Tag Archives: case commentary on trademark infringement

Why Does China Court Order New Balance a High Amount Compensation of RMB 98 Million for Trademark Infringement?

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(By Luo Yanjie) Recently, Guangzhou Intermediate People’s Court ordered New Balance Trading (China) Co., Ltd, an affiliate of US-based Sports footwear manufacturer New Balance, to compensate a Chinese shoes owner, Zhou Yuelun, with a rarely high amount of RMB 98 million for infringing his Chinese “新百伦” trademark, a Chinese transliteration from English word New Balance, in the first instance. Such high amount of compensation is unusual in China intellectual property infringement. It is for this reason that this case attracted extensive attention. Upon the public records, from the legal view, we will briefly introduce and analyze this case in today’s post.

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Could Co-Founder Rush-Register A Planning Trademark As His Own?

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lehmanbrown

 (By Luo Yanjie) Article 15 of both the 2014 version and the 2001 version of the Trademark Law stipulated that an agent shall not rush-register trademarks of the principal or the represented. In practice, Article 15 is always used to prevent from rush-registration. The following judgment will introduce a typical rush-registration case with new ideas for reference.

 Introduction to the Case:

Re-appellant (plaintiff at first instance, appellant at second instance): LEHMANBROWN LIMITED (the “HK Company”)

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Supreme Court Determined Trademark Non-infringement for Using Prior Enterprise Name with Good Faith

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(By Luo Yanjie) Both the enterprise name and the trademark distinguish the sources of goods or services, so that in practice they may conflict with each other. However, trademark, an exclusive right, has functions so as to prohibit others from using it as enterprise name. Under some circumstances, the enterprise name can coexist with the trademark. In today’s post, we would like to introduce such a case.

Introduction to the Case:

Retrial Applicant (Plaintiff at first instance, appellant at second instance): Yinchuan Buma Trading Co., Ltd (the “Yinchuan Buma Trading”)

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P&G vs. Vidal Sassoon Hairs School’s Judgment Abstract

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(By Luo Yanjie) An enterprise name attempting to use a well-known trademark is quite the norm in China. In today’s post, we would like to introduce a typical case where the courts made a final judgment that the infringer constitutes infringement but does not change its enterprise name. However, the judgment is far from playing its role in the containment of this violation.

Introduction to the Case:

Appellant (Defendant at the first instance): Beijing Royal VIDAL SASSOON Beauty Hair School (the “Royal School”)

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Could A Prior User Constitute Trademark Infringement against the Exclusive Right Holder of a Registered Trademark?

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caidiexuan

(By Luo Yanjie) Our former trademark laws had not yet stipulated whether a prior user constituted trademark infringement against the exclusive right holder of a registered trademark. However, the implementation of the update Trademark Law this year solved the problem. In today’s post, we will introduce a typical case concerning the prior user succeeded in competing against the exclusive right holder. Even though the case was judged before the implementation of the update Trademark Law, its judgment was kept pace with legislative purpose of the update Trademark Law.

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How China Court Judges the Conduct of Using a Trademark as Enterprise Name?

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miergu

(By Luo Yanjie) In practice, for the purpose of free-riding well-known brands, many operators often use another’s trademarks as their enterprise name to confuse consumers. As such, these conducts still constitute trademark infringement. In today’s post, we will introduce a typical case concerning that using another’s trademarks as enterprise names may constitute trademark infringement.

 Introduction to the Case:

Plaintiff: Shanghai Jinsu Industrial Co., Ltd (the “Jinsu Co., Ltd”)

1st Defendant: Miergu Pipe Industrial Company (liter translated from “美尔固管业公司”)

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Does Using a Trademark with Common Meaning Constitute Trademark Infringement in China?

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jigonghoubao

(By Luo Yanjie) According to Chinese legislation, a mark which has a common meaning in normal ways may be registered as a trademark where it has acquired distinctiveness through use and is readily distinguishable. If being registered, the mark with a common meaning would be protected under the Trademark Law. However, in practice, a competitor may use the trademark against the exclusive right holder, with a defense that the trademark has common meaning. Today, we will introduce a successful case where the court is in favor of the exclusive right holder of the trademark.

