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KVC Co., Ltd., Japan v. Shanghai KVC Valve Co., Ltd.
File No. C080543
Case Name: KVC Co., Ltd., Japan v. Shanghai KVC Valve Co., Ltd.
Filing Date: N/A
Plaintiff: KVC Co., Ltd., Japan (KVC Japan)
Defendant: Shanghai KVC Valve Co., Ltd. (Shanghai KVC)
Appellant: KVC Co., Ltd., Japan (KVC Japan)
Appellee: Shanghai KVC Valve Co., Ltd. (Shanghai KVC)
Cause(s) of Action: Trademark infringement
Remedy Requested: Revoke the trial court’s decision, and make just ruling, including (i) recognizing the appellee’s infringing act of using acronyms “SHKVC” and “SKVC”; (ii) paying damages for economic losses in the amount of RMB 500,000.
Trial Court: PRC Shanghai First Intermediate People’s Court
Appeal Court: PRC Shanghai People’s High Court
Disposition: The trial court ruled partially in favor of the plaintiff with regard to the charge of trademark infringement. The trial court ordered the defendant to (i) stop infringing on the plaintiff’s exclusive rights to use its registered trademark “KVC”; (ii) pay damages for economic losses in the amount of RMB 20,000. The appeal court subsequently corrected the trial court’s mistake in judging that the use of “SHKVC” and “SKVC” did not constitute trademark infringement, but affirmed the trial court’s other judgments.
Decision Date: February 27, 2008
Summary: The plaintiff (KVC, Japan) charged the defendant (Shanghai KVC) with infringing on its exclusive rights to use the registered trademark “KVC” by using the English company name “Shanghai KVC Valve Co., Ltd.” and its acronyms “SHKVC” and “SKVC” on the company’s web site and using the name “Shanghai KVC” to promote itself at trade fairs and “SHKVC” as its products’ mark. The trial court ruled partially in favor of the plaintiff. The appeal court subsequently corrected the trial court’s mistake.
During the course of the proceedings, the trial court established that the defendant formed a joint venture with a company from Singapore and had the English name “Shanghai Liang Gong KVC Valve Co., Ltd.”. However, the company from Singapore later transferred its shares to the defendant and in the Share Transfer Agreement it was stated that the defendant was not to use the trademark KVC in any form. The trial court held that the defendant’s continued use of KVC in its company’s English name and its use of the English name to promote itself misled the public to confuse the defendant with the plaintiff; and this act constituted trademark infringement. However, the trial court deemed that the defendant’s use of the acronyms “SHKVC” and “SKVC” did not infringed on the plaintiff’s trademark rights as these names/marks projected a different visual effect and showed much difference in pronunciations from the plaintiff’s registered trademark “KVC”. The trial court based the amount of damages awarded on factors such as the nature, the seriousness, and the consequences of the infringing act.
The appeal court held that KVC is the prominent part of the appellant’s (KVC, Japan) registered trademark and design and in comparing the said trademark with the acronyms the appellee (Shanghai KVC) used, even though there were differences, the similarity in the prominent part was enough to mislead the consumers to believe that the appellee was an affiliated company of the appellant in Shanghai. The appeal court held that the appellee’s use of the said acronyms also infringed on the appellant’s trademark rights and corrected the trial court’s misjudgment thereof. However, the appeal court affirmed the amount of damages the trial court awarded due to the appellant’s failure in submitting evidence concerning the scale, the consequences, the duration of the infringing act; the price and quantity of the infringing products; and the appropriate fees paid by the right holder to stop the infringing act despite the appellant’s claim that the infringing act was serious and malicious, its trademark highly well-known, and the trademark licensing fee should be taken into consideration in deciding the amount of damages.
Copyright 2008, InterLingua.com, Inc.
Case Name: KVC Co., Ltd., Japan v. Shanghai KVC Valve Co., Ltd.
Filing Date: N/A
Plaintiff: KVC Co., Ltd., Japan (KVC Japan)
Defendant: Shanghai KVC Valve Co., Ltd. (Shanghai KVC)
Appellant: KVC Co., Ltd., Japan (KVC Japan)
Appellee: Shanghai KVC Valve Co., Ltd. (Shanghai KVC)
Cause(s) of Action: Trademark infringement
Remedy Requested: Revoke the trial court’s decision, and make just ruling, including (i) recognizing the appellee’s infringing act of using acronyms “SHKVC” and “SKVC”; (ii) paying damages for economic losses in the amount of RMB 500,000.
Trial Court: PRC Shanghai First Intermediate People’s Court
Appeal Court: PRC Shanghai People’s High Court
Disposition: The trial court ruled partially in favor of the plaintiff with regard to the charge of trademark infringement. The trial court ordered the defendant to (i) stop infringing on the plaintiff’s exclusive rights to use its registered trademark “KVC”; (ii) pay damages for economic losses in the amount of RMB 20,000. The appeal court subsequently corrected the trial court’s mistake in judging that the use of “SHKVC” and “SKVC” did not constitute trademark infringement, but affirmed the trial court’s other judgments.
Decision Date: February 27, 2008
Summary: The plaintiff (KVC, Japan) charged the defendant (Shanghai KVC) with infringing on its exclusive rights to use the registered trademark “KVC” by using the English company name “Shanghai KVC Valve Co., Ltd.” and its acronyms “SHKVC” and “SKVC” on the company’s web site and using the name “Shanghai KVC” to promote itself at trade fairs and “SHKVC” as its products’ mark. The trial court ruled partially in favor of the plaintiff. The appeal court subsequently corrected the trial court’s mistake.
