Trademark and Copyright Litigation and Arbitration

Model Cases
of Trademark and Copyright Litigation and Arbitration
Handled by Chang Tsi & Partners
Case 1.
KOHLER Co. vs. Zhao Guixiang and
KOHLER Co., founded under American law, is
Foshan City Shunde District Ronggui Kele
the legitimate registrant and rightful owner of the
Kitchenware Co., Ltd. regarding disputes of
series of well-known trademarks “KOHLER”, “科
infringement upon exclusive trademark rights
勒” and “THE BOLD LOOK OF KOHLER”. With
and unfair competition
over 130 years’ history, KOHLER Co. is a world
Under the entrustment of KOHLER Co., Royce
renowned company that mainly manufactures
Wong and Lily Zhu of Chang Tsi & Partners
and sells high-end kitchen and sanitary wares.
brought an action against Zhao Guixiang, and
Without the Plaintiff’s approval, the Defendant
Foshan City Shunde District Ronggui Kele
Shunde Kele Company not only used the
Kitchenware Co., Ltd. (hereinafter referred to as
Chinese words“科乐”as part of its trade name,
Shunde
an
but also used“ 科 乐 ” as the trademark on its
infringement of exclusive trademark rights and
retailed stainless steel washing machines and
unfair competition in Shenyang Intermediate
faucets, thereby infringing upon the similar
People’s Court of Liaoning Province in July, 2007.
registered trademark “ 科 勒 ” of KOHLER CO.
After the court hearing, the court rendered its
Meanwhile, Shunde Kele Company declared its
judgment of this case on January 7, 2008. The
company name to be Kele Kitchenware Co., Ltd.
court ordered that the Defendants Shunde Kele
and its products as “Kele kitchenware” and “Kele
Company and Zhao Guixiang immediately cease
water tanks” in its product catalogs. The Chinese
its actions of infringement upon the Plaintiff’s
pronunciation of the mark “科乐” used by Shunde
exclusive trademark rights and any unfair
Kele Company was completely identical with that
competition. The court ordered that Defendant
of the trademark “科勒” registered by KOHLER
Shunde Kele Company pay the Plaintiff RMB
CO. Furthermore, the two marks had the same
300,000 in damages for the infringement.
number of Chinese characters and the same
Kele
Company)
involving
beginning
character,
and
both
marks
are
transliterations of “KOHLER CO.” in Chinese.
When used on the same kind of products, they
constituted a confusing similarity which is
prohibited by the Trademark Law of China. The
Defendant Shunde Kele Company had used a
mark similar to the registered trademark of
KOHLER CO. on products of the same class with
an intention to mislead relevant consumers into
thinking
that
the
aforesaid
two
marks
represented a different series of KOHLER CO.
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products, or were related to KOHLER CO. The
Defendant accomplished this by using a different
transliteration in Chinese language of “KOHLER
CO.”, namely by marking products with “科乐”.
The foregoing actions of the defendant had
After the court hearing, the court held that
infringed upon the Plaintiff’s exclusive trademark
Defendant Shunde Kele Company used a mark
rights,
trademark
which was similar to the registered trademark of
infringement. Defendant Zhao Guixiang also
KOHLER CO. on products of the same class,
infringed upon the Plaintiff’s exclusive trademark
which infringed upon the Plaintiff’s exclusive
rights
rights
and
by
thus
selling
constituted
the
infringing
products
to
the
registered
trademark.
The
manufactured by the Shunde Kele Company.
Defendant used the Plaintiff’s trade name without
Meanwhile,
authorization,
actions
the
have
two
Defendants’
constituted
unfair
infringing
competition
which
constituted
unfair
competition against the Plaintiff. The Plaintiff’s
against the Plaintiff.
trademark
The Defendant argued that:
Defendant Shunde Kele Company changed the
1.
Shunde Kele Company was founded in
key part of its trade name from “Weihao” into
1994 in the name of Shunde City Ronggui
“Kele” in 2001, which demonstrated an intention
Town Weihao Kitchen Instrument Factory.
to
In 2001, its name was changed into Shunde
trademark. After comprehensive considerations
Kele Company. The company had been
regarding the case, the court ruled that the
manufacturing kitchen instruments ever
Defendant, the Shunde Kele Company, was
since its foundation;
liable for its infringement and must provide a
“科乐” was neither identical nor similar to
payment of damages to the Plaintiff, KOHLER
“科勒”, and “KOHLER CO.”. Therefore, his
CO.
use of “科乐” would not lead to confusion
Due to its significance and complexity, this case
and
was selected in 2008 as one of the 50 model
2.
3.
misidentification
among
relevant
was
infringe
for
registered
upon
judicial
the
in
1997,
Plaintiff’s
protection
of
and
well-known
consumers;
cases
intellectual
Shunde Kele Company used “ 科 乐 ”
property in China, by The Supreme Court of
legitimately as its trademark， and as a
China.
constituent part of its trade name, and did
not conduct any infringement and unfair
competition actions against KOHLER CO.
