China Piracy Report

KVC Co., Ltd., Japan v. Shanghai KVC Valve Co., Ltd.

Interlingua Publishing — Thu, 14 Aug 2008 20:18:34 GMT

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.

Biggest Amount of Counterfeit Viagra Tablets Seized

Interlingua Publishing — Thu, 14 Aug 2008 20:18:34 GMT

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.

Sentenced for Selling Counterfeit Personal Care Products in Large Quantities

Interlingua Publishing — Thu, 14 Aug 2008 20:18:34 GMT

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.

Transfer Film for Producing Infringing Trademarks Seized for the First Time

Interlingua Publishing — Thu, 14 Aug 2008 20:18:34 GMT

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.

P & G’s Charge against Trademark Review and Adjudication Board Dismissed; Its Chinese Transliteration Not Recognized as a Well Known Mark

Interlingua Publishing — Thu, 14 Aug 2008 20:15:56 GMT

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.

A Garment Company in Shaoxing Ordered to Pay Damages for Irresponsible Trademark Labeling

Interlingua Publishing — Thu, 14 Aug 2008 20:13:34 GMT

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.

North Face Apparel Corp., USA v. Beijing Silk Market Co., Ltd.

Interlingua Publishing — Thu, 14 Aug 2008 20:13:34 GMT

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.

Louis Vuitton Malletier, France v. WANG Jun

Interlingua Publishing — Thu, 14 Aug 2008 20:13:34 GMT

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.

Wing Wah Cake Shop Limited, Hong Kong v. Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce

Interlingua Publishing — Thu, 14 Aug 2008 20:13:34 GMT

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.

Zhangzhou Nanfang Machinery Co., Ltd. v. QU Hongping

Interlingua Publishing — Thu, 14 Aug 2008 20:13:35 GMT

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.

Shanghai Parker Pen Co., Ltd. v. LIU Shaotian

Interlingua Publishing — Thu, 14 Aug 2008 20:13:35 GMT

File No. C080549

Case Name: Shanghai Parker Pen Co., Ltd. v. LIU Shaotian

Filing Date: July 12, 2007

Plaintiff: Shanghai Parker Pen Co., Ltd. (Parker Co.)

Defendant: LIU Shaotian

Cause(s) of Action: Trademark infringement

Remedy Requested: (i) Injunction; (ii) pay damages for economic losses in the amount of RMB 80,000 and appropriate fees paid by the right holder to stop the infringing act in the amount of RMB 20,000; (iii) undertake payment for entire cost of proceedings.

Trial Court: Hunan Province Changsha City Tianxin District People’s Court

Disposition: The court ruled against the plaintiff with regard to the charge of trademark infringement and rejected its litigation requests.

Decision Date: January 09, 2008

Summary: The plaintiff (Parker Co.) charged the defendant (LIU Shaotian) with infringing on its exclusive rights to use the trademark “Parker” by selling pens with counterfeit Parker trademark. The court ruled against the plaintiff.

The defendant claimed that he acquired the allegedly infringing Parker pens legitimately from a secondary wholesale merchant authorized by the plaintiff.

The core of the dispute was whether the defendant sold pens that infringed on the plaintiff’s trademark rights. The court held that the plaintiff had the obligation to submit evidence supporting its charge against the defendant. However, as the notarized document the plaintiff submitted showed many flaws, such as contradictory times, absence of sales proof, in addition to the plaintiff’s failure in submitting the allegedly infringing pens purchased from the defendant, the court decided that the plaintiff did not have sufficient evidence to bring the action against the defendant. Based on PRC Trademark Law Article 52 (2), and Several Provisions of the PRC Supreme People’s Court on Evidence in Civil Procedures Article 2, the court rejected the plaintiff’s litigation requests.

Copyright 2008, InterLingua.com, Inc.

Liebherr-International Deutschland GMBH, Germany v. Shanghai Gome Electric Appliances Co., Ltd.; BSH Home Appliances Co., Ltd.; Jiangsu BS Home Appliances Sales Co., Ltd.

