and Regulatory Background: Article 63.2 of the China Trademark Law (2013 version) provides that: “Where the right owner has presented as much proof of its claims as is practically possible, while the account books and information related to the infringement are mostly in the control of the infringer, a People’s Court may order the infringer to submit such account books and information. If the infringer refuses to submit such account books and information, or submits false information, the People’s Court may determine the amount of damages with reference to the claim and evidence provided by the right owner”.
[Synopsis] Chindex International Inc. is a premier healthcare company in Asia, providing healthcare services in China and Mongolia through a chain of hospitals operating under the name United Family. Beijing Chindex Hospital Management Consulting Co., Ltd. (Chindex), is the wholly-owned subsidiary of Chindex International Inc., and the owner of three registered trademarks : “ ”,“ ” and “ ” (Chinese character of “HE MEI JIA”) designating services covering “medical care, healthcare, and medical consultancy” etc.
in Class 44. Chindex licenses 16 associated hospitals or clinics in 5 cities of Shanghai, Beijing, Tianjin, Qingdao and Guangzhou to use the said trademarks.
In 2015, Chindex discovered that a Beibei He Mei Jia Hospital (HMJ Hospital ) was using the aforementioned trademarks on its website and in its business operations, without authorisation.
Upon Chindex’s instruction, WAN HUI DA had the webpage of HMJ Hospital’s website notarized in May 2015. In June 2015, WAN HUI DA conducted a field investigation to collect evidence on HMJ Hospital’s activities. The investigation process and evidence collected during the process were notarized by the accompanying notary. Chindex lodged a civil litigation against HMJ Hospital before Chongqing First Intermediate Court on the ground of trademark infringement, requesting an amount of compensation of RMB3.02 million and a public apology.
During the court proceeding, Chindex simultaneously filed two applications with court in order to obtain communication of the defendant’s tax payment records, balance sheets, bank account records in the past two years (pursuant to article 63.2 of the trademark law) and to preserve such evidence.
On August 20, 2015, the court ordered the defendant to provide the information requested by Chindex. The defendant submitted unaudited financial reports and statements, showing a turnover of RMB 9 million in 2013 and 14 million 2014, but claiming that both years, the company had made losses. Chindex challenged such evidence and adduced audit reports of its licensees as well as financial reports published by several listed companies in the healthcare industry, to prove that the average profit margin in this area should be around 12-15%.
On December 17, 2015, the Court ordered the defendant to ● immediately stop using the plaintiff’s registered trademarks, ● indemnify the plaintiff RMB 1million for its financial loss and another RMB100,000 to cover the plaintiff’s reasonable costs, and ● publish a statement of apology in a local newspaper.
The Court found that in view of the circumstances, it was impossible to ascertain the actual loss suffered by the plaintiff.
Furthermore, given the fact that the trademark licenses granted by the Plaintiff to its affiliated medical institutions were royalty free, it was also impossible to base the calculation of the damages on the amount of royalties that the Defendant would have had to pay, if it had been authorised. Therefore, the calculation of the damages needed to be based on the illegal gains collected by the Defendant. In this respect, the Court declared that it could not endorse the unaudited financial statements supplied by the Defendant, the credibility of which was unverifiable due to the lack of corroborative evidence.
The court therefore, took into consideration the following factors: 1)High reputation and extensive use of the plaintiff’s registered trademarks; 2)The duration and profitability of the infringement (based on the evidence supplied by the Plaintiff, for similar type of business); 3)The defendant’s bad faith and 4)The defendant’s disobedience against the court order in submitting complete financial records.
[Judge’s Comment]
This is another exemplary case where the Court applied Article 63.2 of the 2013 Trademark Law, and ordered the defendant to produce evidence showing the scope of its activities: it confirms that when defendants refuse to do so, or produce accounts that cannot be verified, the consequences can be serious. A lesson to remember in similar cases. [Keywords] Does the export behavior of Chinese Export Enterprises constitute the use of trademark [Synopsis] The case is administrative trademark case involving “DCLSA” trademark. The third party applied for cancellation to the review and appraisal board of accused trademark for the reason that the trademark involved was stopped from using for three continuously years as stipulated in Article 44(4) of the Trademark Law. The plaintiff is the trademark proprietor which is an export-oriented enterprise, and all trademark use evidences put forward by it in the case are export evidences, including sale confirmation, special invoice of export products, customs declaration form, and cargo transportation insurance policy and others. The court holds that the export behavior of the plaintiff constitutes trademark use behavior and doesn’t violate above legal provisions, so it maintains the registration of the trademark involved.
[Judge’s Comment] The typical significance of this case lies in that the court deeply analyzes the export behavior on whether it is belonged to trademark use behavior during judgment, considers not only essential attributes of products, but also relevant stipulations in international convention, so as to better protect relevant benefits of export enterprise in the importing country.
In practice, there has always been a dispute on whether export behavior is belonged to trademark use behavior. Such issue shall be analyzed by distinguishing following two circumstances: one is OEM behavior and the other is export behavior of Chinese enterprise. In the first case, Chinese enterprise is a processing enterprise rather than trademark proprietor. But in the second case, Chinese enterprise exports the products with private brand to foreign countries. As for the second case, although terminal sales of export products occur in importing countries, it cannot be denied that the selling behavior of exporter to importer occurs in Chinese mainland and importer can distinguish different Chinese exporters according to trademark, during which the trademark has already played the role of recognition and such recognition happens in Chinese mainland.
Therefore, export behavior constitute trademark use in such condition, which conforms to legislative purpose of Article 44(4) in the Trademark Law and also accords with essential attribute of trademark. This case is the export behavior in the second case.