Case 2:
Apple Inc. VS. New Apple Concept
Digital Technology (Shenzhen) Co., Ltd. and
Tang Jianhui for Trademark Infringement and
Unfair Competition
Introduction of the Plaintiff:
Apple Inc. (formerly known as Apple Computer,
Inc., and hereinafter referred to as “Apple Inc.” or
the “Plaintiff”) was incorporated in the State of
California, U.S.A. in 1977.
Apple Inc. initiated
the personal computer revolution in the 1970’s
and created the first “personal computer”; a fully
programmable system specially designed for the
individual consumer. In early 2000, Apple Inc.
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launched the iPod, which turned out to be an
immediate and huge success.
The iPod is still
the No. 1 portable music player worldwide.
Apple Inc.’s leading position in commercial digital
music was further reinforced by a series of iPod
Description of Litigation:
products following its debut.
During the lawsuit, our attorneys put forward the
Over the years,
Apple Inc. has continuously been building and
following claims:
maintaining an affinity with its customers based
on a solid foundation of highly functional and
strongly creative products. Due to this, Apple Inc.
1.
The Plaintiff’s “
” and “iPod”
has become one of the most recognizable
formative trademarks are associated with
companies in the world.
world famous brands and were under the
Introduction of the Defendants:
protection of China’s laws. Defendant One
The New Apple Concept Digital Technology
has
(Shenzhen) Co., Ltd. (“Defendant One”) was
trademark right by using, on similar goods,
infringed
the
Plaintiff’s
exclusive
established on October 17, 2005, and was
engaged in the manufacturing and distribution of
the
marks
“
”,
electronic digital products. Defendant One has
used the “Winged Apple Device” (
), “NEW
“
APPLE CONCEPT in Chinese and English
characters & Device” (
”
and
) and “NEW APPLE
CONCEPT in English & Device” (
) on
“
”,
product packaging, promotional and advertising
confusingly
materials and websites in connection with its
registered trademarks;
promotion of computers and digital music
2.
similar
to
which
the
were
Plaintiff’s
“Apple” and its Chinese equivalent “苹果”,
products. Tang Jianhui (“Defendant Two”) was
was also under the protection of China’s
the distributor of Defendant One in Shenyang
laws as the trade name of the Plaintiff;
City.
3.
Defendant One had the same service area
On March 18, 2008, Chang Tsi & Partners,
as the Plaintiff.
entrusted by and on behalf of Apple Inc., lodged
果”, the Chinese equivalent of “Apple”
a lawsuit with Shenyang Intermediate People’s
its
Court, and petitioned the Court to order the two
committed unfair competition against the
Defendants
Plaintiff;
to
cease
infringement,
make
compensation, and eliminate adverse effects by
4.
trade
Because of its use of “苹
name,
Defendant
One
as
had
Defendant Two also committed trademark
publishing a declaration. Under the Plaintiff’s
infringement for distribution of the infringing
application, the Court took evidence and property
products.
preservation action against Defendant One
Litigation Results:
during the legal proceeding.
In order to support the Plaintiff’s legal claims, the
attorneys
of
our
firm
made
full
and
comprehensive preparations for the lawsuit. On
May 28, 2008, Shenyang Intermediate People’s
Court ruled a “first instance judgment”, which
upheld our claims of trademark infringement and
unfair competition. In the Judgment, the Court
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ordered Defendant One to cease trademark
infringement and the use of “苹果”, the Chinese
equivalent of “Apple”
as its trade name, to
compensate the Plaintiff for RMB 400,000 (USD
60,000), and to eliminate the adverse effects by
under App.No.4585357 (here after referred to as
publishing a public declaration. The Court
“sued decision”), which rejected the application
ordered Defendant Two to cease any distribution
of the applied mark. The grounds for refusal were
of the infringing products.
that “the word NARA contained in the applied
This case was selected by Supreme Court of
mark refers to “奈良” -- a city which lies in the mid
China as one of the “50 Model IP Cases for the
south of Honshu, Japan, the name of a city well
Year 2008”, and was among the list of “7 Model
known to the Chinese public. Therefore, the
Unfair Competition Cases”.
applied mark could not be used and registered as
This case is also
included in the “10 Model IP Cases of Liaoning
a trademark.”
Province” by the High People’s Court of Liaoning.