Interlingua Publishing — Thu, 14 Aug 2008 20:13:35 GMT

File No. C080540

Case Name: Liebherr-International Deutschland GMBH, Germany v. Shanghai Gome Electric Appliances Co., Ltd.; BSH Home Appliances Co., Ltd.; Jiangsu BS Home Appliances Sales Co., Ltd.

Filing Date: August 16, 2007

Plaintiff: Liebherr-International Deutschland GMBH, Germany (Liebherr)

Defendant: Shanghai Gome Electric Appliances Co., Ltd. (Gome Co.); BSH Home Appliances Co., Ltd. (BSHHA); Jiangsu BS Home Appliances Sales Co., Ltd. (BS Sales)

Cause(s) of Action: Trademark infringement

Remedy Requested: (i) Injunction; (ii) destroy the infringing products; (iii) issue a public apology to eliminate adverse influence; (iv) pay damages for economic losses in the amount of RMB 300,000; (v) undertake payment for entire cost of proceedings.

Trial Court: PRC Shanghai First Intermediate People’s Court

Disposition: The court ruled against the plaintiff with regard to the charge of trademark infringement and rejected its litigation requests.

Decision Date: March 10, 2008

Summary: The plaintiff (Liebherr) charged the defendants with infringing on its exclusive rights to use the trademark “BIOFRESH” registered for use on refrigeration equipment by manufacturing (BSHHA), and selling (Gome and BS Sales) refrigerators and coolers bearing similar marks “Bio fresh” and “BIO-Fresh”. The court ruled against the plaintiff.

The core of the dispute was whether the use of these similar marks a fair use. The court held that the use of the marks by BSHHA was a fair use, which aimed to describe the functions of its products and would not confused consumers as to the origin of the products, due to the reasons that the concerned marks were used in combination with their Chinese translation, which describes the functions of the products; that the said marks were not as prominently displayed on the products as the products’ proper trademark “SIEMENS”; and that BSHHA started to use the marks as early as 2003, while the plaintiff acquired its trademark “BIOFRESH” in 2005. The court ruled that BSHHA’s use of the marks in question did not constitute trademark infringement, and as a result, the charge of trademark infringement against BS sales and Gome Co. did not stand.

Based on Implementing Regulations of PRC Trademark Law Article 49, which states that where a registered trademark consists of the generic name, design or model of the goods in question, or directly shows the quality, main raw materials, functions, intended purposes, weight, quantity or other characteristics of the goods in question, or consists of geographical names, the proprietor of the exclusive right to use the registered trademark shall have no right to prohibit fair use thereof by another person, the court rejected the plaintiff’s litigation requests.

Copyright 2008, InterLingua.com, Inc.

The Ritz Hotel, Limited, UK v. Shanghai Rits Fitness Co. Ltd.

Interlingua Publishing — Thu, 14 Aug 2008 20:13:35 GMT

File No. C080531

Case Name: The Ritz Hotel, Limited, UK v. Shanghai Rits Fitness Co. Ltd.

Filing Date: December 27, 2007

Plaintiff: The Ritz Hotel, Limited, UK (Ritz Limited)

Defendant: Shanghai Rits Fitness Co. Ltd. (Shanghai Rits)

Cause(s) of Action: Trademark infringement

Remedy Requested: (i) Injunction; (ii) pay damages for economic losses in the amount of RMB 300,000; (iii) issue a fine and confiscate infringing equipment

Trial Court: PRC Shanghai First 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) stop using the mark “Rits” in its business operations; (ii) pay damages for economic losses in the amount of RMB 200,000.

Decision Date: April 21, 2008

Summary: The plaintiff (Ritz Limited) charged the defendant (Shanghai Rits) with infringing on its exclusive rights to use the registered the trademark “Ritz” by using a similar mark “Rits” in its business operations, intentionally misleading consumers. The court ruled in favor of the plaintiff.