During the course of the proceedings, the trial court established that the defendant formed a joint venture with a company from Singapore and had the English name “Shanghai Liang Gong KVC Valve Co., Ltd.”. However, the company from Singapore later transferred its shares to the defendant and in the Share Transfer Agreement it was stated that the defendant was not to use the trademark KVC in any form. The trial court held that the defendant’s continued use of KVC in its company’s English name and its use of the English name to promote itself misled the public to confuse the defendant with the plaintiff; and this act constituted trademark infringement. However, the trial court deemed that the defendant’s use of the acronyms “SHKVC” and “SKVC” did not infringed on the plaintiff’s trademark rights as these names/marks projected a different visual effect and showed much difference in pronunciations from the plaintiff’s registered trademark “KVC”. The trial court based the amount of damages awarded on factors such as the nature, the seriousness, and the consequences of the infringing act.
The appeal court held that KVC is the prominent part of the appellant’s (KVC, Japan) registered trademark and design and in comparing the said trademark with the acronyms the appellee (Shanghai KVC) used, even though there were differences, the similarity in the prominent part was enough to mislead the consumers to believe that the appellee was an affiliated company of the appellant in Shanghai. The appeal court held that the appellee’s use of the said acronyms also infringed on the appellant’s trademark rights and corrected the trial court’s misjudgment thereof. However, the appeal court affirmed the amount of damages the trial court awarded due to the appellant’s failure in submitting evidence concerning the scale, the consequences, the duration of the infringing act; the price and quantity of the infringing products; and the appropriate fees paid by the right holder to stop the infringing act despite the appellant’s claim that the infringing act was serious and malicious, its trademark highly well-known, and the trademark licensing fee should be taken into consideration in deciding the amount of damages.
Copyright 2008, InterLingua.com, Inc.
Biggest Amount of Counterfeit Viagra Tablets Seized
File No. N080524
Title: Biggest Amount of Counterfeit Viagra Tablets Seized
Source: customs.gov.cn
Date: May 13, 2008
On May 10, Dalian Airport Customs seized a large quantity of counterfeit Viagra tablets while conducting passenger inspection for outbound flight OZ302 (Dalian-Seoul).
It is learned that these Viagra tablets, in the amount of 2,340 tablets and with a value of over RMB200,000, were seized from the personal luggage of a South Korean passenger. This is the most serious intellectually property infringement case that involves a pharmaceutical trademark discovered through passenger inspection by Dalian Airport Customs since August of 2005, and it is the second case when outbound counterfeit Viagra was seized. Earlier on March 24, Dalian Airport Customs seized 900 counterfeit Viagra tablets while conducting passenger inspection for a flight flying from Dalian to Incheon. The case has been transferred to the police department for further investigation.
Copyright 2008, InterLingua.com, Inc.
Title: Biggest Amount of Counterfeit Viagra Tablets Seized
Source: customs.gov.cn
Date: May 13, 2008
On May 10, Dalian Airport Customs seized a large quantity of counterfeit Viagra tablets while conducting passenger inspection for outbound flight OZ302 (Dalian-Seoul).
It is learned that these Viagra tablets, in the amount of 2,340 tablets and with a value of over RMB200,000, were seized from the personal luggage of a South Korean passenger. This is the most serious intellectually property infringement case that involves a pharmaceutical trademark discovered through passenger inspection by Dalian Airport Customs since August of 2005, and it is the second case when outbound counterfeit Viagra was seized. Earlier on March 24, Dalian Airport Customs seized 900 counterfeit Viagra tablets while conducting passenger inspection for a flight flying from Dalian to Incheon. The case has been transferred to the police department for further investigation.
Copyright 2008, InterLingua.com, Inc.
Sentenced for Selling Counterfeit Personal Care Products in Large Quantities
File No. N080530
Title: Sentenced for Selling Counterfeit Personal Care Products in Large Quantities
Source: chinacourt.org
Date: May 29, 2008
On May 28, Jiangxi Province Nanchang City Xihu District People’s Court gave first instance ruling, sentencing the accused, XU Jin, to a three-year fixed term imprisonment and a fine in the amount of RMB 200,000 for crime of selling products bearing counterfeit registered trademarks.
The court established that since April of 2007, XU Jin sold to nine vendors in Nanchang City 1,858 boxes of counterfeit shampoo and body wash products, bearing registered trademarks, such as Head & Shoulders, Rejoice, Panteen, Oil of Olay, Safeguard, Icarlus, Lux, and Clear, the rights to which were held by P & G (China) Co., Ltd. and Unilever (China) Investment Co., Ltd. The sales amounted to over RMB 150,000. On December 3 of the same year, Nanchang City Qingyunpu District Bureau of Quality and Technical Supervision seized and sealed XU Jin’s counterfeit personal care products with the said counterfeit trademarks that he had not sold out, which valued at over RMB 240,000. The court gave the aforesaid verdict in accordance with the Law after trial.
Copyright 2008, InterLingua.com, Inc.
Title: Sentenced for Selling Counterfeit Personal Care Products in Large Quantities
Source: chinacourt.org
Date: May 29, 2008
On May 28, Jiangxi Province Nanchang City Xihu District People’s Court gave first instance ruling, sentencing the accused, XU Jin, to a three-year fixed term imprisonment and a fine in the amount of RMB 200,000 for crime of selling products bearing counterfeit registered trademarks.
