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Weekly China Trademark News Updates
April 8, 2021
1. LEGO won RMB 30 million in a trademark infringement dispute
The Guangdong High Court rendered the final decision regarding the trademark infringement and unfair competition disputes between the “LEGO in Chinese (乐高)” mark owned by LEGO Juris A/S (“LEGO”) and the “Le Pin in Chinese (乐拼)” mark. The court held that the manufacturers of “Le Pin in Chinese (乐拼)” Guangdong Meizhi Zhijiao Technology Co., Ltd. (“Meizhi”) and other defendants infringed upon LEGO’s trademark right and their acts amounted to unfair competition. The court ordered Meizhi and other defendants to compensate LEGO’s economic loss and reasonable legal cost of RMB 30 million (USD 4.58 million).
The court acted as the second instance court found that the “Le Pin in Chinese (乐拼)” mark used by Meizhi was highly similar to the “LEGO in Chinese (乐高)” mark in terms of color combination, presentation, and overall appearances, which was likely to cause confusion to the relevant public and weakened the distinctiveness of “LEGO in Chinese,” and damaged LEGO’s market reputation.
Meizhi had been copying LEGO’s products for more than four years, infringed upon 8 of LEGO’s registered trademarks and 1 influential trade name. Between September 11, 2017 and April 23, 2019, Meizhi’s infringing products collected unjustifiable income of RMB 330 million (USD 50 million). Added the sales records provided by Taobao, it can be reasonably presumed that “Le Pin in Chinese (乐拼)” products collected over RMB 500 million (USD 76 million) unjustifiable income. Consider the industrial profit, the overall profit of the infringing products is over RMB 160 million (USD 24.4 million).
The court ordered a high damage not only because Meizhi had obvious bad faith in copying and imitating LEGO’s trademarks, but also Meizhi’s long-term, extensive, and high-profited infringements on LEGO’s trademarks.
2. Friso diapers are not made by Friso?
Frieslandcampina Nederland B.V. (“Friesland”) won a trademark infringement and unfair competition lawsuit against Mei Su Jia Er (H.K.) Ltd. (“Mei Su Jia Er”), and Fujian Mengya Baby Goods Trading Co., Ltd. (“Mengya”). The second instance court Fujian High Court held that Mei Su Jia Er infringed upon Friesland’s “Mei Su Jai Er in Chinese (美素佳儿)” and “FRISO” trademarks by using “Mei Su Jai Er in Chinese (美素佳儿)” and “friso Mei Su Jai Er in Chinese (美素佳儿)” marks on baby diapers
What’s noteworthy is that the Fujian High Court raised the damages from RMB 580,000 (USD 88,000) to RMB 2.08 million (USD 320,000). More than tripled the damages ordered by the first instance court. The Fujian High Court reasoned that the infringing products shared similar sales channel and targeted consumers with the approved goods under Friesland’s cited marks. Such use was likely to cause confusion among the relevant public as to the source of goods. Moreover, the defendants were baby goods manufacturers and should have known about Friesland’s fame but insisted on using marks similar to Friesland’s cited marks. Such acts constituted subjective bad faith in copying, imitating, and plagiarizing other’s trademarks. Considering the above, the damages ordered by the first instance court was too low to cover Friesland’s economic loss and reasonable legal costs.
3. Bulgari won against fake Serpenti jewelry trademark dispute
The Beijing Intellectual Property Court recently held that the “snake head design” mark owned by an individual Liu with reg. no. 15911982 (“Disputed Mark”) infringed upon Bulgari S.P.A.’s (“Bulgari”) copyright and should be cancelled. The court found that Bulgari’s Serpenti design was a pictorial and unique design that can be protected under the Chinese Copyright Law as an artwork. Bulgari submitted sufficient evidence proving that it enjoys copyright for the snake head design before the Disputed Mark’s application date. Moreover, Bulgari’s evidence showed that Liu once owned a business related to “purse,” which overlapped with Bulgari’s scope of business and suggested that Liu may or should’ve known about Bulgari’s Serpenti design. Considering both the Disputed Mark and Bulgari’s Serpenti design have drawn ideas from snake head, the overall appearance, composition, visual effect, and expression were all similar, the Disputed Mark constitutes as a similar mark to Bulgari’s Serpenti design.
|Infringing Mark||Bulgari’s Serpenti Jewelry|
4. Research report on electronic data evidence guidelines for trademark adjudication cases
In order to standardize evidence collection, proof of evidence, and examination of electronic data in trademark adjudication cases, the CNIPA initiated the research on the “Rules of Electronic Data Evidence in Trademark Adjudication Cases” in 2020. The parties and their agents and the examiner of trademark adjudication can refer to the rules for evidence collection, proof of evidence, and cross examination of electronic data. At the same time, the CNIPA will closely track the status of electronic data evidence submission and acceptance, so to gradually improve the “Guidelines for Electronic Data Evidence in Trademark Adjudication Cases” that will be the basis for the “Rules for Electronic Data Evidence in Trademark Adjudication Cases.”
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