Court: This Constitutes an Infringement upon K-Boxing¡¯s Right to Exclusively
Use Registered Trademarks
Recently, the Shanghai
Intellectual Property Court (hereinafter referred to as the ¡°SIPC¡±) pronounced
a judgment on the case of the Appellants Suzhou Jinpai Garments Co., Ltd.
(hereinafter referred to as ¡°Jinpai Company¡±) and Liu v. the Appellee K-Boxing
Men¡¯s Wear Co., Ltd. (hereinafter referred to as ¡°K-Boxing Company¡±) in respect of infringement upon trademark rights, and upheld the judgment of first instance: Jinpai Company
shall immediately stop the infringement upon K-Boxing Company¡¯s right to exclusively
use the registered trademark involved in the case, publish a statement and
eliminate the impact; Jinpai Company shall compensate K-Boxing Company for
economic losses and reasonable expenses of RMB 716,000; Liu shall be jointly
and severally liable for compensation with Jinpai Company within the range of
RMB 31,500, and compensate K-Boxing Company for economic losses of RMB 20,000
for the trademark infringement carried out by him independently.
[Case
Review]
K-Boxing Company is the right holder of the registered trademarks
of ¡°¾¢°Ô,¡± ¡°K-BOXING¡±
and the boxing champion figure series. In September 2017, K-Boxing Company
found that the clothing sold in the Jinpai apparel stores in two Wal-Mart
stores in Shanghai, and the logos on the store signboards, the outer packaging
bags, and the hang tags are similar to the registered trademarks of K-Boxing
Company. The production information of Jinpai Company can be found on the
clothing tags. Liu is the general sales agent of Jinpai Company in Shanghai.
K-Boxing Company believed that Jinpai Company¡¯s acts are
sufficient to cause confusion and misrecognition by the relevant public and
constitute trademark infringement. Liu is the general agent of Jinpai Company
in Shanghai, and the alleged infringing trademark labels for display and
promotion at his two business premises were produced by Jinpai Company.
Therefore, Liu should be liable for joint compensation with Jinpai Company
within the corresponding scope for his aiding infringement. K-Boxing
Company appealed to the court and requested Jinpai Company to immediately stop
the infringement, publish a statement, eliminate the impact, and compensate K-Boxing
for its economic losses of RMB 1 million; Liu to assume joint and several
liability for compensation within the range of RMB 300,000; and Jinpai Company
and Liu to jointly bear the reasonable expenses of K-Boxing Company for the
case of RMB 16,000.
Jinpai Company argued that it is the holder of the right to
exclusively use the registered trademark series of ¡°Jin (¾¢)¡± and ¡°Jinpai (¾¢ÅÆ)¡± words as the core
content. Most of this series of trademarks were registered earlier than the
trademarks of K-Boxing, so Jinpai Company has the existing
prior rights.
¡°Jinpai (¾¢ÅÆ)¡± as the identifier in its enterprise
name, the company has the right to use it legally, and its use does not
constitute an infringement upon K-Boxing Company¡¯s trademarks. Liu recognized
himself as the actual operator of the two Jinpai apparel stores, but argued
that he was a legally franchised seller of Jinpai Company; the source of the
goods was legal; and his sales did not violate K-Boxing Company¡¯s right to
exclusively use its registered trademarks.
[Case Study]
After trial, the court
of the first instance held that the alleged infringing trademark label ¡°¾¢ÅÆÄÐ×°¡± and the
registered trademark ¡°¾¢°ÔÄÐ×°¡±involved in the case have similar overall text arrangement style.
The alleged infringing trademark labels ¡°J-JINPAI¾¢ÅÆÄÐ×°¡± (word and figurative marks) and the
registered trademark series involved in the case ¡°K-BOXING¾¢°ÔÄÐ×°¡± (word and
figurative marks) are both word and figurative marks, which are similar in
overall effect such as arrangement and combination, text style, etc. They are
similar trademarks and enough to confuse the public, so Jinpai Company¡¯s act
constitutes infringement.