The court established that since April of 2007, XU Jin sold to nine vendors in Nanchang City 1,858 boxes of counterfeit shampoo and body wash products, bearing registered trademarks, such as Head & Shoulders, Rejoice, Panteen, Oil of Olay, Safeguard, Icarlus, Lux, and Clear, the rights to which were held by P & G (China) Co., Ltd. and Unilever (China) Investment Co., Ltd. The sales amounted to over RMB 150,000. On December 3 of the same year, Nanchang City Qingyunpu District Bureau of Quality and Technical Supervision seized and sealed XU Jin’s counterfeit personal care products with the said counterfeit trademarks that he had not sold out, which valued at over RMB 240,000. The court gave the aforesaid verdict in accordance with the Law after trial.
Copyright 2008, InterLingua.com, Inc.
Transfer Film for Producing Infringing Trademarks Seized for the First Time
File No. N080529
Title: Transfer Film for Producing Infringing Trademarks Seized for the First Time
Source: customs.gov.cn
Date: April 18, 2008
On April 16, Xiamen Customs for the first time seized 610 pieces of transfer film with print designs of infringing trademarks. It is learned that there are 6 to 33 print designs of infringing trademarks of all types, such as NIKE and ADIDAS, on each piece of transfer film. Through light exposure, a print design can be transferred from a transfer film to a printing plate, and then the print designs of the infringing trademarks can be printed on garments in batch processing. Xiamen Customs has confiscated the infringing products.
Copyright 2008, InterLingua.com, Inc.
Title: Transfer Film for Producing Infringing Trademarks Seized for the First Time
Source: customs.gov.cn
Date: April 18, 2008
On April 16, Xiamen Customs for the first time seized 610 pieces of transfer film with print designs of infringing trademarks. It is learned that there are 6 to 33 print designs of infringing trademarks of all types, such as NIKE and ADIDAS, on each piece of transfer film. Through light exposure, a print design can be transferred from a transfer film to a printing plate, and then the print designs of the infringing trademarks can be printed on garments in batch processing. Xiamen Customs has confiscated the infringing products.
Copyright 2008, InterLingua.com, Inc.
P & G’s Charge against Trademark Review and Adjudication Board Dismissed; Its Chinese Transliteration Not Recognized as a Well Known Mark
File No. N080512
Title: P & G’s Charge against Trademark Review and Adjudication Board Dismissed; Its Chinese Transliteration Not Recognized as a Well Known Mark
Source: chinacourt.org
Date: April 09, 2008
P & G of the U. S. brought an action against the Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce for the latter party’s decision to approve the registration of a trademark “BAOJIE”, which was the same as the P & G’s Chinese transliteration, applied by a company in Shantou City for use on clothing and accessories. It is learned on April 04 that Beijing First Intermediate People’s Court did not recognize P & G’s trademark “Baojie” as a well-known mark and supported the Board’s adjudication decision.
P & G claimed that its trademark “Baojie” was registered in China since 1994 and was widely known; and the company had over 300 brand names, among which many, such as Rejoice, Oil of Olay, and Cover Girl, were recognized as well known marks by PRC Trademark Office. P & G claimed that the Shantou company’s trademark was a malicious plagiarism, intentionally misleading consumers, and requested the court to revoke the Board’s decision.
The core of the dispute was whether “Baojie” was a well-known mark. The court decided that the plaintiff did not submit sufficient evidence during the opposition reexamination procedure to prove that “Baojie” qualifies as a well-known mark as prescribed by PRC Trademark Law Article 14. As the Shantou company’s trademark was registered for use for non-identical or dissimilar goods, and as the plaintiff could not prove that its trademark “Baojie”, which enjoyed certain fame in the personal care products industry, was used for clothing and accessories and exhibited influence, the court rejected the plaintiff’s claim that the Shantou company’s trademark “Baojie” would confuse the consumers as to the origin of the products. The court ruled to support the Board’s decision to approve the Shantou company’s registration of the trademark in question.
Copyright 2008, InterLingua.com, Inc.
Title: P & G’s Charge against Trademark Review and Adjudication Board Dismissed; Its Chinese Transliteration Not Recognized as a Well Known Mark
Source: chinacourt.org
Date: April 09, 2008
P & G of the U. S. brought an action against the Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce for the latter party’s decision to approve the registration of a trademark “BAOJIE”, which was the same as the P & G’s Chinese transliteration, applied by a company in Shantou City for use on clothing and accessories. It is learned on April 04 that Beijing First Intermediate People’s Court did not recognize P & G’s trademark “Baojie” as a well-known mark and supported the Board’s adjudication decision.
P & G claimed that its trademark “Baojie” was registered in China since 1994 and was widely known; and the company had over 300 brand names, among which many, such as Rejoice, Oil of Olay, and Cover Girl, were recognized as well known marks by PRC Trademark Office. P & G claimed that the Shantou company’s trademark was a malicious plagiarism, intentionally misleading consumers, and requested the court to revoke the Board’s decision.
The core of the dispute was whether “Baojie” was a well-known mark. The court decided that the plaintiff did not submit sufficient evidence during the opposition reexamination procedure to prove that “Baojie” qualifies as a well-known mark as prescribed by PRC Trademark Law Article 14. As the Shantou company’s trademark was registered for use for non-identical or dissimilar goods, and as the plaintiff could not prove that its trademark “Baojie”, which enjoyed certain fame in the personal care products industry, was used for clothing and accessories and exhibited influence, the court rejected the plaintiff’s claim that the Shantou company’s trademark “Baojie” would confuse the consumers as to the origin of the products. The court ruled to support the Board’s decision to approve the Shantou company’s registration of the trademark in question.
Copyright 2008, InterLingua.com, Inc.