In addition, it can be known from Article 1 of the Trademark Law that the Trademark Law is aimed at promoting development of socialist market economy. So, the understanding and application of any substantial clauses in the Trademark Law shall not go against development of socialist market economy. In general, Chinese Export Enterprises not only register trademarks in China, but also make international registration in importing countries and other member countries according to relevant stipulations in the Madrid Agreement Concerning the International Registration of Marks or the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
In such case, the validity state of trademark registered in China by trademark registrant can affect the validity state of such trademark in the importing countries to a certain extent. As stipulated in Article 6 of Madrid Agreement, if the registration in the country of origin by the trademark registrant is revoked or made invalid, such registration in other member countries or areas will also be revoked. So, if export behavior is revoked for identifying as not constituting trademark use behavior, it means such enterprise will not be protected by the Trademark Law in China, but it will not be protected by the Trademark Law in its importing countries or areas under certain conditions. Obviously, the latter is more important. It is thus clear that recognizing export behavior as constituting use behavior will have substantial effect on export enterprises, and also affect the development of our export economy correspondingly.
[Keywords] In judging whether application for registration of the trademark in dispute is belonged to rush registration of trademark that other person uses first and has certain influence in improper means, the People’s Court shall make comprehensive judgment by examining history and application for registration of relevant trademarks and whether the unregistered trademark is used legally before the date of application for registration of the trademark in dispute.
[Synopsis] In the review of the administrative dispute of adjudication on trademark opposition among retrial applicant Kweichow Laishijia Liquor Co., Ltd. (Laishijia Distillery) and the respondent Trademark Review and Appraisal Board of the State Administration for Industry & Commerce (TRAB) and the third party in the first instance China Kweichow Moutai Distillery (Group) Co., Ltd.
(Moutai Distillery), from 1951 to 1953, Guizhou Renhuai People’s Government nationalized the assets of three private liquor distilleries of “Chengyi Distillery”, “Ronghe Distillery” and “Hengxing Distillery” in Maotai County, Renhuai through redeem, confiscating and taking over and other methods, established Kweichow Moutai Distillery, and integrated products of “Huamao”, “Wangmao” and “Laimao” liquor produced by three private liquor distilleries and called them “Maotai Liquor”. On December 29, 1988, Kweichow Moutai Distillery applied for registering “Laimao”, “Wangmao” and “Huamao” trademarks on liquor products (previous “Laimao” trademark) and was allowed to register on June 27, 1996 with registration number of 627426. In July, 2003, Shenzhen Laiyongchu Liquor Distribution Co., Ltd. applied for canceling the previous “Laimao” trademark for the reason of stopped use for three continuous years.
On March 16, 2005, Trademark Office of The State Administration for Industry & Commerce (the Trademark Office) decided to revoke the previous “Laimao” trademark and the TRAB maintained the above revoke decision. On March 29, 2005, Moutai Distillery Co., Ltd.
applied for registering No.4570381 trademark of “Laimao” (namely the trademark in dispute) on liquor (beverages) and other products.
Laishijia Distillery and Guizhou Laiyongchu Liquor Co., Ltd. raised an objection application in the legal term. On July 30, 2012, the TRAB made SPZ [2012] No.33395 Objection Review Decision of No.4570381 “Laimao” Trademark (No.33395 Decision), and approved registration of the t rademark in di spute.
Laishijia Distillery refused to accept and brought an administrative suit. In the first instance, Beijing First Intermediate People’s Court thought the registration application of the trademark in dispute didn’t constitute the circumstance in Article 31 of the Trademark Law (revised in 2001) which means rush registration of trademark used by others previously and with certain influence in improper way, and judged to maintain No.33395 decision. Laishijia Distillery refused to accept and instituted an appeal, and Beijing Higher People’s Court rejected an appeal and maintained the original judgment in the second instance. Laishijia Distillery still refused to accept and applied for a retrial to the Supreme People’s Court. On September 10, 2015, the Supreme People’s Court determined to dismiss the retrial application of Laishijia Distillery.
[Judge’s Comment] Through review, the Supreme People’s Court holds that when judging whether registration application of the trademark in dispute is belonged to rush registration of previous “Laimao” trademark firstly used by Laishijia Distillery and with certain influence in a improper way, they shall make comprehensive judgment by examining the history and registration application of previous “Laimao” trademark and whether the trademark in dispute before registration application date is legally used by Laishijia Distillery. Firstly, according to facts found out by the original court, from 1951 to 1953, Guizhou Renhuai People’s Government nationalized the assets of three private liquor distilleries of “Chengyi Distillery”, “Ronghe Distillery” and “Hengxing Distillery” in Maotai County, Renhuai through redeem, confiscating and taking over and other methods, established Kweichow Moutai Distillery on this basis, and integrated products of “Huamao”, “Wangmao” and “Laimao” l iquor produced by three private liquor distilleries and called them “Maotai Liquor”.
After 1950s, Laishijia Distillery didn’t enjoy trademark rights for “Laimao” trademark. Secondly, from approved registration of previous “Laimao” trademark to revoking of the trademark for not use for three continuously years, Moutai Distillery enjoyed exclusive right to use registered trademark for previous “Laimao” trademark and without its approval, anyone shall not use “Laimao” sign on same or similar products with liquor.
During this period, use behavior of Laishijia Distillery actually violated exclusive right to use previous “Laimao” trademark and can’t enjoy trademark interests due to illegal behaviors. Although Laishijia Distillery advocated that it was not violating for their using previous “Laimao” trademark and continual use within the original scope, after 1950s, previous “Laimao” trademark was belonged to Kweichow Moutai Distillery. Although China’s Trademark Law was published on August 23, 1982, it didn’t mean that the previous trademark proprietor had no rights for the trademark.