The court held that the defendant’s mark “Rits” was similar to the plaintiff’s registered trademark “Ritz”. The court also held that the combinations of “Rits” with the defendant’s Chinese marks also constituted similar marks to “Ritz”, as more attention would be given to “Rits” than the Chinese marks due to the fame enjoyed by “Ritz”. The court also confirmed that the defendant engaged in services in the hospitality line that were similar to many that the plaintiff’s trademark “Ritz” was registered for use on. The court ruled that the defendant infringed on the palintiff’s exclusive rights to use its registered trademark by using a mark that would confuse consumers as to the source of the services; and should bear civil liability for such remedies as ceasing the infringing act and paying damages. In making this ruling, the court rejected the defendant’s claim that it enjoyed prior rights, for even though the defendant started to use “Rits” before the plaintiff registered its trademark “Ritz” in China, the plaintiff’s mark, which was registered as early as 1993, was protected in China in accordance with relevant laws before the defendant started using its mark “Rits”. The court also held that the defendant’s use of the mark “Rits” was not an innocent use as the effort of an affiliated company of the defendant’s in registering “Rits” as a trademark was rejected due to existence of the plaintiff’s trademark “Ritz”, and it was impossible that the defendant was unaware of the issue.

The court based the amount of damages awarded on factors such as the nature, duration, consequences of the infringing act, the reputation of the trademark involved, the degree of fault of the infringer, and the seriousness of the loss suffered by the plaintiff. The court rejected the plaintiff’s request to impose a fine and confiscate the infringing equipment, considering the request a matter of civil sanction, not a civil liability to be borne by the defendant.

Copyright 2008, InterLingua.com, Inc.

Ordered to Pay Damages In the Amount of RMB 150,000 for Infringing Trademark “Zegna”

Interlingua Publishing — Thu, 14 Aug 2008 20:13:35 GMT

File No. N080505

Title: Ordered to Pay Damages In the Amount of RMB 150,000 for Infringing Trademark “Zegna”

Source: newssc.org—Chengdu Daily

Date: April 25, 2008

Recently, Chengdu Intermediate People’s Court gave its first instance ruling on the dispute in which Consitex S. A. of Switzerland charged a department store in Chengdu with trademark infringement. The court ordered the defendant to stop the infringing act and pay damages in the amount of RMB 140,000.

Consitex S. A. claimed that its trademarks “Ermenegildo Zegna” and “Zegna” were well known in the whole world and were also registered in China. However, since May of 2005, a counter in the defendant’s store had been selling clothing and accessories bearing the plaintiff’s registered trademarks, and displaying these registered trademarks prominently in the store, thus infringing on the plaintiff’s trademark rights. Though the particular counter went out of business in October of 2006, the advertising board at the entrance to the store still existed. As a result, Consitex S. A. sued to the court, requesting injunction, a public apology and damages.

The court held that as the clothing sold at the store counter bore the same trademarks as those that the plaintiff held the rights to, the defendant infringed on the plaintiff’s trademark rights. The court also decided that the defendant’s act of displaying the said trademarks at the entrance to the department store, in the counter’s signboard, in the wall advertisements and on the paper shopping bags also constituted trademark infringement.

Copyright 2008, InterLingua.com, Inc.

1,400 Infringing Watch Faces Seized

Interlingua Publishing — Thu, 14 Aug 2008 20:13:35 GMT

File No. N080526

Title: 1,400 Infringing Watch Faces Seized

Source: customs.gov.cn

Date: May 07, 2008

Recently, while inspecting the luggage and goods going in and out of the border at Dandong Highway Port, Dalian Customs seized from the luggage of an inbound Chinese passenger 1,453 watch faces that allegedly infringed on the intellectual property rights held by NSK Ltd., Japan. Dalian Customs has detained the allegedly infringing goods in accordance with the Law for further investigation.

Copyright 2008, InterLingua.com, Inc.

Brand Name Laundry Soap Powder Bagged Using Shovels

Interlingua Publishing — Thu, 14 Aug 2008 20:13:35 GMT

File No. N080523

Title: Brand Name Laundry Soap Powder Bagged Using Shovels

Source: cqn.com.cn

Date: May 23, 2008

On May 9, Shaanxi Province Xi’an City Bureau of Quality and Technical Supervision cracked down on a den for manufacturing and selling counterfeit laundry soap powder. The officers seized finished and half finished laundry soap power in the amount of 13 tons and over 20,000 famous brand laundry soap powder packaging bags.