A Garment Company in Shaoxing Ordered to Pay Damages for Irresponsible Trademark Labeling
File No. N080506
Title: A Garment Company in Shaoxing Ordered to Pay Damages for Irresponsible Trademark Labeling
Source: epaper.shaoxing.com.cn
Date: April 25, 2008
Without the permission of Lacoste Co., Ltd, Shaoxing Shulan Knitting and Garments Co., Ltd. labeled the garments it manufactured with the crocodile trademark and paid a heavy price. Yesterday, Shaoxing City Intermediate People’s Court ordered it to stop the infringing act and pay damages for economic losses in the amount of RMB 200,000.
Lacoste Company was established in 1933 in France and it registered the crocodile trademark in the same year. Over the years, the crocodile trademark acquired high fame and reputation around the globe. In China, Lacoste Company registered the crocodile graphic trademark and the verbal trademark “LACOSTE” on various goods starting from 1980.
Shulan Co. labeled the 399 boxes of men’s T-shirts it manufactured with the trademark “LACOSTE” and the crocodile design without Lacoste Company’s permission, and declared the said goods, with a declared value of US $57,436, at Shanghai Customs for export in October of 2007. Lacoste Company subsequently brought an action against Shulan Company, charging Shulan Company with infringing on its exclusive rights to use the said trademark, requesting injunction and damages in the amount of RMB 500,000.
Even though Shulan Company tried to disclaim the charge by pointing out the differences between the trademark it used and the trademark the plaintiff held the rights to, and the fact that it did not make a sale and did not earn a profit, the court ruled in favor of the plaintiff, ordering injunction and awarding damages in the amount of RMB 200,000.
Title: A Garment Company in Shaoxing Ordered to Pay Damages for Irresponsible Trademark Labeling
Source: epaper.shaoxing.com.cn
Date: April 25, 2008
Without the permission of Lacoste Co., Ltd, Shaoxing Shulan Knitting and Garments Co., Ltd. labeled the garments it manufactured with the crocodile trademark and paid a heavy price. Yesterday, Shaoxing City Intermediate People’s Court ordered it to stop the infringing act and pay damages for economic losses in the amount of RMB 200,000.
Lacoste Company was established in 1933 in France and it registered the crocodile trademark in the same year. Over the years, the crocodile trademark acquired high fame and reputation around the globe. In China, Lacoste Company registered the crocodile graphic trademark and the verbal trademark “LACOSTE” on various goods starting from 1980.
Shulan Co. labeled the 399 boxes of men’s T-shirts it manufactured with the trademark “LACOSTE” and the crocodile design without Lacoste Company’s permission, and declared the said goods, with a declared value of US $57,436, at Shanghai Customs for export in October of 2007. Lacoste Company subsequently brought an action against Shulan Company, charging Shulan Company with infringing on its exclusive rights to use the said trademark, requesting injunction and damages in the amount of RMB 500,000.
Even though Shulan Company tried to disclaim the charge by pointing out the differences between the trademark it used and the trademark the plaintiff held the rights to, and the fact that it did not make a sale and did not earn a profit, the court ruled in favor of the plaintiff, ordering injunction and awarding damages in the amount of RMB 200,000.
Louis Vuitton Malletier, France v. WANG Jun
File No. C080514
Case Name: Louis Vuitton Malletier, France v. WANG Jun
Filing Date: February 13, 2008
Plaintiff: Louis Vuitton Malletier, France (Louis Vuitton)
Defendant: WANG Jun
Appellant: WANG Jun
Appellee: Louis Vuitton Malletier, France (Louis Vuitton)
Cause(s) of Action: Trademark infringement
Remedy Requested: By the plaintiff: forbid WANG Jun to use his design patented shopping bag products. By the appellant: revoke the trial court’s ruling and reject Louis Vuitton’s litigation requests.
Trial Court: PRC Beijing First Intermediate People’s Court
Appeal Court: PRC Beijing People’s High Court
Disposition: The trial court ruled in favor of the plaintiff with regard to the charge of trademark infringement and ordered the defendant not to use the products with the patented design. The appeal court subsequently affirmed the trial court’s ruling.
Decision Date: April 03, 2008
Summary: The plaintiff (Louis Vuitton) charged the defendant (WANG Jun) with infringing on its trademark rights by plagiarizing its registered trademarks and applying the plagiarized patterns on shopping bags to apply for a design patent that was granted. The trial court ruled in favor of the plaintiff. The appeal court subsequently affirmed the trial court’s ruling.
The trial court confirmed that WANG Jun’s patented design is composed of prominent patterns identical or similar to Louis Vuitton’s four registered trademarks. The trial court judged that WANG Jun’s patented design collided with Louis Vuitton’s legal prior rights as Louis Vuitton’s four concerned trademarks were registered before WANG Jun applied for his design patent, and WANG Jun’s products that the patented design was to use on were similar to Louis Vuitton’s. The trial court further decided that WANG Jun’s registration of the said design patent caused prejudice to the exclusive right of Louis Vuitton to use its registered trademarks. Based on PRC Patent Law Article 23, Implementing Regulations of PRC Patent Law Article 65 iii, and PRC Trademark Law Article 52 (5), the trial court ordered WANG Jun not to use the products with his patented design in order not to infringe on Louis Vuitton’s trademark rights.