Under the condition that the previous “Laimao” trademark was discounted and put under Kweichow Moutai Distillery after 1950s, even if as said by Laishijia Distillery, its predecessor started to produce “Laimao” liquor from the eighties, such behavior was difficult to be regarded as rightful and also can’t generate previous use right in the sense of the Trademark Law. Moutai Distillery applied for registering the trademark in dispute only within ten more days after cancellation of previous “Laimao” trademark, and short use of “Laimao” trademark just within ten more days by Laishijia Distillery was also difficult to achieve certain influence. Therefore, the registration application of the trademark in dispute doesn’t violate Article 31 of the Trademark Law.
[Keywords] In judging whether the accused infringing log is similar with registered trademark, it is necessary to not only compare similarity of relevant trademarks in pattern, pronunciation and meaning and other elements, but also consider whether such similarity easily leads to misunderstanding of the public for product sources, or thinks that its source has certain specific relationship with products of the plaintiff with registered trademark, which means leading to confusion for the public.
[Synopsis] The plaintiff is the registrant of No.3425933 registered trademark of “ ”, and approved products of such trademark are under Category 25, including waistband and belt (for clothes) and others. The plaintiff claims the belt of “HERMES 爱马仕” sold by the defendant Guangzhou Jing Dong Company and produced by Hermes International (France Company) infringes its exclusive right of registered trademark. The defendant Beijing Jingdong Company provides Jingdong Mall as network sales platform of the defendant Guangzhou Jing Dong Company and shall assume joint liability for tort.
Upon investigation, there are no Chinese logos on “HERMES 爱马仕” belt packaging and decoration. Hence, the focal issue in dispute in this case is that whether the use of “HERMES 爱马 仕” by the defendant Guangzhou Jing Dong Company as trademark name component constitutes trademark use and infringement.
In the first instance, the court holds that the defendant Guangzhou Jing Dong Company uses “HERMES 爱马 仕” as trademark name component during belt sales, which means using trademark for advertising, exhibition and other business activities, exceeding reasonable use scope of characteristic explanation of products, and having functions of indication and distinction.
Hence, such behavior belongs to use “HERMES 爱马仕” as trademark application. Whether such behavior constitutes infringement mainly lies in whether they constitute similarity.
Through comparison, firstly, “HERMES 爱马仕” is Chinese and English combination, trademark is merely Chinese; secondly, “HERMES 爱 马仕” is simplified Chinese and is traditional Chinese; thirdly, doesn’t have strong significance and popularity and the current evidences are unnecessary to prove that such registered trademark is actually used on the belt; fourthly, the defendant Guangzhou Jing Dong Company doesn’t have subjectively improper intent to play up to the business reputation of registered trademark “ ”; fifthly, the two can’t be confused by the public. The joint use of “HERMES 爱 [Keywords] The use of the Trademark Law in legal sense means the use behavior of distinguishing products or service resources and confusing products or service sources among the public.
The trademark which is unable to recognize products and service sources and only has functional shape is not the object protected by the Trademark Law.
[Synopsis] The register of No.6281188 trademark, No.G1051626 trademark and No.6281379 trademark is APPLE INC., the approved use products are category 9 and above trademarks are within the period of validity.
From February 2013, the defendant Yang XX respectively hired the other defendants to renovate and assemble purchased mobile phones and then sold them in the market. In July, 2014, police officers arrested the above defendants and captured 133 4S mobile phones, 380 return keys, 31 LCD screens of mobile phones, 10 mobile phone back covers, 35 mobile phone liquid crystals and 14 sales bills on the site.
The court holds that for 133 captured mobile phones, although 马仕” has already formed remarkable meaning of recognizing products and the sales price of such brand belts has already exceeded ten thousand Yuan and according to general attention of the public, it is absolutely practical to distinguish sources of products, and the public will not get confused about the sources of claimed infringing goods or determine certain specific relationship between claimed infringing goods and registered trademark goods of the plaintiff, which means no confusion to the public. Therefore, based on comprehensive consideration of various above facts, “HERMES爱马仕” and don’t constitute similarity.
Hereby, in the first instance, the court judges dismissing claim request of the plaintiff. In the second instance, the court maintains such judgment.
[Judge’s Comment] This case is typical for trademark infringement of international wellknown brands claimed in China. In this case, the plaintiff has already applied for registering word trademark of on belts. Unless there is certain evidence showing that the proprietor applies for trademark registration in deceive or rush registration and other means and damages other previous rights of others. Otherwise, the registered trademark is protected by laws and others shall not use same or similar logo on similar goods without authorization or approval.
Determination whether two trademarks in this case constitute similarity mainly lies in that whether it possibly leads to confusion when judging according to general attention of the public. When the court hears such cases, they make judgment generally by comprehensively using “isolated observation and comparison”, “observation and comparison of remarkable parts” and “overall observation and comparison”, and considering significance and popularity of registered trademark and subjective malice of the defendant. During hearing, the court fully analyzes and judges two trademark logos in detail and eventually judges two not constituting similarity, thus developing a judging thought for hearing of similar cases.
[Keywords] The use of the Trademark Law in legal sense means the use behavior of distinguishing products or service resources and confusing products or service sources among the public.
The trademark which is unable to recognize products and service sources and only has functional shape is not the object protected by the Trademark Law.
[Synopsis] The register of No.6281188 trademark , No.G1051626 trademark and No.6281379 trademark is APPLE INC., the approved use products are category 9 and above trademarks are within the period of validity.