Under the entrustment, and on behalf of the
Plaintiff, Chang Tsi & Partners instituted an
Case 3:
Kabushiki Kaisha
Nara
Camicie
administrative lawsuit before the Beijing No.1
D/B/A Nara Camicie Co., Ltd. against TRAB
Intermediate People’s Court on November 26,
Established in 1977 under the law of Japan,
2008 and petitioned the court to revoke the prior
Kabushiki Kaisha Nara Camicie D/B/A Nara
decision upon the defendant, and ordered the
Camicie Co., Ltd. mainly operates in the
TRAB to re-issue a review decision.
business of luxury apparel and ornaments.
During the lawsuit, our attorneys argued that:
It is
an important member of the Fortune 500
1.
The Defendant TRAB did not view the
Company Sumitomo Group, which is the oldest
applied
company in Japan spanning over 4 centuries.
examination of the “NARA” part is an
Many subsidiaries of Sumitomo Group are on the
overgeneralization;
Fortune 500 list.
2.
The Plaintiff Kabushiki Kaisha Nara Camicie
a
whole,
and
its
Although “NARA” has other meanings, it
foreign place name due to cultural factors;
3.
”
as
was not known to the Chinese public as a
D/B/A Nara Camicie Co., Ltd. applied for
registration of the ““
mark
Many trademarks incorporating “NARA” that
are very similar to the applied mark have
trademark (here after referred to as the “applied
been
mark”) in 2005, with the designation on jewelry
Defendant shall keep its administrative
products. In 2008, the Trademark Office made a
behavior consistent and predictable.
refusal
decision,
which
was
subsequently
approved
for
registration;
the
On July 15, 2009, Beijing No.1 Intermediate
appealed to the TRAB for review. On October 20,
People’s
2008, the TRAB issued a (2008) No.20752
judgment, which held “Firstly, the applied mark
Decision
“NARACAMICIE” as a whole is not the name of a
of
Refusal
“NARACAMICIE” Trademark
Review
on
the
Court
entered
the
first
instance
foreign place. This fact was not appropriately
determined when the Defendant, instead of
considering the applied trademark as a whole,
only singled out “NARA” from the applied
trademark for review purpose. Secondly, it is
hardly convincing that the “NARA” part is widely
known as a foreign place name by the Chinese
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public.” Therefore, the Court decided to overrule
the prior decision upon the defendant.
Unsatisfied with the first instance of judgment,
the Defendant appealed to Beijing High People’s
Court on July 22, 2009. Our attorneys made a full
and accurate response to the brief Bill of Appeal
from the Defendant, and carefully prepared the
statement of attorney after participating in the
court hearing. On December 17, 2009, the High
Court entered the final judgment which dismissed
the appeal and maintained the first instance
judgment.
The meaning of this case lies in its being a
precedent for future cases involving the Court’s
recognition of “foreign place name known to the
Chinese public” as provided by the Trademark
Law.
This case is selected by Asia IP as one of
the most significant IP cases for China in 2009.
Case 4: Fairmont
Dubai
(Bermuda)
Holdings Limited vs. Shanghai He Tai
Network Technology Co., Ltd. on Domain
Name Dispute
Fairmont Dubai (Bermuda) Holdings Limited is
one of the subsidiaries of Fairmont Hotel Group.
Together with Fairmont Hotels Inc. (Canada),
Fairmont Hotel & Resort (U.S.) and other
affiliated companies, they manage the Fairmont
Hotel chain which is a leader in the global
hospitality industry.
On February 10, 2007, Shanghai He Tai Network
Technology Co., Ltd. registered the domain
name
<fairmont.com.cn>
which
illegally
integrated the use of the trade name and
trademark of Fairmont Dubai (Bermuda)
Holdings Limited. Moreover, the domain name
directed the user to an online information website
with various links. By clicking the item "book a
hotel", a user would be directed to a domestic
hotel search link. When a user chooses
"Shanghai", the quotation and booking status of
dozens of Shanghai hotels would pop out. The
above acts by Shanghai He Tai Network
Technology Co., Ltd. had seriously infringed
upon
the trademark right and trade name right of
Fairmont Dubai (Bermuda) Holdings Limited, and
disrupted their normal business activities.
On February 8, 2009, Fairmont Dubai (Bermuda)
Holdings Co., Ltd. entrusted our firm to file a
domain name dispute resolution procedure
against Shanghai He Tai Network Technology
Co., Ltd.. According to relative provisions
stipulated by CNNIC Domain Name Dispute
Resolution Policy, the complaint shall be lodged
within two years after the registration date of the
domain name, i.e. before February 10, 2009.
Upon receipt of the instruction, we completed all
the complaint-related work in only two days,
successfully
notarized
our
telephone
communication with the domain name registrant
and fixed strong evidence of the registrant’s bad
faith in touting the disputed domain name.
In the dispute resolution process, our firm
successfully safeguarded the client’s rights even
though Fairmont Dubai (Bermuda) Holdings
Limited had not obtained any previous
registration for "Fairmont" in China. On April 21,
2009, the Hong Kong International Arbitration
Center made the decision requiring the transfer
of the disputed domain name to the Complainant.