The appeal court dismissed WANG Jun’s challenge of the trial court’s right in judging the dispute, who regarded that an administrative procedure should come first. The appeal court pointed out that the trial court’s judgment is the premise for the administrative department to make its invalidation decision, and the trial court has the right to judge whenever a conflict is present, citing as support Implementing regulations of PRC Patent Law Article 65 iii, which states that where a request for invalidation of a patent for design is based on the ground that the patent for design is in conflict with a prior right of another person, but no effective ruling or judgment is submitted to prove such conflict of rights , the Patent Reexamination Board shall not accept it. The appeal court further confirmed that WANG Jun’s products were similar to Louis Vuitton’s in spite of WANG Jun’s objection, stating that the International Classification of Goods and Services, which was to facilitate the registration of marks and administrative management, was not the only criterion to judge if two products were similar. Although there was no evidence that WANG Jun’s products were put on the market, the appeal court affirmed that the trial court’s ruling was a proper measure to forestall a potential injury on Louis Vuitton. The appeal court further stated that relevant judicial interpretations by the Supreme People’s Court did not give a finite list of the acts that cause prejudice to the exclusive right of another person to use a registered trademark, rejecting WANG Jun’s claim that his act was not described in the interpretations and did not cause such prejudice. The appeal court also decided, concerning WANG Jun’s complaint that the trial court did not notify him of the change in the collegial panel members, that even if the trial court were negligent in this respect, it did not change the fact that the trial court gave the correct ruling. Based on PRC Civil Procedure Law Article 153 (1), the appeal court supported the trial court’s ruling and rejected WANG Jun’s appeal.
Copyright 2008, InterLingua.com, Inc.
Case Name: Louis Vuitton Malletier, France v. WANG Jun
Filing Date: February 13, 2008
Plaintiff: Louis Vuitton Malletier, France (Louis Vuitton)
Defendant: WANG Jun
Appellant: WANG Jun
Appellee: Louis Vuitton Malletier, France (Louis Vuitton)
Cause(s) of Action: Trademark infringement
Remedy Requested: By the plaintiff: forbid WANG Jun to use his design patented shopping bag products. By the appellant: revoke the trial court’s ruling and reject Louis Vuitton’s litigation requests.
Trial Court: PRC Beijing First Intermediate People’s Court
Appeal Court: PRC Beijing People’s High Court
Disposition: The trial court ruled in favor of the plaintiff with regard to the charge of trademark infringement and ordered the defendant not to use the products with the patented design. The appeal court subsequently affirmed the trial court’s ruling.
Decision Date: April 03, 2008
Summary: The plaintiff (Louis Vuitton) charged the defendant (WANG Jun) with infringing on its trademark rights by plagiarizing its registered trademarks and applying the plagiarized patterns on shopping bags to apply for a design patent that was granted. The trial court ruled in favor of the plaintiff. The appeal court subsequently affirmed the trial court’s ruling.
The trial court confirmed that WANG Jun’s patented design is composed of prominent patterns identical or similar to Louis Vuitton’s four registered trademarks. The trial court judged that WANG Jun’s patented design collided with Louis Vuitton’s legal prior rights as Louis Vuitton’s four concerned trademarks were registered before WANG Jun applied for his design patent, and WANG Jun’s products that the patented design was to use on were similar to Louis Vuitton’s. The trial court further decided that WANG Jun’s registration of the said design patent caused prejudice to the exclusive right of Louis Vuitton to use its registered trademarks. Based on PRC Patent Law Article 23, Implementing Regulations of PRC Patent Law Article 65 iii, and PRC Trademark Law Article 52 (5), the trial court ordered WANG Jun not to use the products with his patented design in order not to infringe on Louis Vuitton’s trademark rights.
The appeal court dismissed WANG Jun’s challenge of the trial court’s right in judging the dispute, who regarded that an administrative procedure should come first. The appeal court pointed out that the trial court’s judgment is the premise for the administrative department to make its invalidation decision, and the trial court has the right to judge whenever a conflict is present, citing as support Implementing regulations of PRC Patent Law Article 65 iii, which states that where a request for invalidation of a patent for design is based on the ground that the patent for design is in conflict with a prior right of another person, but no effective ruling or judgment is submitted to prove such conflict of rights , the Patent Reexamination Board shall not accept it. The appeal court further confirmed that WANG Jun’s products were similar to Louis Vuitton’s in spite of WANG Jun’s objection, stating that the International Classification of Goods and Services, which was to facilitate the registration of marks and administrative management, was not the only criterion to judge if two products were similar. Although there was no evidence that WANG Jun’s products were put on the market, the appeal court affirmed that the trial court’s ruling was a proper measure to forestall a potential injury on Louis Vuitton. The appeal court further stated that relevant judicial interpretations by the Supreme People’s Court did not give a finite list of the acts that cause prejudice to the exclusive right of another person to use a registered trademark, rejecting WANG Jun’s claim that his act was not described in the interpretations and did not cause such prejudice. The appeal court also decided, concerning WANG Jun’s complaint that the trial court did not notify him of the change in the collegial panel members, that even if the trial court were negligent in this respect, it did not change the fact that the trial court gave the correct ruling. Based on PRC Civil Procedure Law Article 153 (1), the appeal court supported the trial court’s ruling and rejected WANG Jun’s appeal.
Copyright 2008, InterLingua.com, Inc.
North Face Apparel Corp., USA v. Beijing Silk Market Co., Ltd.
File No. C080516
Case Name: The North Face Apparel Corp., USA v. Beijing Silk Market Co., Ltd.
Filing Date: December 24, 2007 (by the appeal court)
Plaintiff: The North Face Apparel Corp., USA (North Face)
Defendant: Beijing Silk Market Co., Ltd. (Silk Market)
Appellant: Beijing Silk Market Co., Ltd. (Silk Market)
Appellee: The North Face Apparel Corp., USA (North Face)
Cause(s) of Action: Trademark infringement
Remedy Requested: Revoke the trial court’s ruling and reject North Face’s litigation requests.