From February 2013, the defendant Yang XX respectively hired the other defendants to renovate and assemble purchased mobile phones and then sold them in the market. In July, 2014, police officers arrested the above defendants and captured 133 4S mobile phones, 380 return keys, 31 LCD screens of mobile phones, 10 mobile phone back covers, 35 mobile phone liquid crystals and 14 sales bills on the site.
The court holds that for 133 captured mobile phones, althoughit displayed same trademark as No.G1051626 registered trademark which doesn’t have the function of distinguishing product resources, so use of such trademark by APPLE INC. is not belonged to trademark use. Meanwhile, the captured mobiles phones will display “” on the boot screen after turning on the mobile phones, and the public will be confused for sources of products and mistake it connected with APPLE INC., so it is judged that the defendant uses same trademark as No.6281379 registered trademark in 133 capture mobile phones.
Accordingly, the court believes that the above defendants use same trademark as the registered trademark on same products without the approval of the proprietor of the registered trademark, circumstances are particularly serious, and their behaviors have already constituted the crime of counterfeiting registered trademark and they are respectively given criminal punishments.
[Judge’s Comment] The Trademark Law is aimed at protecting the mark which can recognize products and service resources and assume business reputation. Use behavior which can reflect the function of distinguishing products or service resources and easily lead the public to confuse the products or service resources shall be determined as use behavior of registered trademark. Otherwise, if the trademark is a button set up based on realization of certain function and without function of distinguishing product resources, its use is not belonged to use in the sense of the Trademark Law and it can’t be protected by the Trademark Law.
In this case, No.G1051626 registered trademark of is functional button of the mobile phone which is set up based on realization of certain function and without function of distinguishing product resources for itself, so use of it by APPLE INC. is not belonged to trademark use. Although captured mobile phones show same trademark as No.G1051626 registered trademark of , based on above reasons, use of such trademark on the captured mobile phones can’t be recognized as use of same trademark on same products. However, captured mobile phones will show “ ” on the boot screen, the public are sure to start the mobile phone during use.
When the public see “ ” displayed on the boot screen during use, they may confuse the product resources and mistake connection of products with APPLE INC., and even have higher expectations for product quality and performance. In other words, although the defendant uses “ ” after startup, it still plays the role of identifying product resources for the public, use method of the trademark still shall be recognized as “use” behavior in the sense of the Trademark Law.
[Keywords] Trademark use is a behavior where the trademark is applied in business activities and used to recognize sources of products. In the trademark infringement case, use contents are centrally used for qualitative and quantitative analysis, based on which recognize whether infringement behavior is established and it is a kind of minable thought. The case involves two aspects and the qualitative analysis focuses on the nature of the trademark use. If it doesn’t belong to descriptive use of trademark recognition function, they can establish defense of not infringing the trademark rights; the quantitative analysis focuses on reasonable scope of trademark. Even if they are approved to use trademark by the trademark registrant and exceed the marked products or services, it doesn’t belong to proper and reasonable use of trademark, thus it also constituting infringing the trademark rights.
[Synopsis] Appellor (original defendant in the judgment): Foshan Shunde Baojun Automobile Service Co., Ltd. (Baojun Company) .
Appellee (original plaintiff in the judgment): MICHELIN Group Corporation(COMPAGNIE GENERALE DES ETABLISSEMENTS MICHELIN) (Michelin Company) .
Michelin Company respectively registers “ ”, “MICHELIN” and “ 米其林” and other trademarks for tyre products under Class 12 and commodities and services under Class 37 including tyres, tyre repair, tyre fitting, and vehicle maintenance and repair. Baojun Company is not only the seller of Michelin and Bridgestone and other tyres, but also the server of tyre assembly and vehicle maintenance.
The store of Baojun Company has a relatively wide main door, the part above the central main door is erected with business plaque with full name of “Baojun Automobile Service Co., Ltd.”, the part below the central main door is listed with main operating items of“automobile service, tyre service and four wheel alignment” with larger words in the right; the left part of main door is hung with business plaque marked with “ ”, “MICHELIN” and “米其林” tyres and other patterns and text marks, the upper left of the plaque is marked with the name of “Baojun Automobile Service Co., Ltd.” and the lower part of the plaque is with words of “four wheel alignment” and “professional repair” and other expressive words. The store of Baojun Company sells Michelin and Bridgestone tyres and others.
Michelin Company thinks that “ ”, “MICHELIN” and “ 米其林” trademarks are used in the business plaque in the left of main door infringes its trademark right and institute legal proceedings to request judging: (1) Baojun Company immediately stops infringing exclusive right to use registered trademarks of Michelin Company and dismantles the plaque with “ ”, “MICHELIN” and “ 米其 林” and other words and graphic logos; (2) Baojun Company compensates economic losses and reasonable safeguarding expenditures of Michelin Company for 100 thousand Yuan in total; (3) Baojun Company publishes notice on CHINA INTELLECTUAL PROPETY NEWS and publicly removes influence for its infringement; (4) litigation costs shall be assumed by Baojun Company.
Baojun Company replies that: (1) Baojun Company has already removed the involved plaque immediately after knowing this litigation. (2) Baojun Company not only sells Michelin standard tyres, but also sells Bridgestone tyres, trademark use behavior of Baojun Company will not constitute the public confusion and it doesn’t constitute trademark infringement. The use behavior of Baojun Company also will not lead to economic loss of 100 thousand Yuan. (3) There is also no basis upon which Michelin Company requires publishing notice to eliminate influence.