Case 5:
Trademark
and
Trade
name
Infringement of CHARLES SCHWAB & CO.,
INC
We represent the world’s famous financial
services provider CHARLES SCHWAB & CO.,
INC in respect of its intellectual property affairs in
mainland China. One financial services company
in Shanghai registered our client’s famous
service trademark and trade name “嘉信” as its
trade name and prominently used the same as its
own trademark in commercial publicity programs.
Under the authorization of our Client, we served
the Cease and Desist letter to the target
company, and required them to cease the
infringement and change its company name.
However, the target company did not pay much
5
attention to our C&D letter, and refused to stop
infringements. Considering the stubborn attitude
of the counterpart, after detailed and careful
investigation and evidence collection, we filed the
trademark infringement and unfair competition
litigation to Shanghai Pudong People’s Court.
We petitioned the court to order the defendant to
immediately cease the use of the trademark “嘉
信 ”, including but not limited to the use on
Case 6:
Hartford Fire Insurance v. Rongshi
services, name cards, promotional materials and
Huaqi Trading Company (RHTC) and Zhang
the company website; to order the defendant to
Ping
immediately stop using “嘉信” as its trade name,
Our client, the Plaintiff in this case, is Hartford
and change its company name accordingly; to
Fire Insurance.
order the defendant to compensate the economic
Financial Services Group, Inc., which is a
loss of RMB 200,000, covering the expenses of
Fortune
the plaintiff for the investigation and deterrence of
reputation globally.
the infringements. In the litigation, we not only
this case is created and has been used by our
submitted a large quantity of evidence to prove
client for a long time.
the bad faith of the counterpart and their
obtained four copyright registration certificates in
on-going infringements, but also clearly stated
U.S. back in 1996 and 2001.
the adverse effect the infringing acts of the
member of the Berne Convention, the Plaintiff’s
counterpart had made on our Client. All our
copyrights are subject to protection in China.
claims were completely supported by the Court.
Without the authorization from the Plaintiff, the
The Court ordered the defendant to stop the
Defendant RHTC has extensively used in its
ongoing infringement, change its company name,
product package, promotional materials and
and compensate the economic loss of our Client
website marks identical with or similar to the
of RMB 150, 000.
copyrighted stag logo owned by the Plaintiff,
500
It is a member of the Hartford
company
and
enjoys
great
The stag mark involved in
In addition, our client has
As China is a
This case is a typical case of trademark
which constituted infringement of the latter’s
infringement
copyright.
counterpart
and
unfair
registered
competition.
the
famous
The
service
Defendant Zhang Ping, in her
behavior of distributing in Dalian City the
trademark and trade name as its company name,
infringing
misled the relevant public by free riding our
infringed the copyright of the Plaintiff.
Client’s reputation in the industry in order to
by our client, we filed litigation with Dalian
obtain
favorable
Intermediate People’s Court against the two
judgment of this case can serve as guidance for
defendants, requiring them to immediately cease
the same kind of infringement cases, and also
the infringements, make compensation to our
has important effect on the future protection of
client and publish statements to eradicate the
our Client’s rights.
adverse effect.
illegitimate
interests.
The
products
from
RHTC,
has
also
Entrusted
Based on the complete list of evidences we have
submitted, the Court upheld all our claims and
ordered
1.
the two defendants to immediately cease
infringement of the copyrights of the Plaintiff.
2.
Defendant Zhang Ping to publish statement
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in a newspaper distributed in Dalian area to
eradicate the adverse impact within 10 days
from the date when the judgment takes
effect;
Defendant
RHTC
to
publish
statement at China Consumers Newspaper
within 10 days from the date when the
judgment
take
effect
to
eradicate
the
adverse impact arisen from its infringement.
3.
Defendant RHTC to compensate the Plaintiff
RMB 100,000 within 10 days from the date
when the judgment takes effect for the
Plaintiff’s economic loss and the reasonable
expenses incurred from the deterrence of
the infringement.
Case 7:
Feixue Picture Studio v. Qingdao
News (Group) Co., Ltd
On behalf of Qingdao News (Group) Co., Ltd
again, we successfully defeated Feixue Picture
Studio’s claim based on copyright infringement.
In this case, Feixue Picture Studio lodged a
lawsuit against Qingdao News (Group) Co., Ltd
on the latter’s unauthorized use of its pictures
and literature in commercial advertisement.
Feixue claimed for RMB50,000(USD6,579) in
damages. Upon examination, the Court found
that the Plaintiff is not exactly the copyright
owner of the disputed pictures. The pictures were
slightly altered by the Plaintiff and then put to use
in commercial advertisement.
Because the Plaintiff failed to provide further
evidence in support of its claims, the Court
persuaded the Plaintiff to withdraw its complaint.
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