Trial Court: PRC Beijing Second Intermediate People’s Court
Appeal Court: PRC Beijing People’s High Court
Disposition: The trial court ruled in favor of the plaintiff with regard to the charge of trademark infringement. The trial court ordered the Silk Market to: (i) stop infringing on the plaintiff’s exclusive rights to use its registered trademark; (ii) make a public announcement of the infringing act in Silk Market to eliminate adverse influence; (iii) pay damages for economic losses in the amount of RMB 20,000 and appropriate legal costs in the amount of RMB 19,000. The appeal court subsequently affirmed the trial court’s ruling.
Decision Date: March 20, 2008
Summary: The plaintiff (North Face) charged the defendant (Silk Market) with infringing on its exclusive rights to use its registered trademark “The North Face” and its logo by selling garments bearing the said trademark and logo. The trial court ruled in favor of the plaintiff. The appeal court subsequently affirmed the trial court’s ruling.
The trial court confirmed that the allegedly infringing garments used a trademark that is identical with the plaintiff’s registered trademark in respect of identical or similar goods, and therefore, infringed on the plaintiff’s exclusive rights to use the said trademark. The trial court held that, as the manager of the marketplace, Silk Market did not fulfill its duty of overseeing the origin and trademark rights of the merchandise sold by its tenant vendors and indulged the infringing acts of the vendors. Based on PRC Trademark Law Article 52 (1), (2), (5), 56; Implementing Regulations of the PRC Trademark Law Article 50 (2); General Principles of the PRC Civil Law Article 134 (1), (7), (9), the trial court ordered Silk Market to bear relevant civil liability.
The appeal court confirmed that the garments the appellee (North Face) purchased from the vendors in Silk Market were infringing products. The appeal court rejected the appellant’s (Silk Market) claim that the concerned vendors sold the infringing products covertly and it was impossible for the landlord to control the vendors’ actions to prevent infringement, by pointing out that in accordance with the contract between the landlord and the tenant vendors, the vendors were forbidden to issue warranty cards for any infringing merchandise sold covertly, while North Face purchased garments that infringed on its trademark rights from vendors who issued warranty cards several times both before and after it had notified Silk Market with a cease-and-desist letter. As Silk Market did not evict the concerned vendors as requested by relevant regulations concerning frequent offenders but only gave warning, the appeal court rejected Silk Market’s claim that it fulfilled its supervisory duty. Based on available evidence, the appeal court held that Silk Market committed trademark infringement by intentionally indulging and facilitating the vendors’ infringing acts. Based on PRC Civil Procedure Law Article 153 (1), the appeal court confirmed the trial court’s ruling and rejected the appellant’s appeal.
Copyright 2008, InterLingua.com, Inc.
Case Name: The North Face Apparel Corp., USA v. Beijing Silk Market Co., Ltd.
Filing Date: December 24, 2007 (by the appeal court)
Plaintiff: The North Face Apparel Corp., USA (North Face)
Defendant: Beijing Silk Market Co., Ltd. (Silk Market)
Appellant: Beijing Silk Market Co., Ltd. (Silk Market)
Appellee: The North Face Apparel Corp., USA (North Face)
Cause(s) of Action: Trademark infringement
Remedy Requested: Revoke the trial court’s ruling and reject North Face’s litigation requests.
Trial Court: PRC Beijing Second Intermediate People’s Court
Appeal Court: PRC Beijing People’s High Court
Disposition: The trial court ruled in favor of the plaintiff with regard to the charge of trademark infringement. The trial court ordered the Silk Market to: (i) stop infringing on the plaintiff’s exclusive rights to use its registered trademark; (ii) make a public announcement of the infringing act in Silk Market to eliminate adverse influence; (iii) pay damages for economic losses in the amount of RMB 20,000 and appropriate legal costs in the amount of RMB 19,000. The appeal court subsequently affirmed the trial court’s ruling.
Decision Date: March 20, 2008
Summary: The plaintiff (North Face) charged the defendant (Silk Market) with infringing on its exclusive rights to use its registered trademark “The North Face” and its logo by selling garments bearing the said trademark and logo. The trial court ruled in favor of the plaintiff. The appeal court subsequently affirmed the trial court’s ruling.
The trial court confirmed that the allegedly infringing garments used a trademark that is identical with the plaintiff’s registered trademark in respect of identical or similar goods, and therefore, infringed on the plaintiff’s exclusive rights to use the said trademark. The trial court held that, as the manager of the marketplace, Silk Market did not fulfill its duty of overseeing the origin and trademark rights of the merchandise sold by its tenant vendors and indulged the infringing acts of the vendors. Based on PRC Trademark Law Article 52 (1), (2), (5), 56; Implementing Regulations of the PRC Trademark Law Article 50 (2); General Principles of the PRC Civil Law Article 134 (1), (7), (9), the trial court ordered Silk Market to bear relevant civil liability.
The appeal court confirmed that the garments the appellee (North Face) purchased from the vendors in Silk Market were infringing products. The appeal court rejected the appellant’s (Silk Market) claim that the concerned vendors sold the infringing products covertly and it was impossible for the landlord to control the vendors’ actions to prevent infringement, by pointing out that in accordance with the contract between the landlord and the tenant vendors, the vendors were forbidden to issue warranty cards for any infringing merchandise sold covertly, while North Face purchased garments that infringed on its trademark rights from vendors who issued warranty cards several times both before and after it had notified Silk Market with a cease-and-desist letter. As Silk Market did not evict the concerned vendors as requested by relevant regulations concerning frequent offenders but only gave warning, the appeal court rejected Silk Market’s claim that it fulfilled its supervisory duty. Based on available evidence, the appeal court held that Silk Market committed trademark infringement by intentionally indulging and facilitating the vendors’ infringing acts. Based on PRC Civil Procedure Law Article 153 (1), the appeal court confirmed the trial court’s ruling and rejected the appellant’s appeal.