In this case, Jinpai Company used the alleged infringing trademark
labels on men¡¯s clothing, clothing tags and the outer packaging, and put the
products on the market for circulation. Therefore, the scope of the
responsibilities undertaken by Jinpai Company should cover the production and
sales of the alleged infringing clothing. Based on the franchise relationship,
Liu sold part of the alleged infringing clothing produced by Jinpai Company,
and should be held responsible together with Jinpai Company in this regard.
Since some alleged infringing trademark labels used on the signboards and the
interior decoration of the two stores was produced by Liu unilaterally, the
relevant infringement responsibility shall be solely borne by him.
Accordingly, the court of first instance ruled that Jinpai Company
shall immediately stop the infringement, publish a statement, and eliminate the
impact; Jinpai Company shall compensate K-Boxing Company for economic losses
and reasonable expenses of RMB 716,000; Liu shall be jointly and severally
liable for compensation with Jinpai Company within the range of RMB 31,500, and
compensate K-Boxing Company for economic losses of RMB 20,000 for the trademark
infringement carried out by him independently.
Both Jinpai Company and
Liu refused to accept the judgement of first instance and appealed to the SIPC.
Jinpai Company believed that the alleged infringing trademark
labels are not similar to the K-Boxing Company¡¯s registered trademark series, so
its use did not constitute infringement. Liu believed that as a franchised dealer
of Jinpai Company, his use of the related trademark labels was part of the
sales behavior, and he did not independently commit the infringement.
After trial, the SIPC held that first of all, the infringed goods
and the products within the approved scope of use of K-Boxing Company¡¯s
registered trademarks are both men¡¯s clothing, and the sales areas of the two
overlap. Men¡¯s clothing is a daily consumer product, and the relevant public
pays relatively little attention when choosing and purchasing the product.
Second, K-Boxing Company has been using the registered trademarks containing
the words ¡°¾¢°Ô,¡± ¡°K-BOXING,¡± and the boxing champion figure or the combinations
thereof in its operation and publicity activities. The ¡°¾¢°Ô¡± brand has a high
reputation in the men¡¯s clothing industry. Therefore, based on the general
attention of the relevant public, the alleged infringing trademark labels may
cause the relevant public to misrecognize the origin of the goods or think that
the origin has a specific connection with the products bearing K-Boxing Company¡¯s
registered trademarks. Jinpai Company used trademark labels similar to the
registered trademarks of K-Boxing Company on the clothing tags and outsourcing
bags produced and sold by it, and Liu used trademark labels similar to the
registered trademarks of K-Boxing Company on the signboards and background
walls of stores. This is enough to cause confusion and misrecognition by the
relevant public and constitutes an infringement upon K-Boxing Company¡¯s right
to exclusively use registered trademarks.
As the general sales agent of Jinpai Company in Shanghai, Liu
failed to review and perform the duty of care for the infringing goods he sold,
so he could not be exempted from the liability for compensation in spite of the
legal source of the goods. Liu shall bear joint and several liabilities with
Jinpai Company to a certain extent. At the same time, the trademark labels used
by Liu on the signboards and the background walls of the stores involved in the
case were not the trademark labels agreed in the ¡°License of Attorney,¡± and his
use of the above trademark labels exceeded the reasonable range of indicative
use for the sale of goods. This infringement was done by Liu himself, and the
corresponding compensation responsibility shall be borne by him alone.
In summary, the facts
determined in the first-instance judgment are clear and the applicable laws are
correct. Therefore, the first-instance judgment is upheld.
[Relevant Laws]
¢ñ. Tort Law of the People¡¯s
Republic of China
Article 2 Those who infringe upon civil rights and interests shall
be subject to the tort liability according to this Law.
¡°Civil rights and
interests¡± used in this Law shall include the right to life, the right to
health, the right to name, the right to reputation, the right to honor, right
to self-image, right of privacy, marital autonomy, guardianship, ownership,
usufruct, security interest, copyright, patent right, exclusive right to use a
trademark, right to discovery, equities, right of succession, and other
personal and property rights and interests.
Article 8 Where two or
more persons jointly commit a tort, causing harm to another person, they shall
be liable jointly and severally.
Article 15 The methods of assuming tort liabilities shall include:
1. cessation of infringement;
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6. compensation for losses;
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8. elimination of consequences and restoration of reputation.