Through trial, Guangdong Foshan Intermediate People’s Court holds that firstly, Michelin Company registers the trademark involved for tyres, inner tube, tyre repair and tyre fitting and other tyre sales, tyre service products and services under Category 12, 37 and 35, and the actual business of Baojun Company is tyre sales and fitting services and others closely related with tyres, so it can be identified that the sold products and service type of Baojun Company remain same products and service as the confirmed products and service types of Michelin Company on trademark involved. Secondly, the logo used on the store plaque for selling tyre products of Baojun Company is same as the composition of involved registered trademark of Michelin Company.
Thirdly, although Baojun Company also sells standard Michelin tyres, it also sells standard tyres of others brands and Baojun Company isn’t Michelin tyre franchised store authorized by Michelin Company and its affiliated company, so use of trademark in the plaque of Baojun Company doesn’t belong to normal use of registered trademark of Michelin Company. Following judgments are made: 1. Baojun Company shall immediately stop infringing the trademark of Michelin Company and remove the plaque with “ 米其林”, “MICHELIN” and “ ” from effective date of this judgment; 2. Within 10 days after the effective date of this judgment, Baojun Company shall compensate Michelin Company with RMB20000 and pay reasonable legal fees of RMB10000 for safeguarding its interest; 3. Other litigation claims of Michelin Company are dismissed. The litigation fee is RMB2300 which shall be respectively assumed by Michelin Company and Baojun Company for RMB700 and RMB1600.
Baojun Company refuses to obey judgment of the first instance and appeals to Guangdong High People’s Court, and Guangdong High People’s Court dismisses the appeal and maintains the original judgment in the second instance.
[Judge’s Comment] In this case, the most important part is qualitative and quantitatively analysis of trademark use meaning, based on which judging whether infringing behavior of trademark is established and main involving issues are as follows.
1. Classify infringement behavior in combination with products or services of litigated infringer During hearing of trademark infringement cases, the first is to determine the trademark right claimed by the proprietor, products or service category involved by the trademark and detailed sued behavior of sued infringer, and determination of specific sued behavior shall be distinguished in combination with products or services supplied by sued infringer.
In this case, the proprietor Michelin Company respectively registers “ ”, “MICHELIN” and “ 米其林” and other trademark involved for tyre products under Category 12 and for tyre repair, tyre assembling, vehicle maintenance and repair and other services under Category 37, Michelin Company thinks the behavior that Baojun Company uses the above trademark involved on the business plaque in the left of main door has already infringed its trademark right and institutes legal proceedings.
In combination with its business scope and supplied products and services, Baojun Company is identified as two different operators in tyre products or services, one is seller of MICHELIN and Bridgestone and other tyres; the other is server of tyre assembling and vehicle repair. When playing the role of two different operators, the fact that Baojun Company uses trademark involved on the business plaque in the left of main door is connected with different products and services of Baojun Company, it shall be distinguished as two different sued infringing behaviors and it is necessary to inspect whether such two behaviors constitute infringement.
Such circumstance where one sued fact involves multiple infringing behaviors shall be given special attention in trademark right infringing and unfair competition dispute cases, thus avoiding neglecting differences between components of different infringing behaviors and making false allegation.
2. Trademark use and its qualitative and quantitative analysis Article 48 of the Trademark Law (revised in 2013) adds definition of trademark use. This article originates from the Regulations on Implementation of the Trademark Law (implemented in 2002) and adds essentials of identification which means trademark use is a behavior of using trademark in commercial activities and for recognizing product resources. Hereby, the use of trademark in the Trademark Law is limited to exert identification function of the trademark, then there are at least two following conclusions: one is use method that doesn’t exert identification function of the trademark can form defense of not infringing the trademark right, and the typical circumstance is descriptive use of the trademark; the second is use belonged to exert identification function of the trademark shall have reasonable limit and scope, and the use results shall enable the public to realize one-to-one correspondence of the trademark with products or services; if the trademark is used out of the identified scope of products or services, it is not belonged to proper and reasonable use and shall constitutes infringement. The followings shall be discussed respectively.
(1) Establish trademark descriptive use of non-infringing counterplea The descriptive use of the trademark is not belonged to use of exerting identification of the trademark and not “trademark use” stipulated in the Trademark Law. Article 59(1) of the Trademark Law (revised in 2013) stipulates that as for common name, graphic and model of this product, or direct expression of product quality, main raw materials, functions, usage, weight, quantity and other characteristics or geographical names contained in the registered trademark, the proprietor of registered trademark has no right to prohibit others from fair use. Such provision expands from Article 49 of the Regulations on Implementation of the Trademark Law (implemented in 2002). Hereby, in order to describe the sold quality, raw materials, functions, usage, weight, quantity and others to use others’ trademark properly and in good faith, such non-identifiable use will not lead the public to be confused, and doesn’t constitute infringement of exclusive right to use trademark.
In this case, if Baojun Company centrally displays trademarks of all sold tyres or all repaired automobiles and supplements them with explanatory words to show products and service contents supplied in the store to customers, it belongs to fair use of other trademark for describing the products or services and will not lead to confusion of the public, certainly it will not constitute infringement. Opposite, Baojun Company only highlight using of involved Michelin trademark on its business plaque of the main door, directly, specifically and solely points to Michelin, this is not descriptive use of the trademark.
(2) Infringing behavior exceeding reasonable trademark use scope Under the premise that the trademark is limited to identifiable use, without approval of trademark registrant, use of any same or similar trademark on same or similar products is belonged to infringement of a trademark; only when the trademark used by the operator in the products or services is approved by the trademark registrant, the use method of operator in the operation has the issue of reasonable scope. For example, in this case, it is a dispute over whether the use of the trademark involved on business plaque of the operating store of Baojun Company is belonged to infringement of a trademark when store of Baojun Company truly sells Michelin tyres with legal approval.
