First-instance case number:(2018) Su 05 Min Chu No.572
Second instance case number:(2019) Su Min Zhong No. 1402
If an actor maliciously registers and uses a trademark similar to a well-known trademark, the infringement shall be counted from the application registration and the actual use of the infringing mark, rather than from the time when the non-infringing mark is confirmed to be unable to obtain registration.
When sellers mix infringing products with genuine products, they should bear higher duty of care, which should usually be regarded as selling knowing the infringement.
When determining the amount of infringement compensation, if the infringer publicizes that his business scale is large and there are certain basic facts to confirm it, he shall be ordered to provide relevant evidence of the actual production and sales of infringing products, and if he cannot prove it, he may make a presumption in favor of the obligee.
In trademark infringement cases caused by malicious cybersquatting, the obligee’s rights protection expenses should include all reasonable expenses incurred by the obligee in administrative procedures such as trademark objection and invalidation and litigation.
Case introduction
Appellant (defendant in the first instance): Liangshan Shuihu Tire Co., Ltd. (Shuihu Company for short)
Appellee (plaintiff in the first instance): Bridgestone Corporation (Bridgestone Company for short)
Bridgestone is a world-famous automobile tire manufacturer, and its trademarks No.382697 , which was applied for registration in April 1986 and No.1424390 , which was applied for registration in November 1998, have a high reputation. In 2004, Shuihu Company applied for the trademark ""(Fulisitong). On December 16, 2015, the trademark was determined not to be approved for registration after being examined and re-examined by the State Trademark Office and the State Trademark Review and Adjudication Board, as well as administrative litigation in Beijing court. Since 2004, Shuihu Company has widely used the "" logo on the tires of agricultural vehicles and motorcycles. Bridgestone Company bought the suspected infringing products produced by Shuihu Company from Fengmin Auto Parts Concourse (hereinafter referred to as Fengmin Auto Parts) in Hutang, Wujin District, and filed a I f an actor maliciously registers and uses a trademark similar to a well-known trademark, the infringement shall be counted from the application registration and the actual use of the infringing mark, rather than from the time when the non-infringing mark is confirmed to be unable to obtain registration. When sellers mix infringing products with genuine products, they should bear higher duty of care, which should usually be regarded as selling knowing the infringement. When determining the amount of infringement compensation, if the infringer publicizes that his business scale is large and there are certain basic facts to confirm it, he shall be ordered to provide relevant evidence of the actual production and sales of infringing products, and if he cannot prove it, he may make a presumption in favor of the obligee. In trademark infringement cases caused by malicious cybersquatting, the obligee’s rights protection expenses should include all reasonable expenses incurred by the obligee in administrative procedures such as trademark objection and invalidation and litigation. lawsuit in this case, requesting the defendant to stop the manufacture and sale of infringing products immediately. Shuihu Company compensated for its losses totaling three million yuan, as well as legal fees, investigation fees, notary fees, translation fees and other reasonable expenses to stop its infringement. Fengmin Auto Parts is within the range of 100,000 yuan.
The Suzhou Intermediate People's Court held that the use of "","Fulisitong" "FULISITONG" logos by Shuihu Company in the alleged infringing products and their publicity constituted trademark infringement. Fengmin Auto Parts sells products from Shuihu Company, but it also sells and wholesales "Bridgestone" genuine tires, so it is necessary to know the popularity of the trademarks involved, so the legal source defense is not established. Bridgestone Company applied for compensation of three million yuan, and the court of first instance considered the production and operation scale of Shuihu Company, the popularity of the two trademarks involved and the malicious infringement of Shuihu Company, and gave full support. Bridgestone Company defends rights in this case, from trademark objection to administrative litigation to infringement dispute in this case, which will inevitably produce corresponding investigation fees, notarial fees, attorney fees and other expenses, so it fully supports its reasonable expenses of defending rights of 291,343 yuan. Concerning the joint compensation amount to be borne by Fengmin Auto Parts, the "goods transportation list" in this case is enough to show that Fengmin Auto Parts has a large sales volume and its business activities are wholesale, so Bridgestone Company requires its joint compensation of 100,000 yuan was within a reasonable range.
The court of first instance ruled that Shuihu Company and Fengmin Auto Parts immediately stopped infringement, Shuihu Company compensated for economic losses and reasonable expenses for safeguarding rights totaling RMB 3,291,343, and Fengmin Auto Parts assumed joint and several liability within the scope of RMB 100,000.
Shuihu Company refused to accept the appeal. Because Shuihu Company did not pay the appeal fee, the second trial shall be handled as automatically withdrawing the appeal.
Typical meaning
This case is a typical case in which infringers maliciously register trademarks similar to famous international brands and produce and sell infringing products. The judgment of this case effectively stopped and punished the illegal acts of violating the principle of good faith, attaching to well-known brands, maliciously registering and using trademarks similar to them to seek illegal interests, standardized the business behavior of market subjects, and embodied the value orientation of the strictest protection of intellectual property rights. Its typicality lies in comprehensively examining and identifying the infringer’s subjective malice and determining the amount of punitive damages accordingly. It is embodied in the following two aspects:
Identification of malicious infringement by manufacturers and sellers. The court considered that Bridgestone's tire products entered the Chinese market at least in the 1980s, and its brand has a high reputation. As a peer operator, Shuihu Company applied for registration and use of its similar trademark "" in 2004. After the trademark application was examined by the State Trademark Office, re-examined by the State Trademark Review and Adjudication Board, and the administrative litigation in Beijing court, and was finally recognized as similar to the registered trademark of the obligee and not registered, Shuihu Company continued to use its trademark. Hence, its application and use were malicious. At the same time, from the point of view that tire sellers should have a higher duty of care in dealing with highprofile goods, the mixed sales of infringing products and genuine products were deemed as sales knowing infringement, and the legal source defense was denied. In view of the obvious and serious malicious infringement mentioned above, the judgment applied punitive damages when determining the amount of infringement compensation to increase the infringer’s illegal cost significantly.
When determining compensation, the following rules have been established: First, if the infringer denies the publicity content, he must bear the obligation of information disclosure and provide evidence of the actual production and sales quantity. If the proof cannot be provided, he can make a presumption against the infringer. Second, when the infringer maliciously applies for a registered trademark, when determining the reasonable rights protection expenses of the obligee, the rights protection activities of the obligee other than the litigation, in this case, are extended, and the rights protection expenses inevitably incurred by the obligee in trademark objection, invalid administrative examination and other procedures are fully considered, so the reasonable rights protection expenses advocated by the obligee are fully supported.