It is said that this den was in operation, making laundry soap powder, for over half a year. Its products bearing counterfeit trademarks, such as “Tide”, “Omo”, “Liby”, “Diao Pai”, and “Kezo”, were sold to some large-scale wholesale centers in Xi’an city, seriously harming consumers’ and enterprises’ interests and benefits.

Important leads from sales representatives of “Tide” and “Omo” laundry soap detergent contributed to the successful crack of this case. “In a shabby dirty house, workers were shoveling at a pile of laundry soap powder on the floor to fill up “Tide” and “Omo” packaging bags”. On May 9, upon receiving leads, the bureau of Quality and Technical Supervision acted immediately and made a surprise inspection of the location. The house was locked, but the officers could hear workers talking inside. The officers broke into the house and apprehended six workers shoveling to fill bags. The owner fled over the fence when the officers broke in. According to one of the workers, the laundry soap power was purchased in large quantities from a laundry soap powder factory in Henan Province, which was then packaged into pretty bags with different fragrances added in to fake a particular brand. Common consumers could not tell the difference. As the cost is low, the owner made a good profit. The law enforcement officers confiscated the raw materials, the packaged soap powder, and the sealing machines found on the spot; and together with the police department, are trying to track down the owner who fled.

Copyright 2008, InterLingua.com, Inc.

40,000 Pairs of Infringing Sports Shoes for Export Seized

Interlingua Publishing — Thu, 14 Aug 2008 20:01:10 GMT

File No. N080527

Title: 40,000 Pairs of Infringing Sports Shoes for Export Seized

Source: customs.gov.cn

Date: April 05, 2008

Recently, Ningbo Customs seized 40,000 pairs of sports shoes bearing counterfeit trademarks. Quality Brands Protection Committee of the China Association of Enterprises with Foreign Investment (CAEFI) named the case one of the best cases of IPR protection between the year 2007 and 2008. The seized goods, four full shipping containers of sports shoes bearing counterfeit trademarks “NIKE” and “Air JORDAN”, were valued at about RMB 30 million.

Copyright 2008, InterLingua.com, Inc.

Ginseng Board of Wisconsin, Inc., USA v. Guangdong Zhenghan Pharmaceutical Co., Ltd.; Shanghai Huashi Pharmacy Co., Ltd.

Interlingua Publishing — Thu, 14 Aug 2008 20:01:10 GMT

File No. C080551

Case Name: Ginseng Board of Wisconsin, Inc., USA v. Guangdong Zhenghan Pharmaceutical Co., Ltd.; Shanghai Huashi Pharmacy Co., Ltd.

Filing Date: N/A

Plaintiff: Ginseng Board of Wisconsin, Inc., USA (Ginseng Board)

Defendant: Guangdong Zhenghan Pharmaceutical Co., Ltd. (Zhenghan Pharmaceutical); Shanghai Huashi Pharmacy Co., Ltd. (Huashi Pharmacy)

Appellant: Ginseng Board of Wisconsin, Inc., USA (Ginseng Board); Guangdong Zhenghan Pharmaceutical Co., Ltd. (Zhenghan Pharmaceutical)

Appellee: N/A

Cause(s) of Action: Trademark infringement

Remedy Requested: By Zhenghan Pharmaceutical: revoke the trial court’s ruling. By Ginseng Board: pay 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 in favor of the plaintiff with regard to the charge of trademark infringement. The trial court ordered Zhenghan Pharmaceutical to (i) stop infringing on the plaintiff’s graphic mark immediately; (ii) pay damages for economic losses in the amount of RMB 150,000. The trial court ordered Huashi Pharmacy to stop selling the said infringing products. The appeal court subsequently affirmed the trial court’s ruling.

Decision Date: December 26, 2007

Summary: The plaintiff (Ginseng Board) charged the 1st defendant (Zhenghan Pharmaceutical) with infringing on its exclusive rights to use its registered graphic mark of an eagle by selling ginseng products bearing the same mark. The 2nd defendant (Huashi Pharmacy) was likewise charged for selling the said products. The trial court ruled in favor of the plaintiff. The appeal court subsequently affirmed the trial court’s ruling.