In addition, it is worth noting that in this case, as a legal seller of Michelin tyres, Baojun Company certainly has the right to use the trademark involved to identify Michelin tyres; but as the method they use the trademarks involved on the business plaque exceeds reasonable trademark use scope, thus constituting infringement. Such infringement is not only different from circumstances stipulated in Article 52(1)~(4) of the Trademark Law (revised in 2001) and Article 57(1)~(6) of the new Trademark Law (revised in 2013), but also not belonged to several conditions stipulated in Article 1 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Applicable Laws in the Hearing of Trademark Civil Dispute Cases. The Article 52(5) of the Trademark Law (revised in 2001) and Article 57(7) of the new Trademark Law (revised in 2013) are used as the legal basis for identifying it as infringement. [Keywords] The lawful rights and interests of both litigants, who have both gained certain popularity and influence in their respective operation regions with entitled registered trademarks and brand names in long-term operation and usage, shall be protected in accordance with the laws. When hearing such cases, the court shall defend the intellectual property rights of exclusive right of registered trademark and name of enterprise in accordance with the law, while fully respect the history of establishment and development of both enterprises, and attach importance to the coexistence and operating conditions.
The Time-Honored Brand enterprises have been coexisting for a long time, entitled to the lawful rights and interests respectively, including exclusive right of registered trademark and name of enterprise, however, their operations shall observe the rule of mutual reasonable avoidance and fair use. Where a party respects no reasonable avoidance and results in infringement, such party shall be liable for the corresponding indemnity liability.
[Synopsis] Shanghai Dingfeng Fermented Food Co., Ltd. (Shanghai Dingfeng) was established in 1864, and had registration trademark No. 635374 “ ” for goods including ice cream in 1993, and trademark No. 878214 “ ” for goods including dumpling, steamed bun and steamed roll in 1996.
Harbin Laodingfeng Food Co., Ltd. (Harbin Laodingfeng) was established in 1911, and had registered trademark No. 157379 “ ” for cake products in 1982; trademark No.
3324466 “ ” for goods including ice cream in 2004; trademark No. 3382102 “ ” for services including import & export agency in 2004; trademark No.
4625229 “ ” for goods including cakes and sweets in 2008; and trademark No.
5975224 “ ” for goods including cakes and sweets in 2010.Shanghai Dingfeng instituted legal proceedings at the Harbin Intermediate Court and complained that: Harbin Laodingfeng Food Co., Ltd. used trademark and brand “Laodingfeng” and constituted trademark infringement and unfair competition. The court of first instance said that: Harbin Laodingfeng Food Co., Ltd. used the brand and trademark “ 老 鼎丰” lawfully, but constituted trademark infringement and unfair competition when using “ 鼎丰” on website, and adjudicated Harbin Laodingfeng Food After the adjudication, both Parties appealed to the Heilongjiang Higher People’s Court. The Heilongjiang Provincial Superior People’s Court adjudicated in the second instance that: the appeal was rejected, and the original adjudication was affirmed. [Judge’s Comment] This case is representative in right conflict and dispute generated from using brands and trademarks of two Time-Honored Brand enterprises in the northern and southern China. The brands and trademarks of both litigants have a centuries-old historical inheritance, and are well-known in their regions and industries respectively. The significance of this case rests on adequate affirmation of the historical inheritance of two Time- Honored Brand enterprises and their legitimacy of brands and trademark, and definite settlement of adjudication rules of right conflicts between Time-Honored Brand enterprises through adjudication of this case, i.e. under premise of giving full respect to history, and based on the principles of integrity and credibility, to take "adequate care" of the part used by the defendant fairly, further regulate the using administration on brand and trademark of Time-Honored Brand enterprises, and settle dispute in this case reasonably. [Keywords] This case was gang crime of trademark.
The court had sentenced different punishment based on the criminal situations and harm consequence of the defendants, which had reflected the fighting force of Chinese court against the criminal activities including counterfeit registered trademarks, as well as the criminal justice policy of combining punishment with leniency.
[Synopsis] Japanese company Koito Corporation is mainly engaged in production of lighting apparatus for vehicles, and Koito Company had been established with sponsor of Koito Corporation and several firms. The metal halide lamps used by brands including Passat Lingyu, New Lingyu and New Passat under SVW are supplied by Koito Company. Since 2011, Surname A ordered the subassembly of branded halogen headlight produced by Koito Company in large quantity at price of RMB370 ~560 without approval from the trademark right owner Koito Corporation or the licensed user Koito Company, and recycled the subassembly of xenon headlight in large quantity at price of RMB50~500. Surname Adismantled the baffle from the subassembly of branded halogen lamp, added on the recycled baffle, harness and socket from xenon lamp subassembly altered the fixed position of bulb, and illegally refitted the subassembly of halogen lamps of Koito Company for the aforesaid three SVW models into xenon lamp subassembly without permission, or further refitted as xenon lamp assembly after adding bulb and computer board. The sales were over RMB1.63 million by collection after selling. During the period from the first half of 2011 to October of 2012, 16 defendants including Surname B and Canda Company had bought the subassembly and assembly of xenon lamp of counterfeit trademarks in form of payment after selling with purchase amounts from RMB50,000 plus to RMB380,000 plus respectively, and marketed without receiving license from the right holder even knowing perfectly well that the subassembly and assembly of xenon lamps provided by the defendant Surname A were goods of counterfeit registered trademarks refitted solely with subassembly of halogen lamp. After being found out, 7 defendants, entered into the Indemnity Agreement of Trademark Infringement with the victim entity one after another, and paid RMB30,000 ~90,000 as compensation of economic loss respectively. The victim entity has forgiven the illegal activities of some defendants, and agreed on the judicial authority to impose a lenient, mitigated or relieved sentence on the aforesaid defendants.