Copyright 2008, InterLingua.com, Inc.
Wing Wah Cake Shop Limited, Hong Kong v. Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce
File No. C080504
Case Name: Wing Wah Cake Shop Limited, Hong Kong v. Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce
Filing Date: March 03, 2008 (by the appeal court)
Plaintiff: Wing Wah Cake Shop Limited, Hong Kong (Wing Wah Limited)
Defendant: Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce (the Board)
Third Party: LIAO Jinkun
Appellant: Wing Wah Cake Shop Limited, Hongkong (Wing Wah Limited)
Appellee: Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce (the Board)
Cause(s) of Action: Administrative litigation over the Board’s decision to support the third party’s registration of a trademark
Remedy Requested: Revoke the Board’s said decision and cancel the registration of the trademark in question.
Trial Court: PRC Beijing First Intermediate People’s Court
Appeal Court: PRC Beijing People’s High Court
Disposition: The trial court ruled in favor of the Board, supporting its decision to uphold the validity of the trademark in question. The appeal court subsequently affirmed the trial court’s ruling.
Decision Date: May 13, 2008
Summary: The plaintiff (Wing Wah Limited) charged the defendant (the Board) with falsely supporting the third party’s (LIAO Jinkun) registration of a trademark “Ronghua”. The trial court ruled in favor of the defendant. The appeal court subsequently affirmed the trial court’s decision.
The Board decided to support the validity of the third party’s said trademark and rejected the request by Wing Wah Limited for its cancellation.
As the third party’s trademark in question was registered for use on metal containers and there was no evidence that the plaintiff, a cake shop, used the mark “Ronghua” on such goods priorily, the trial court held that the third party did not use unfair means to preemptively register the trademark of some reputation another person had used. Due to a lack of evidence, the trial court also rejected the plaintiff’s claim that the registration of the trademark in question was acquired by fraud or other unfair means. The trial court rejected the plaintiff’s claim that the third party and Ronghua Food Factory, a non-litigant party that reportedly used the trademark in question, were affiliations, deeming it irrelevant to the present case. The trial court affirmed the Board’s decision to support the validity of the trademark in question based on PRC Administrative Procedure Law Article 54 (1).
The appeal court held that even though the appellant (Wing Wah Limited) had evidence that its mark “Ronghua” had been printed on a metal packaging container for moon cakes, the mark was for the cake, not the container. As there was no evidence that the appellant used its mark on goods similar to metal containers priorily, the appeal court rejected its claim that the trademark in question was registered for use on goods similar to the appellant’s products, and the registration of the trademark in question constituted preemptive registration. As the appellant did not submit evidence proving that the third party and the non-litigant part (Ronghua Food Factory) collaborated in manufacturing and using the packages and decorations for “Ronghua Moon Cake”, the appeal court decided that the available evidence was not sufficient to prove that the registration of the trademark in question was acquired by fraud or any other unfair means. The appeal court also confirmed that whether the non-litigant party was an affiliation of the third party was irrelevant to the present case. Based on PRC Administrative Procedure Law Article 61 (1), the appeal court affirmed the trial court’s ruling and rejected the appellant’s appeal.
Copyright 2008, InterLingua.com, Inc.
Case Name: Wing Wah Cake Shop Limited, Hong Kong v. Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce
Filing Date: March 03, 2008 (by the appeal court)
Plaintiff: Wing Wah Cake Shop Limited, Hong Kong (Wing Wah Limited)
Defendant: Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce (the Board)
Third Party: LIAO Jinkun
Appellant: Wing Wah Cake Shop Limited, Hongkong (Wing Wah Limited)
Appellee: Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce (the Board)
Cause(s) of Action: Administrative litigation over the Board’s decision to support the third party’s registration of a trademark
Remedy Requested: Revoke the Board’s said decision and cancel the registration of the trademark in question.
Trial Court: PRC Beijing First Intermediate People’s Court
Appeal Court: PRC Beijing People’s High Court
Disposition: The trial court ruled in favor of the Board, supporting its decision to uphold the validity of the trademark in question. The appeal court subsequently affirmed the trial court’s ruling.
Decision Date: May 13, 2008
Summary: The plaintiff (Wing Wah Limited) charged the defendant (the Board) with falsely supporting the third party’s (LIAO Jinkun) registration of a trademark “Ronghua”. The trial court ruled in favor of the defendant. The appeal court subsequently affirmed the trial court’s decision.
The Board decided to support the validity of the third party’s said trademark and rejected the request by Wing Wah Limited for its cancellation.
As the third party’s trademark in question was registered for use on metal containers and there was no evidence that the plaintiff, a cake shop, used the mark “Ronghua” on such goods priorily, the trial court held that the third party did not use unfair means to preemptively register the trademark of some reputation another person had used. Due to a lack of evidence, the trial court also rejected the plaintiff’s claim that the registration of the trademark in question was acquired by fraud or other unfair means. The trial court rejected the plaintiff’s claim that the third party and Ronghua Food Factory, a non-litigant party that reportedly used the trademark in question, were affiliations, deeming it irrelevant to the present case. The trial court affirmed the Board’s decision to support the validity of the trademark in question based on PRC Administrative Procedure Law Article 54 (1).
