Weekly China Trademark News Updates

December 20, 2022

1. The owner of the “Lincoln in Chinese” mark prevailed against the “Ling Ken in Chinese” mark for trademark, trade name, trade dress infringements

The Jiangsu High Court recently concluded a trademark infringement and unfair competition dispute in favor of the Lincoln Global Co., Ltd. (“Lincoln Global”), Lincoln Electric Company (“Lincoln Electric”), and Lincoln Electric Management (Shanghai) Co., Ltd. (“Shanghai Lincoln”) against Shanghai Ling Ken Electric Co., Ltd. (“Ling Ken”). The court affirmed that Ling Ken constituted trademark infringement and unfair competition, and ordered Ling Ken to compensate plaintiffs for economic losses and legal costs of RMB648,200 (USD92,821).

Founded in 1895, Lincoln Electric is a multinational enterprise engaged in the design, development and manufacture of arc welding products, headquartered in Ohio, USA. Lincoln Electric established a production base in China in 1997. After years of development, it has established many branches in China, including, but not limited to, Lincoln Electric Shanghai Company, Nanjing Lincoln Electric Co., Ltd., etc. Lincoln Global applied to register the “LINCOLN ELECTRIC” mark in Class 9 on May 14, 2002, which was approved for electric welding equipment, electric welding machines, transformers for electric welding equipment, etc. Lincoln Global applied for the “LINCOLN ELECTRIC and Design” mark in Class 9 on April 4, 2006, which was approved for rod-shaped welding electrodes, arc welding equipment, welding conveyors, wire machines, etc. Lincoln Global applied for the Design mark in Class 9 on June 23, 2008, which was approved for power supply for arc welding, transformer-rectifier welding equipment for arc discharge, etc. Said trademarks are all valid. Plaintiffs believed that the logos used by Ling Ken in the production and sales of electric welding machine products, website promotion, WeChat public account, and product manuals infringed upon trademark right of Lincoln Global. Ling Ken’ use of red shells with black front and rear panels on the electric welding machine products and use of words similar to the names of Lincoln Electric and Shanghai Lincoln that have certain influence constituted unfair competition.

Cited Marks

Regarding trademark infringement, Lincoln Global’s registered trademark is a fanciful trademark, through long-term use and publicity by Lincoln Global, etc., the said trademarks have obtained a high reputation. Lincoln Global has used the combination of “red machine shell with front and rear black panels” on their products. Consumers have established a fixed connection between this color combination and the products of Lincoln Global, which has strong distinctiveness. Ling Ken, as the enterprise engaged in the production and sales of welding equipment, should pay attention to the registered trademarks used by competitors in the same industry and avoid infringing on the exclusive right to use registered trademarks of others. The alleged infringing logo used in the official account and the product manual has the same overall composition as the Cited Marks, and the overall appearance was highly similar, and the pronunciation of the alleged infringing mark “Ling Ken in Chinese” was similar to the pronunciation of “Lincoln,” which may easily confuse and mistaken consumers, which constituted trademark infringement. Regarding unfair competition, first, Ling Ken’s act of registering “Ling Ken in Chinese” as it corporate name had the subjective intention of taking advantage of the popularity of Lincoln Electric and other corporate names. Objectively, the co-existence of Lincoln Electric, Lincoln Shanghai, and Ling Ken is easy to cause the relevant public to confuse the services provided by the two, or mistakenly believe that the two have a certain relationship, which will cause market confusion, damage to the interests of consumers, violate the legal provisions and recognized business ethics in market transactions, and constitute unfair competition. Second, welding machine products produced by plaintiff Lincoln Electric and others are well-known goods, and the packaging decoration of “red shell with black front and rear panels” has become recognizable and distinctive and can play a role in distinguishing the source of goods. The allegedly infringing product also adopted the design of “red shell with black front and rear panels,” which is similar to the decoration of the products claimed by Lincoln Electric and constituted unfair competition.