The above methods of
assuming the tort liability may be adopted individually or jointly.
¢ò. Trademark Law of the People¡¯s Republic of China
Article 57 Any of the following conduct shall be an infringement
upon the right to exclusively use a registered trademark:
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(2) Using a trademark similar to a registered trademark on
identical goods or using a trademark identical with or similar to a registered
trademark on similar goods, without being licensed by the trademark registrant,
which may easily cause confusion.
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(3) Selling goods which infringe upon the right to exclusively use
a registered trademark.
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Article 63 The amount
of damages for infringement upon the right to exclusively use a registered
trademark shall be determined according to the actual losses suffered by the
right holder from the infringement; where it is difficult to determine the
amount of actual losses, the amount of damages may be determined according to
the benefits acquired by the infringer from the infringement; where it is
difficult to determine the right holder¡¯s losses or the benefits acquired by
the infringer, the amount of damages may be a reasonable multiple of the
royalties. If the infringement is committed in bad faith with serious
circumstances, the amount of damages shall be the amount, but not more than
three times the amount, determined in the aforesaid method. The amount of
damages shall include reasonable expenses of the right holder for stopping the
infringement.
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Where it is difficult
to determine the actual losses suffered by the right holder from the infringement,
the profits acquired by the infringer from the infringement, or the royalties
of the registered trademark, a people¡¯s court may award damages of not more
than three million yuan according to the circumstances of the infringement.
Article 64
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Where any goods
infringing a right to exclusively use a registered trademark are sold without
knowledge of such infringement, and the seller is able to prove that the goods
are legally acquired and provide the supplier, the seller shall not be liable
for damages.
¢ó. Provisions of the Supreme People¡¯s Court on Issues Concerned in the
Trial of Cases of Civil Disputes over the Conflict between Registered Trademark
or Enterprise Name with Prior Right
Article 1
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The lawsuit is filed on
the ground that a registered trademark used by other party on approved
commodities is identical or similar to the prior registered trademark of the
plaintiff, the people¡¯s court shall, according to the provision of Article 111
(3) of the Civil Procedure Law,
notify the plaintiff to apply with the competent organ for settling the issue.
However, in case the lawsuit is filed on the ground that a registered trademark
used by other party beyond the approved scope of commodities or by changing the
dominant features of the trademark, splitting it or combining it with others is
identical or similar to the registered trademark of the plaintiff, the people¡¯s
court shall accept it.
¢ô. Interpretation of the Supreme People¡¯s Court on Several Issues Concerning
the Application of Laws in the Trial of Cases of Civil Disputes Arising from
Trademarks
Article 9
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The term ¡°similar
trademarks¡± as provided in Article 52, Item 1 of the Trademark Law refers to
that the trademark charged of infringement and the registered trademark of the
plaintiff are similar in the font style, pronunciation, meaning of the words,
or in the composition and color of the pictures, or in the overall structure of
all the elements combined, or in the cubic form or combination of colors so
that the relevant general public may be confused about the origin of the
commodity or believe that there exist certain connections between the origin
and the commodity which is represented by the registered trademark of the
plaintiff.
Article 16
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When determining the
amount of compensation, the people¡¯s court shall take into comprehensive
consideration of the elements, including the nature, duration and aftermaths of
the infringing act, the reputation of the trademark, the amount of royalties
for licensing the trademark, the type, time and scope of the license of the
trademark, as well as the reasonable expenses for stopping the infringing acts,
etc.
¡.
Article 17 The
reasonable expenses incurred from stopping infringing acts as provided in
Article 56, Paragraph 1 of the Trademark Law include the reasonable expenses
paid by the right holder or the entrusted agent thereof for investigating into
the infringing acts and obtaining evidences.
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¢õ. Civil Procedure Law of the People¡¯s Republic of China
Article 253 If the person subjected to execution fails to
fulfil his obligations with respect to pecuniary payment within the period
specified by a judgment or written order or any other legal document, he shall
pay double interest on the debt for the belated payment. If the person subjected
to execution fails to fulfil his other obligations within the period specified
in the judgment or written order or any other legal document, he shall pay a
charge for the dilatory fulfilment.
(Author: Chen Yingying of Shanghai Intellectual Property Court)
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