The appeal court held that even though the appellant (Wing Wah Limited) had evidence that its mark “Ronghua” had been printed on a metal packaging container for moon cakes, the mark was for the cake, not the container. As there was no evidence that the appellant used its mark on goods similar to metal containers priorily, the appeal court rejected its claim that the trademark in question was registered for use on goods similar to the appellant’s products, and the registration of the trademark in question constituted preemptive registration. As the appellant did not submit evidence proving that the third party and the non-litigant part (Ronghua Food Factory) collaborated in manufacturing and using the packages and decorations for “Ronghua Moon Cake”, the appeal court decided that the available evidence was not sufficient to prove that the registration of the trademark in question was acquired by fraud or any other unfair means. The appeal court also confirmed that whether the non-litigant party was an affiliation of the third party was irrelevant to the present case. Based on PRC Administrative Procedure Law Article 61 (1), the appeal court affirmed the trial court’s ruling and rejected the appellant’s appeal.
Copyright 2008, InterLingua.com, Inc.
Zhangzhou Nanfang Machinery Co., Ltd. v. QU Hongping
File No. C080538
Case Name: Zhangzhou Nanfang Machinery Co., Ltd. v. QU Hongping
Filing Date: N/A
Plaintiff: Zhangzhou Nanfang Machinery Co., Ltd. (Nanfang Co.)
Defendant: QU Hongping
Cause(s) of Action: Trademark infringement
Remedy Requested: (i) Cancel the infringing domain name and stop the unfair competition; (ii) pay damages for economic losses in the amount of RMB 10,000; (iii) undertake payment for entire cost of proceedings.
Trial Court: Hunan Province Changde City Intermediate People’s Court
Disposition: The court ruled in favor of the plaintiff with regard to the charge of trademark infringement. The court ordered the defendant to: (i) cancel the registration of the infringing domain name and stop using the plaintiff’s registered trademark; (ii) pay damages for economic losses in the amount of RMB 10,000.
Decision Date: March 18, 2008
Summary: The plaintiff (Nanfang Co.) charged the defendant (QU Hongping) with infringing on its exclusive rights to use the registered trademark “Yingtian” by registering a domain name containing the said trademark, selling via the Internet products similar to the plaintiff’s and providing sales-related product and service information that confuses relevant consumers as to the origin of the products, misleading the consumers to make online purchases, causing economic losses to the plaintiff through unfair competition. The court ruled in favor of the plaintiff.
The defendant admitted his infringing act, but disclaimed any liability for damages due to no actual sales or profit.
In accordance with PRC Trademark Law Article 14 and Interpretations of the Supreme People’s Court of Several Issues Concerning the Application of the Law in the Trial of Civil Dispute Cases Involving Trademarks Article 22, the court examined the trademark’s reputation to the relevant public; time for continued use; consecutive time, extent, and geographical area of advertisement and judged that the trademark was a well-known mark and should be protected as such. In accordance with the same judicial Interpretations Article 1 (3), the court held that the defendant’s registration of words identical with or similar to the plaintiff’s registered trademark as a domain name, and to conduct e-commerce in the goods through this domain name, which is likely to cause confusion among relevant public, infringed on the plaintiff’s exclusive right to use a registered trademark. Even though the defendant’s infringing act did not cause actual injury to the plaintiff, the court ordered the defendant to pay damages and to undertake payment for the costs incurred due to the dispute, based on the said judicial Interpretations Article 16 and PRC Trademark Law Article 56.
Copyright 2008, InterLingua.com, Inc.
Case Name: Zhangzhou Nanfang Machinery Co., Ltd. v. QU Hongping
Filing Date: N/A
Plaintiff: Zhangzhou Nanfang Machinery Co., Ltd. (Nanfang Co.)
Defendant: QU Hongping
Cause(s) of Action: Trademark infringement
Remedy Requested: (i) Cancel the infringing domain name and stop the unfair competition; (ii) pay damages for economic losses in the amount of RMB 10,000; (iii) undertake payment for entire cost of proceedings.
Trial Court: Hunan Province Changde City Intermediate People’s Court
Disposition: The court ruled in favor of the plaintiff with regard to the charge of trademark infringement. The court ordered the defendant to: (i) cancel the registration of the infringing domain name and stop using the plaintiff’s registered trademark; (ii) pay damages for economic losses in the amount of RMB 10,000.
Decision Date: March 18, 2008
Summary: The plaintiff (Nanfang Co.) charged the defendant (QU Hongping) with infringing on its exclusive rights to use the registered trademark “Yingtian” by registering a domain name containing the said trademark, selling via the Internet products similar to the plaintiff’s and providing sales-related product and service information that confuses relevant consumers as to the origin of the products, misleading the consumers to make online purchases, causing economic losses to the plaintiff through unfair competition. The court ruled in favor of the plaintiff.
The defendant admitted his infringing act, but disclaimed any liability for damages due to no actual sales or profit.
In accordance with PRC Trademark Law Article 14 and Interpretations of the Supreme People’s Court of Several Issues Concerning the Application of the Law in the Trial of Civil Dispute Cases Involving Trademarks Article 22, the court examined the trademark’s reputation to the relevant public; time for continued use; consecutive time, extent, and geographical area of advertisement and judged that the trademark was a well-known mark and should be protected as such. In accordance with the same judicial Interpretations Article 1 (3), the court held that the defendant’s registration of words identical with or similar to the plaintiff’s registered trademark as a domain name, and to conduct e-commerce in the goods through this domain name, which is likely to cause confusion among relevant public, infringed on the plaintiff’s exclusive right to use a registered trademark. Even though the defendant’s infringing act did not cause actual injury to the plaintiff, the court ordered the defendant to pay damages and to undertake payment for the costs incurred due to the dispute, based on the said judicial Interpretations Article 16 and PRC Trademark Law Article 56.
Copyright 2008, InterLingua.com, Inc.