Weekly China Trademark News Updates

October 31, 2023

1. Damages in a trademark infringement on Loui Vuitton’s “LV” mark was increased from RMB50,000 to RMB120,000

Recently, the Tianjin No. 3 Intermediate Court made a final decision on a trademark infringement lawsuit in favor of Louis Vuitton Malletier (“LV”) and against Chongqing Maoluxin Import and Export Trading Co., Ltd. (“Maoluxin”), and Lutong Chen. The court found Maoluxin infringing LV’s trademarks and increased the damages from RMB50,000 (USD6,800) in the lower court’s decision to RMB120,000 (USD16,400).

The court found that: first, LV has a long brand history and has strong brand influence in the fashion industry. It has been included in China’s national key trademark protection list and has been the target of protection against counterfeits and trademark infringements in Beijing, Shanghai, Guangzhou and other places. The LV and Design mark (“Cited Mark”) has been recognized as a well-known trademark by the courts of many provinces and cities because it has high fame in China and is widely known to the relevant public. The accused infringing mark was not only similar to the Cited Mark, but also similar to other registered trademarks owned by LV, which was enough to cause confusion and misunderstanding among the relevant public, and damage LV’s trademark rights.

Second, when both Tianjin Xingang Customs and the first-instance court determined that the accused infringing products constituted trademark infringement, Maoluxin still did not provide the name, contact information and other information of the traders during the second-instance procedure, which was not only detrimental to traceability and cease of trademark infringement. Such refusal to cooperate with court orders made it more difficult for rights holders to safeguard their rights, which showed Maoluxin’s obvious objective bad faith.

Third, the quantity of exported products was large and the logo used was the same or similar to the well-known Cited Mark. Maoluxin, as the exporter, should also determine whether the accused infringing products constituted infringement and whether the transaction party has the corresponding qualification, etc. However, it failed to exercise duty of care of preliminary screening of said accused infringing products. Once these large quantities of infringing products enter the relevant market, they will definitely damage the legitimate rights and interests of LV and consumers, thereby disrupting the normal order of market competition.

2. “Furuta in Chinese” has established a corresponding relationship with “Furuta”

Recently, the Shanghai Intellectual Property Court concluded a trademark infringement lawsuit between Furuta Food Trading (Shanghai) Co., Ltd. (“Furuta Shanghai”) and Ohisi International Trading (Shanghai) Co., Ltd. (“Ohisi”). The court held that the alleged infringing products s did not infringe upon Furuta Shanghai’s trademark rights.

Furuta in Chinese

Furuta Japan has registered the “Furuta” mark in Japan and China, and Furuta Shanghai has registered the corresponding “Furuta in Chinese” mark in China. Neither of them has registered the “Furuta in Chinese” trademark in Japan, the country where the accused infringing products were exported. Both the accused infringing products and products bearing the “Furuta in Chinese” mark imported and sold by Furuda Shanghai originated from Furuta Japan. Ohisi used the “Furuda in Chinese” mark on Chinese labels of its imported products. Furuda Shanghai sued Ohisi for trademark infringement based on its  “Furuta in Chinese” mark.

The court found that, first, the accused infringing products are genuine, have the same quality as the “Furuta in Chinese” products imported and sold by Furuta Shanghai, and were both legally sourced from Furuta Japan. Furuta Japan is the controlling shareholder of Furuta Shanghai and there was a close relationship between them. Second, although the trademark owner of the “Furuta in Chinese” mark is Furuta Shanghai, after long-term use, the “Furuta in Chinese” trademark and the “Furuta” mark of Furuta Japan have formed a sole correspondence. Furuta Japan also confirmed this corresponding relationship. Thus the identification function of “Furuta in Chinese” in the case is unique and one-directional relationship between the goods and the manufacturer Furuta Japan. Ohisi marked “Furuta in Chinese” on the accused infringing products, which can be used to identify the sole relationship between the “Furuta in Chinese” mark and Furuta Japan and would not cause confusion among the relevant public. Moreover, the quality of accused infringing products were no different than genuine products, which would not cause damage to the quality and goodwill carried by Furuta Japan’s marks and would not damage consumer’s interests. Therefore, the accused infringing acts did not constitute trademark infringement.

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