The Pudong Court said after hearing that the defendants Surname Aetal used trademark the same to the registered trademark of the same goods for the purpose to seek illegal interests without license from the owner or the user of registered trademark, the circumstances were particularly serious, and their activities had constituted the crime of counterfeiting the registered trademark.
The defendant Surname B and Canda Company had known the goods of counterfeit registered trademarks perfectly well but marketed with sales reaching the level of huge and major respectively, and their activities had constituted the crime of selling goods of counterfeit registered trademarks.
Therefore, in concordance with the provisions of Article 213 and 214 of the Criminal Law and statutory provisions concerned, and based on the circumstance of crime, social harm, penitence attitude and supervision conditions, the Court had adjudicated Surname Aas crime of counterfeiting the registered trademark, sentenced penal servitude for 4 years and 6 months, and fined RMB800,000; while other 3 persons and 7 corporate principals and 7 companies had constituted the crime of counterfeiting the registered trademark and the [Keywords] The decision in this case had given full play of the judicial review function of administrative adjudication on IP administrative execution in practice through judicial review on trademark administrative sanction, supervised and supported the administrations’ action according to law, defended the lawful rights and interests of IP administration, maintained IP administration order, and boosted IP administrative protection.
crime of selling goods of counterfeit registered trademarks, the Court had sentenced different penal treatment of 9 persons respectively, including criminal detention, imprisonment with a suspension of sentence or imprisonment for a definite, and fined RMB7,000 ~160,000 respectively; and fined the defendant entities RMB28,000 ~9 0,000 respectively. The illegal gains received by all defendants were recovered. After adjudication, some defendants appealed, but the second instance court affirmed the original adjudication.
[Judge’s Comment] With the people’s identification on the value of trademark, and driven by economic interest, the activities of free rider -- counterfeiting the other trademark, emerged in endlessly, which has resulted in disaster to the consumers and the trademark right owners. The defendants in this case were engaged in criminal production and selling of counterfeit xenon lamps, and had a full industry chain including providing counterfeiting technology, tools, materials and selling. This type of criminal organizations with coordinated process of “production, supply and selling” has a major social harmfulness. Each defendant was sentenced proper criminal penalty respectively through exact confirmation of pattern of behavior and degree of harm, and based on the criminal justice policy of combining punishment with leniency, which has warned the criminal activities.
[Keywords] The decision in this case had given full play of the judicial review function of administrative adjudication on IP administrative execution in practice through judicial review on trademark administrative sanction, supervised and supported the administrations’ action according to law, defended the lawful rights and interests of IP administration, maintained IP administration order, and boosted IP administrative protection. [Synopsis] The third party Meigu Company is the trademark right owner of “ ”, “ 美 固钉” and “ 美固” Hutang Company is the trademark right owner of “ 每固” All aforesaid trademarks are registered under goods of class 6 rivets and nails of metal.
Meigu Company filed a written complaint to the defendant on July 14, 2014, for Hutang Company using labels of “ ” and “ 每固钉? ” on product package similar to Meigu's registered trademark. After receiving the complaint, the defendant had inspected the business place of Hutang Company on August 12 in the same year, taken measures concerned on the products of suspected infringement, made up procedures of administrative enforcement arrangement on the ensuing day, and put on record.
In the afternoon of the same day, Meigu Company had identified the seized products of Hutang Company. After confirmation, there were 5 packs of products bearing pattern of “ 美固? 钉”, 949 boxed of products printed with label “ ” , pattern “ 每固钉? ” and “ 每固? 钉” and information of Hutang Company, and 83 boxed of products printed with trademark and company information of Meigu Company at Hutang Company.
Therefore, the defendant had confirmed that Hutang Company had infringed the exclusive right of registered trademark, altered registered trademark unilaterally, and sold goods infringing exclusive right of registered trademark, and imposed the administrative sanctions of ceasing infringement, seizing infringing products, instructing to correct and fine a penalty.
Hutang Company refused to accept the decision. After reconsideration, the decision of administrative penalty was maintained. Hutang Company filed an administrative suit on illegal administration procedure of the defendant, no violation of the trademark law and improper penalty amount.
Pudong Court said after hearing that, firstly, on the legality of administration procedures of the defendant, the defendant had taken lawful procedures of administrative enforcement arrangement. In the meanwhile, the activity of Meigu Company distinguishing authenticity of seized products on the same day of case filing was also compatible with administration procedure. Secondly, on the legality of Hutang Company’ activities, Hutang Company used the label “ ” on packing boxes similar to the third party's trademark “ ”, which had constituted using the similar trademark of the same products, and Hutang Company shall be liable for the liabilities concerned.
The symbol “?” added to trademark is used to indicate it as registered trademark. However, Hutang Company did not register the trademark “ 每固钉 ”, thus using the label “ 每固钉? ” had constituted altering registered trademark unilaterally; and Hutang Company had failed of demonstrating the lawful source of the seized infringing products at its business place, which had constituted selling goods of infringing the exclusive right of registered trademark. Finally, on the legality and reasonableness of penalty result, the court had detected that the penalty amount in the statutory range decided by the defendant based on the nature and quantity of seized product was compatible with the provisions of the Administrative Penalties Law on measurement concerning penalty. In conclusion, the administrative penalty decided by the defendant was not improper, and the litigious claim of Hutang Company has been rejected.
[Judge’s Comment] This case was the first case of IP administration heard in by the People’s Court of Pudong District.