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Competitor Using Recycled Budweiser’s Bottles Constituted Trademark Infringement

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(By You Yunting) Our website has previously  introduced the case where ABlnbev (China) Sales Co., Ltd filed a lawsuit against its competitor, who was unauthorized to use the bottles with the trademarks “Budweiser” and “ABlnbev”. Recently, the Shanghai Higher People’s Court made a final judgment in favor of ABlnbev (China) Sales Co., Ltd.

Introduction to the Case:

Appellant: (Defendant at the first instance): Xiyingmen Beer Company (the “Company Z”)

Respondent: (Plaintiff at the first instance): ABlnbev (China) Sales Co., Ltd

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Why Court Decision Exempts Wal-Mart From liabilities of Trademark Infringement?

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castel

(By Luo Yanjie) Abstract: In the event that a party unknowingly sells goods that infringe upon another party’s exclusive right to use a registered trademark but can prove that it has obtained the goods lawfully and is able to identify the supplier shall not be held liable for damages. In a case that a trademark holder separately sues sellers, despite no laws requesting the manufacturers to join in the lawsuit, for the purpose of preventing contradictory judgment, the courts could notify him or her requesting joinder. It is the manufacturers that could decide whether acting as a third party to join the lawsuit.

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Shall Silk Street Undertake Compensation Liability to LOUIS VUITTON MALLETIER for Trademark Infringement?

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silk street

(By Luo Yanjie) Abstract:  Market-managers should fulfill their duty to exercise reasonable care to cease trademark infringement. “Intentionally facilitating an infringement by another person or party of an exclusive right to use a registered trademark including through acts such as storage, transportation, postage, concealment and similar” shall be deemed as an infringement of the exclusive right to use a registered trademark.

Our website once introduced a post that the Name on the American Notorious List Could Also be the Well-known Trademark in China. Actually, Silk Street is not a company that sells fake goods, buta market consisting of many small shops. It is undeniable that the market of Silk Street was once listed alongside the Pirate Bay in the notorious market by USTR because it has sold too many fake products. Considering there are many fake products in Silk Street, the market manager shall be found liable. In today’s post, we would like to introduce and discuss a case where the market manager was found liable for its shops’ selling fake goods.

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Abuse of Internet keywords in Competitive Bidding may Constitute Trademark Infringement

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(By Luo Yanjie) Abstract: Using another’s trademark as a promotion keyword in Baidu’s competitive bidding may constitute trademark infringement and unfair competition. The contents of “sale promotion (for others)” refer to providing advice, planning, promotion and consulting for others to sell goods or services, and does not include, in particular, enterprises whose main function is to sell goods, namely, activities of commercial enterprise.

   With the widespread use of Pay Per Click (the “PPC”) promotion, related legal problems also surface. In recent years, there are many trademark infringements regarding the bidding service of keyword PPC. The case in today’s post is a typical one considering the bidding service of keyword PPC as follows.

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Should An Enterprise Change its Enterprise Name that Infringed a Registered Trademark in China?

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巴黎春天

(By Luo Yanjie) Abstract: Marks that only bear the generic names, devices, or model numbers of the goods shall not be registered as trademarks. This restriction was just limited the generic names of the same goods. Trademark right is a unified national right all over the China and shall be under equal protection. In practice, for an act of an enterprise name infringing a registered trademark, the court may make a comprehensive judgment of different kinds of infringement liabilities.

With regard to some well-known brands, an act of using another’s well-known brand as an enterprise name is a typical infringement manner, which annoys the right holder. In today’s post, we’d like to introduce and share a typical case that the infringing party was finally convicted of infringement by the courts and ordered to stop using its enterprise name for the following.

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Can Prior Rights in a Business Name Counterfeit With a Subsequent Trademark Right?

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Abstract: trademark holder is not necessarily entitled to prevent others from using its trademark into a business name because operation method needs to be judged. On the contrary, consideration upon prior right of business name does not just depend on first registration but on operation methods.

(By Luo Yanjie)Using another’s registered trademark as a business name is a common phenomenon of copycat brand names in China. In today’s post we would like to introduce a typical case to you. Relying on the fact that the business name “凯伦 Kanren” was registered earlier than that of the trademark, the court determined the defendant did not infringe upon the exclusive rights in the trademark. In the author’s opinion, the ratio decidendi is worth further discussion:

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