The trial court held that the eagle design was the more prominent part in Zhenghan Pharmaceutical’s combined trademark; and as the design was basically identical with the plaintiff’s registered graphic eagle mark, and as both marks were used on ginseng products, the trial court judged that Zhenghan Pharmaceutical’s use of the mark would confuse relevant consumers as to the origin of the products or the relationship of the two parties. The trial court ruled that Zhenghan Pharmaceutical infringed on the plaintiff’s trademark rights and should bear civil liability for such remedies as ceasing the infringing act and paying damages. The trial court based the amount of damages on factors such as the nature, duration, consequences of the infringing act, the reputation of the trademark, the degree of fault of the infringer, the injury suffered by the plaintiff and the fees paid by the plaintiff to stop the infringing act. As Huashi Pharmacy proved that it acquired the infringing products legitimately, the trial court ordered it to stop selling the infringing products but not pay damages. The trial court rejected the plaintiff’s request for an apology as only property rights were infringed.

The appeal court rejected Zhenghan Parmaceutical’s claim that it only sold 16 packages of the products in question, considering the evidence submitted not sufficient. The appeal court held that even though Zhenghan Pharmaceutical’s trademark included verbal elements and the packages of the products also bore Zhenghan Pharmaceutical’s company name, the use of the eagle mark would still confuse relevant consumers. The appeal court rejected Zhenghan Pharmaceutical’s defense using its trademark application, stating that the registration was not approved yet, besides, the trademark being applied for was different from the one in question. Zhenghan Pharmaceutical claimed that, as Ginseng Board did not have evidence that it used the said trademark, the trademark should not be protected and its registration should be canceled. The appeal court stated that the trademark is protected as far as the law is concerned, while whether its registration should be canceled is a matter to be dealt with by relevant administrative organ outside the scope of this appeal court.

The appeal court held that Ginseng Board’s evidence concerning the scale of the defendants and its own advertising campaign could not prove the actual profit earned by the defendants or the actual injury it suffered. The appeal court affirmed the trial court’s ruling concerning the amount of damages.

Based on PRC Civil Procedure Law Article 153 (1), and 158, the appeal court affirmed the trial court’s ruling and rejected both appellants’ appeal.

Copyright 2008, InterLingua.com, Inc.

Stephanix Societe Anonyme, France v. Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce

Interlingua Publishing — Thu, 14 Aug 2008 20:01:10 GMT

File No. C080522

Case Name: Stephanix Societe Anonyme, France v. Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce

Filing Date: February 28, 2008 (by the appeal court)

Plaintiff: Stephanix Societe Anonyme, France (Stephanix S. A.)

Defendant: Trademark Review and Adjudication Board of PRC State Administration for Industry and Commerce (the Board)

Appellant: Stephanix Societe Anonyme, France (Stephanix S. A.)

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 refuse Stephanix S. A.’s application for territorial extension to China

Remedy Requested: By the appellant: revoke the trial court’s ruling and approve its application for territorial extension to China

Trial Court: PRC Beijing First Intermediate People’s Court

Appeal Court: PRC Beijing People’s High Court

Disposition: The appeal court affirmed the trial court’s ruling in which the trial court supported the Board’s decision to refuse the plaintiff’s application for territorial extension to China

Decision Date: April 08, 2008

Summary: The plaintiff (Stephanix S. A.) disputed the defendant’s (the Board) decision in refusing its application for territorial extension of a trademark “stephaniX” to China. The trial court ruled in favor of the defendant. The appeal court subsequently affirmed the trial court’s ruling.

The trial court supported the Board’s decision that the plaintiff’s trademark was similar to a reference mark “STEPHAN” that had been registered in respect of similar goods and its application for registration should be refused. The trial court rejected the plaintiff’s claim that the two trademarks were registered for use on dissimilar goods, judging that even though the respective goods were classified differently in the International Classification of Goods and Services, they were both medical equipment used in medical institutions, where the two similar trademarks would likely cause confusion as to the origin of the equipment.

