China’s Shanghai Intellectual Property Court in February upheld a lower court ruling in favor of Swedish seal maker Roxtec International AB (烙克赛克) in a trademark infringement lawsuit lodged by it against Chinese competitor Shanghai Yibo Shipping Co., Ltd. (上海怡博船务有限公司), ordering Yibo to pay 500,000 yuan ($75,000) in damages and reasonable costs.
Founded in 1990, Roxtec is a company specializing in the development and manufacture of cable and pipe seals (sometimes known as multi cable transits). Its products are designed to seal cable and pipe penetrations in order to protect from multiple hazards including fire, water, gas, dust, vibrations, electro-magnetic disturbances, vermin, and the risk of explosion. The markets for Roxtec’s products include power, marine, oil and gas, telecoms, infrastructure, industrial equipment, and the process industries. Mikael Blomqvist founded Roxtec after inventing Multidiameter, a technology using module layers that are removable for adaptability to cables and pipes of different sizes. Yibo was founded in 2006 and its business includes ship maintenance, shipping equipment design and manufacture, sealing materials and cabling manufacture, etc.
Roxtec registered its Chinese Trademark No. 11915216 for goods and services in Class 17 including mainly electrical, thermal and acoustic insulating materials and plastics for use in manufacture in the form of sheets, blocks and rods, etc. in 2015. The colors blue and black, which are assigned discrete Pantone color codes, are claimed as a feature of the color combination mark. The logo mark consists of concentric circles in the color black with an additional solid circle in the color black appearing at the center, and the color blue appears between these circles and as the background outside the circles. Color combination marks on product packaging can be inherently distinctive. Evidence showed that Roxtec’s logo trademark had been widely present and recognized in China since 2008 with the previous pervasive availability of its products in specific industries here.
Roxtec sued Yibo in the Yangpu District People’s Court of Shanghai municipality in 2020 for manufacturing and distributing modular cable transits utilizing a trademark infringing its trademark. Roxtec alleged that Yibo’s cable transits claimed sealing modules of variable diameters as a prominent feature, similar to Roxtec’s products. Yibo denied infringement. And Yibo also used the prior user rights defense, sticking to the fact that the Roxtect color combination color mark was not registered in China until 2015. The evidence submitted by Roxtec indicated the opposite, affirming Roxtec’s prior user rights. The court invoked Article 9 of the Judicial Interpretation of the Trademark Law of the People’s Republic of China (《最高人民法院关于审理商标民事纠纷案件适用法律若干问题的解释》) to find Yibo’s trademark was similar to Roxtect’s trademark in color and graphic design so as to be likely to cause consumer confusion. The court ruled for Roxtec and awarded it 50,000 yuan ($75,000) in damages and reasonable costs. Yibo appealed the case to the Shanghai Intellectual Property Court, which upheld the lower court decision in February.
The lower court case docket no. is （2020）沪0110民初1151号, whose English transliteration is 1151, first instance (初), civil case (民), (2020) Yangpu District People’s Court of Shanghai Municipality.