This case was initiated by Hutang Company refusing to accept the administrative penalty decision made by the Pudong Market Authority. The adjudication spread out exposition on the legality of administration, legality of punished behavior, legality and reasonableness of penalty result layer of layer, inspected and supervised the administrative execution in practice, compared the trademarks and labels used by the defendant and the third party from multiple dimensions, had comprehensive evaluation on the penalty measurement, and believed that the administrative penalty was not improper, and the defendant conducted trademark infringement. The court did not affirm a certain administrative act based on the provisions of the Administrative Litigation Act prior to revision, but rather rejected the litigious claim of the prosecutor integrating the spirit of judicial interpretation concerned in the Administrative Litigation Act, which is also compatible with the legislative spirit of the amended Administrative Litigation Act. [Keywords] The significance of this adjudication rests on that the contract of trademark license non-countering the third party acting in good faith without filing shall be direct at the relationships between different licensees and belong to “counter” in significance of trademark license instead of trademark infringement. Using the trademark registered by another person in traditional Chinese in form of simplified Chinese has constituted proximity due to correspondence between the traditional Chinese and the simplified Chinese, which belongs to the routine cognitive domain of audience of Chinese characters. The defendant infringer had infringed multiple registered trademark and corporate brands of the right holder in the meanwhile. The protection on corporate brand has been adequate to protect the lawful rights and interests, and it is unnecessary to have double protection on trademark. If the defendant infringer entitled to the priority right shall be identified based on the subjective and objective conditions at the time of claiming the right received. Friendly coexistence shall be based on the collateral status of different entitlement and different principal parts existing respectively, which shall be affirmed if compatible with right status under certain conditions. The right holder’s request for adjudication to order the defendant infringer ceasing to use the infringed brand immediately and changing its name of enterprise belonged to the competition and cooperation on request, which could be realized with adjudication to order ceasing to use the infringed brand, thus the court was unsuitable to give repeated adjudication.
[Synopsis] HSBC registered trademarks “ 滙豐” and “ 汇丰” on October 28 of 1994 and February 28 of 1997 respectively. HSBC registered trademarks “ 汇丰” on October 28 of 2007. HSBC authorized HSBC China with common license on August 28 2015 to use HSBC as the registered trademark of the exclusive right holder of registered trademark. HSBC licensed HSBC China to use tradenames “ 滙豐” and “ 汇丰” in Chinese mainland. Shanxi Huifeng Company was established with asset management as capital operations on September 13, 2004. HSBC and HSBC China argued that Shanxi Huifeng Company used trademarks “ 汇丰” and “ 滙豐” and took “ 汇丰” as the Company title, which had infringed on the trademark right and constituted unfair competition.
The Xi’an Municipal Intermediate People’s Court said after hearing that, HSBC as the exclusive right holder of registered trademark, and HSBC China as the licensee of trademark using contract of common license, both were qualified subjects of litigation. Shanxi Huifeng Company used “ 汇丰” as its website name or title independently and prominently, which had functioned to highlight and indicate the service source, and tended to result in the public concerned to mistake Shanxi Huifeng Company, its website Involved and the operation engaged existing specific connection with the business of the exclusive right holder of trademark, and constituted infringement on HSBC China’s right of exclusive use of trademark “ 汇丰” and “ 滙豐”. The time of HSBC receiving trademark No. 4175645 “ 汇丰” was prior to establishment of Shanxi Huifeng Company. Due to confirmation of the aforesaid trademark infringement being adequate to protect the right holder’s lawful rights and interests, thus infringement of registered trademark No. 4175645 “ 汇丰” by Shanxi Huifeng Company was not affirmed.
When Shanxi Huifeng Company was registering its name of enterprise, HSBC had been well-known in the financial services. Shanxi Huifeng Company did not fulfill its duty to make reasonable avoidance, which had objectively utilized the popularity and goodwill of trade name “ 汇丰”, developed advantage of market competition, subjectively had the intention of free rider, violated the principle of integrity and credibility, and constituted unfair competition. Because the accusation of HSBC and HSBC China on unfair competition had been protected under the right of corporate name, it was not repeated. Shanxi Huifeng Company claimed that its company title “ 汇丰” coexisted with the trademark right and trade names of HSBC and HSBC China.
Because the nature infringement act was not changed due to long-term usage of the infringer, the foundation of coexisting the title “ 汇丰” did not exist. In conclusion, the court adjudicated that: Shanxi Huifeng Company shall cease infringement of the exclusive right of registered trademark No.
955523 “ 汇丰” and 770554 “ 滙豐” of HSBC and HSBC China immediately; cease to use “ 汇丰” as the title of enterprise immediately; and pay RMB100,000 to HSBC and HSBC China as compensation (including reasonable charges). After adjudication, Shanxi Huifeng Company appealed, and this case is heard in the second instance at present.
[Judge’s Comment] Through adjudication of this case, the court said that the nature of infringement act was not changed due to long-term usage of the defendant infringer, the right was not legalized due to actual usage of the infringer, and the infringer was unable to receive the coexisting rights of trademark and trade name with right holder. Otherwise, it would go against the legislative intendment and system value of fair dealing system including the priority right and the friendly coexistence.
In juridical practice, the defendant infringer often defends based on multiyear usage of corporate title, and claims to share the title or trademark with the right holder. The adjudication of this case has clarified the adjudication route for confirmation of trademark, i.e. identifying the main considerations of coexisting: (1) different users without intention of infringement subjectively; (2) user having lawful foundation on usage of trademark objectively; (3) different users using in continual status quo respectively; and (4) different users using in their original ranges respectively. Otherwise, for the defendant infringer using with malignity or infringement, the right holder shall identify such infringement found or claimed at any time. The adjudication of this case serves as reference for hearing similar cases.
(Translated by Zeng Shuangquan & Liu Juan)
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