The appeal court stated that the International Classification of Goods and Services was a reference and not the sole criterion in judging if the goods or services are similar; and factors, such as the use, the user, the general function, the sales channel, and the sales habit, or whether two similar trademarks would cause confusion and misidentification among relevant consumers, should also be taken into consideration. In the light of this principle, the appeal court confirmed that the two groups of goods the two trademarks were registered for use on were similar since they were both medical equipment, having similar functions, uses, target consumers and sales channels; and the two similar trademarks would highly likely cause confusion among relevant consumers. Based on PRC Administrative Procedure Law Article 61 (1), the appeal court affirmed the trial court’s ruling and rejected the appellant’s (Stephanix S. A.) appeal.

Copyright 2008, InterLingua.com, Inc.

Essilor International/Compagnie Generale D’optique, France; Shanghai Essilor Optical Co., Ltd. v. Beijing Essilor Science and Technology Development Co., Ltd.

Interlingua Publishing — Thu, 14 Aug 2008 20:01:10 GMT

File No. C080517

Case Name: Essilor International/Compagnie Generale D’optique, France; Shanghai Essilor Optical Co., Ltd. v. Beijing Essilor Science and Technology Development Co., Ltd.

Filing Date: December 24, 2007

Plaintiff: Essilor International/Compagnie Generale D’optique, France (Essilor International); Shanghai Essilor Optical Co., Ltd. (Shanghai Essilor)

Defendant: Beijing Essilor Science and Technology Development Co., Ltd. (Beijing Essilor)

Appellant: Beijing Essilor Science and Technology Development Co., Ltd. (Beijing Essilor)

Appellee: Essilor International/Compagnie Generale D’optique, France (Essilor International); Shanghai Essilor Optical Co., Ltd. (Shanghai Essilor)

Cause(s) of Action: Trademark infringement and unfair competition

Remedy Requested: Revoke the trial court’s ruling and reject the appellees’ 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 plaintiffs with regard to the charge of trademark infringement and unfair competition. The trial court ordered the defendant to: (i) stop the trademark infringement immediately; (ii) stop the unfair competition by stopping the use of Essilor in its company name in business dealings concerning products identical with or similar to those the plaintiffs’ registered trademark was used for; (iii) pay appropriate fees paid by the plaintiffs to stop the infringing act in the amount of RMB 10,000. The appeal court subsequently affirmed the trial court’s ruling.

Decision Date: March 14, 2008

Summary: The plaintiffs (Essilor International and Shanghai Essilor) charged the defendant (Beijing Essilor) with infringing on their exclusive rights to use the trademark “eSSILOR” by selling optical lenses bearing similar trademarks. The plaintiffs also charged the defendant with unfair competition by using Essilor in its company name. The trial court ruled in favor of the plaintiffs. The appeal court subsequently affirmed the trial court’s ruling.

The trial court held that the defendant sold the allegedly infringing products, as its name was printed on the packages, promotional materials and price list of the said products. The trial court further decided that the products the defendant sold infringed on the plaintiffs’ trademark rights as they bear the word mark “NORCA eSSIIOR BLOE LENS” and a design similar to the plaintiffs’ registered trademark “eSSILOR” and design, and the same Chinese word mark as the plaintiffs’ registered Chinese Transliteration of Essilor. As the defendant did not submit evidence proving its legitimate acquisition of the infringing products, the trial court ruled that it infringed on the trademark rights of the plaintiffs and should bear liability for such remedies as ceasing the infringing act and paying damages. The trial court also held that as the plaintiffs’ said trademarks acquired some fame in China among relevant public, the defendant, as a competitor in the same industry, committed unfair competition by using the plaintiff’s mark in its company name.

The appeal court affirmed that the products the appellant (Beijing Essilor) sold were either the same or similar to the plaintiffs’ products due to the same functions, uses, producers, sales channels, and targeted consumers they have, rejecting the appellant’s claim to the contrary. The appeal court also affirmed that the mark the appellant used was similar to the plaintiffs’ registered trademark and would confuse consumers as to the origin of the products despite the appellant’s claim that they were different. In the absence of evidence, the appeal court further rejected the appellant’s claim that it was not the seller of the infringing products. The appeal court also rejected the appellant’s claim that it acquired its company name through Hong Kong Essilor due to an absence of evidence. Based on PRC Civil Procedure Law Article 153 (1), the appeal court supported the trial court’s ruling, and rejected the appellant’s appeal.

Copyright 2008, InterLingua.com, Inc.