First-instance case number: (2018) Yue 0303 Min Chu No.10487, (2018) Yue 0303 Min Chu No.10511

In a case where the defendant is sued for infringement and reaches a settlement with the plaintiff, but he continues to commit infringement, and the infringing products are widely sold and made huge profits, which was a situation with obvious subjective malice and serious infringement circumstances, the court applies punitive damages according to law. In addition, the court also considers the agreement that the original defendant reached a settlement agreement in the previous trademark infringement dispute, and orders the legal representative of the defendant company to bear the liability for compensation together with the company. The appearance and shape of goods are remarkable and have the function of identifying the origin of goods after use, which can be used as a commercial logo to be protected by three-dimensional trademarks or anti-unfair competition laws.

Case introduction

Plaintiff: Officine Panerai AG(referred to as Panerai Company) [Panerai " LUMINOR " and " RADIOMIR " series of watches involved, case number is (2018) Yue 0303 Min Chu 10487]

Plaintiff: Richemont International SA International Co., Ltd. (referred to as Richemont Company for short) [the watch involved in the "pilot" series of IWC, the case number is ((2018) Yue 0303 Min Chu 10511]

Defendants: Guangzhou Wangming Trading Co., Ltd. (referred to as Wangming Company), Guangzhou Goukule Electronic Commerce Co., Ltd. (referred to as Goukule Company), Ma Ronglin, Shenzhen Clockwise Trading Co., Ltd. (referred to as Clockwise Company)

Panerai and IWC are well-known watch brands under Richemont Group, a Swiss luxury goods group. Panerai's "RADIOMIR" watch and "LUMINOR" watch, IWC's "Pilot" watch are the main products of their respective brands. After many years of continuous sales and promotion, they have gained high popularity and reputation in the Chinese market, and their three-dimensional design itself has gradually played a trademark role in identitying commodity sources. In addition, Panerai Company has also registered relevant three-dimensional trademarks in China, including No.17026087 , No.17026088 , No.17026089  and No.17026090 .

In 2015, Panerai filed a trademark infringement lawsuit against the defendants Wangming Company, Goukule Company and Ma Ronglin, and reached a settlement agreement in 2016. According to the settlement agreement, Wangming Company, Goukule Company and Ma Ronglin promised to stop infringement and destroy infringing products in stock. At the same time, both parties agreed in the settlement agreement that if the defendant violates the settlement agreement, he shall pay RMB 2 million to Panerai Company as compensation for breach of contract.

In 2017, Panerai Company and Richemont Company found that the defendant still sold watch products which were very similar to the well-known watches of Panerai and IWC in online stores, and then sent a lawyer's letter asking them to stop the infringement, but the defendant refused. Therefore, Panerai Company and Richemont Company will be told to the court to order the defendant to stop infringement and compensate for economic losses and reasonable expenses on the grounds of three-dimensional trademark infringement and unfair competition respectively.

The above two cases are related cases, that is, the defendant infringed the intellectual property rights of Panerai and IWC, watch brands under Richemont Group, a Swiss luxury goods group.

After trial, the court found that the plaintiff Panerai Company is the exclusive owner of three-dimensional trademarks No.17026087, No.17026088, No.17026089 and No.17026090, and its exclusive right to use registered trademarks should be protected by law. The infringing products sold by the defendant are similar to the three-dimensional trademark originally told to protect, infringing the plaintiff's exclusive right to use the registered trademark.

IWC "Pilot" watch, a watch brand owned by the plaintiff Richemont Company, is a well-known commodity, and its unique decoration design can play a role in distinguishing the source of the commodity, which belongs to a certain influential commodity decoration. The decoration of the goods sold by the defendant is highly similar to that of the plaintiff. The court found that the defendant's behavior constituted unfair competition.

The defendant was sued by the plaintiff for allegedly infringing the trademarks of Panerai Company, and then reached a settlement with the plaintiff, promising to stop the infringement. However, after the settlement agreement was reached, the infringement continued, with obvious subjective malice and serious infringement circumstances, which met the use requirements of punitive damages in the first paragraph of Article 63 of the Trademark Law, and the court determined punitive damages within three times. In the case of Panerai, the court decided that the plaintiff suffered a specific loss of 800,000 yuan according to the nature, duration and consequences of the infringement involved, and the reasonable expenses paid by the plaintiff for safeguarding rights. At the same time, in view of the fact that the plaintiff claimed 2 million yuan in compensation in the case and the two parties agreed to pay 2 million yuan in compensation for breach of contract in the previous settlement, the court fully supported the plaintiff's claim for compensation in Panerai. The two cases sentenced the defendant to compensate for economic losses and reasonable expenses. In addition, in the case of Panerai, the legal representative of the defendant company and the defendant company reached a settlement with the plaintiff and agreed on compensation for breach of contract of 2 million yuan, and the court ruled that the defendant company and its legal representative jointly assumed the liability for compensation.

The lawyers of Beijing Lusheng Law Firm, as the agents of the plaintiffs (Panerai Company and Richemont Company), participated in the first-instance litigation of this case.

Typical significance

This case is a typical case of applying punitive damages clause, and its typical significance lies in: when determining the statutory damages, the court not only considers the conventional factors, but also judges the circumstances of the defendant's infringement, and clearly points out that the defendant's behavior belongs to repeated infringement, with obvious subjective malice and serious infringement circumstances, and then applies punitive damages. In addition, the court also considered the settlement agreement reached by the original defendant in the previous trademark infringement dispute, and ordered the legal representative of the defendant company to share the liability for compensation with the company. In this case, the punishment for malicious repeated infringement has been increased, which fully embodies the orientation of applying punitive damages clause to "significantly increase illegal costs", enriches the judicial practice of using punitive damages to curb trademark infringement, and provides a reference case for dealing with similar cases in the future.

At the same time, this is also a typical case of protecting the appearance and shape of commodities through three-dimensional trademarks and anti-unfair competition laws. The court fully considered the distinctiveness and popularity of the commodity appearance and shape design advocated by the plaintiff, and determined that it had the function of identifying the origin of the commodity and fully protected it.