(By Albert Chen) Brief of the case:The Louis Vuitton Company (the “LV Company”) holds the rights to the “LV” trademark in Mainland China, and it registered the trademark “LV” as early as January 15, 1986. At present, the term of protection of the mark has been extended to January 14, 2016. The registered classes for the “LV” trademark include toys, Chinese checkers, Backgammon, golf gloves, etc. On November 13, 2003, Guo filed an application for a patented design called “Mahjong (23)”, and the application was approved and published on July 14, 2004. The published patent includes 5 pictures, which contain the front view, left view, back view, top view and three-dimensional views. Among them, the front view contains an image consisting of the letters “L” and “V.”
On June 16, 2008, LV Company filed a civil case in court, alleging that its exclusive rights in the LV trademark had been infringed, and demanded Guo “to refrain from making use of the patented product under the “Mahjong (23)” mark.” Faced with LV Company’s accusations, Guo defended herself in claiming that LV Company’s complaint had been filed after the expiration date of the contestability period for the mark; and moreover, that she had not exploited her patent in any way that would damage the trademark rights belonging to “LV” in any way.
The Beijing No. 1 Intermediate People’s Court, who heard the case in the first instance, confirmed after the hearing that the patented product involved in the case resembles the “LV” trademark in the relevant approved classes, and that the design of the “L” and “V” in both images look substantially similar; therefore, it is reasonable to conclude that LV Company’s interests would be harmed. The court went on to explain that this was true even though the fact remained that Guo had not – at that time – exploited the patent, but the purpose of the patent application is to exploit it, and therefore a likelihood of trademark infringement was foreseeable. For those reasons, the court in the first instance made its finding pursuant to Article 23 of the Patent Law, which in essence states that a design application shall not damage any first rights in a mark, and upon that reasoning ruled that Guo shall not exploit the patent named “Mahjong (23).”
Dissatisfied with the decision in the first instance, Guo appealed, alleging that: 1) LV Company filed the lawsuit after the expiration of the mark’s contestability period; 2) the lower court had substantially changed the content of the plaintiff’s claims; and 3) Guo had not exploited the patent, and thus LV Company would suffer no damage to its trademark rights.
The Beijing Higher People’s Court, hearing the case in the second instance, ruled after determining that the lower court in the first instance had fully investigated the facts in the case; and as to the principles under which the defendant Guo appealed, held that both trademarks are still well within their statutory terms of protection, implying that any conflict between the marks would be continuous throughout the life of the marks, and therefore could not find LV Company at fault for filing its lawsuit, because it had not exceeded the lawful period in which to do so. Regarding the patent application, the court stated that applying for a design that is similar to the trademark of another is not necessarily going to result in consumer confusion among the relevant public. However, infringement in some cases is still foreseeable. Based upon the reasons stated above, the Beijing Higher People’s Court made its decision to refuse Guo’s appeal and sustained the original judgment by the lower court.
Lawyer’s Comments:
The following two points are key in the hearing of the case:
First, the limitation of legal proceedings. By Interpretation on Several Issues concerning Law Application in Hearing Civil Cases about Trademarks by the Supreme People’s Court (the “Trademark Interpretation”), suits alleging infringement against a trademark shall be carried out within two years of notice of the infringement. What makes this case different is that the patented design remains within the statutory terms of protection. The trademark rights enjoyed by the LV Company over its famous trademark is also within its protection term. That is to say, the conflict between the trademark rights is an ongoing one. Once a rights holder has filed its claim of infringement, even if such a claim is made far later than its announcement date, which is considered day rights are granted under the law, a claim filing is not considered a delay which will be advanced forward. In situations where the claim filing is done after the contestability limitation, we refer to Article 18 of the Trademark Interpretation:
“When a trademark holder or other interested party files a lawsuit after the limitation of legal proceedings of 2 years, but the infringement is ongoing when the lawsuit is filed, for those within the trademark protection term, the People’s Court shall judge to order the defendant to stop and cease the infringement, and the quantity of the infringement shall be calculated for a period of two years prior to that time.”
In terms of design applications that would constitute trademark infringement, we have seen an answer from the Beijing Higher People’s Court that:
“Trademark infringement normally refers to the illegal use of another’s trademark, but the trademark use mainly means to associate the trademark with a specific product or service available to consumers. Registering a similar image to another’s trademark as a patented design shall not be construed as the illegal adoption of a trademark made available to the public, and for this reason, the application shall not be considered infringement against a trademark right.”
Although a patent application will generally not infringe a trademark right, as confirmed by the court in the second instance, the aim of patent registration is to exploit the subject of the patent, the exploitation of which would necessarily lead to infringement against a trademark right. Therefore, in light of what Guo had done in this case, it shall prevent her from undertaking any infringing conduct against the trademark right in the future. As a result, the court made its decision to prohibit Guo from exploiting the patented product in the case.
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