2. Carl Zeiss prevailed in a second instance trademark infringement and was awarded of RMB 4 million

Recently, the Zhejiang High Court concluded a trademark infringement and unfair competition dispute and ruled in favor of Carl Zeiss AG (“Zeiss”) and against Yiwu Hanke Outdoor Products Co., Ltd. (“Hanke”) and Wang Xiao. The court affirmed that Defendants constituted trademark infringement and unfair competition, and order Defendants to compensate plaintiff for economic losses of RMB 4 million (USD57, 280).

Zeiss established its factory in Germany in 1846 and is a world-renowned manufacturer and seller of optical lenses. Zeiss has been using registered trademarks on products such as microscopes, medical endoscopes, and glasses, as well as promotional materials such as packaging and product manuals, and in advertising. “Zeiss,” “Zeiss in Chinese,” “Carl Zeiss” and other trademarks of Zeiss have been widely publicized and used for a long time, and have gained a high reputation and fame in the field of optics, and are well known to the relevant public. At the same time, Carl Zeiss is the corporate name of Zeiss, and Carl Zeiss in Chinese and Carl Zeiss formed a stable corresponding relationship. As early as 1960, Zeiss applied for the trademarks such as “Zeiss,” “Zeiss in Chinese,” and “Carl Zeiss” in China, which were approved to be used in Class 9 for microscopes, telescopes, magnifying glasses, and other goods. Plaintiffs claimed that Hanke used identical or similar logos as the eight Cited Marks that were similar to the approved use of the Cited Marks without permission, which would easily lead to confusion among the relevant public and constituted trademark infringement. Hanke used “Zeiss” and “Zeiss in Chinese” as store names on its Yiwugo website, and uses them together with Zeiss’ slogan “We make it visible,” which was enough to make others mistakenly believe that there is some kind of relationship between it and Zeiss, which constituted as unfair competition. At the same time, Hanke used the “Made in Germany” mark as its products’ place of origin as false publicity on the accused infringing products, which constituted unfair competition.

Cited Mark

Regarding trademark infringement, the court found that after extensive publicity and use by plaintiff, Zeiss, the trademarks “Carl Zeiss” and “Carl Zeiss in Chinese,” “Zeiss,” and “Zeiss in Chinese” have formed a corresponding relationship to the relevant public and have established a relatively high reputation in the field of optical instruments. The allegedly infringing marks were used on gun scopes, rifle scopes, and other goods, which were optical products that were similar to Zeiss’s approved goods of microscopes, additional lenses, sight glasses, telescopes, etc. The functions and uses of the goods were similar, which may easily cause confusion and mistaken the relevant public. Hanke’s uses constituted use of identical or similar marks on similar goods. Reagrding unfair contention, because Zeiss commercially uses its trade names “Carl Zeiss” and “Zeiss” with “Carl Zeiss in Chinese” and “Zeiss in Chinese,” they have formed a corresponding relationship and have a relatively high reputation. Defendant, Hanke, opened the Yiwu Xiaguang Optical Instrument Factory store and used Zeiss’s “Zeiss” and “Zeiss in Chinese” brand name and Zeiss’s slogan “We make it visible” on its webpage, which misled others into believing that Hanke has a specific connection with Zeiss. At the same time, Hanke used the words “Made in Germany” as false publicity of the origin of its goods, which misled the relevant public into believing that Hanke has a competitive advantage over other operators with competitive relationships with Zeiss. Such acts violated the good faith principles and recognized business ethics, damaged the interests of competitors and constituted false publicity and unfair competition.

Hanke not only registered a large number of marks identical or similar to Zeiss’ trademarks, but also continued to carry out infringement activities after being investigated by Zeiss and punished by the administrative law enforcement. Hanke based its business on selling infringing products which shown obvious bad faith. Hanke has carried out the infringing activities for more than six years. The alleged infringing products bore multiple infringing marks. The infringement scope covers across online and offline activities, which satisfied the “serious circumstances” infringement element. However, the sales volume of the accused infringing products based on the salable quantity of the accused infringing goods in the infringer’s online store cannot be ascertained and the actual sales numbers may not be authentic. The court then applied statutory damages.

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