CRIMINAL CASE

CASE 15:

“MAXAM” TRADEMARK COUNTERFEIT

◆ First instance: (2018) Hu 03 XingChu No. 29

◆ Second instance: (2018) HuXingZhong No. 61

Shanghai Municipal

[Synopsis]

Plaintiff: Kuayue Biotechnology (Chuzhou) Co., Ltd. and Tong Xuanjun

Defandants: Shanghai Jahwa United Co.,Ltd

Shanghai Jahwa United Co., Ltd is the trademark owner of the registered trademark “MAXAM,” which is approved to be used for such products as hair cream. In September 2016, the Defendants purchased the label, bottle cap and bottle body with the counterfeit registered trademark “MAXAM” without the permission of the trademark owner, and filled the hair cream materials produced by the Defendant, Kuayue Biotechnology (Chuzhou) Co., Ltd into bottles and exported same after attaching such labels. On November 1 of the same year, the batch of hair cream with the counterfeit registered trademark “MAXAM” was exported to the Republic of Yemen and was seized by Shanghai Customs in the process of customs clearance. Totaling 46,080 bottles were seized with the sales amount of USD 37,440, equivalent to 253,596.096 Yuan. On July 3, 2017, the Defendant was cited by the public security organ and truthfully confessed the facts of the crime.

The court of first instance held that, the Defendants used the same trademark as the registered trademark on the same commodity without the permission of the registered trademark owner in order to obtain illegal profits. Given the illegal operation gains amounted to more than 250,000 Yuan, the circumstances were very serious and had constituted a crime of counterfeiting registered trademarks. As the Defendant, who was directly responsible for the Defendant unit, automatically surrendered after committing the crime, truthfully confessed the crime, the acts of the Defendants had constituted surrender and the penalty thus can be lightened or mitigated according to law. Given the Defendant unit had prepaid part of the fine, the penalty imposed to the Defendant’s unit and the Defendant thus may be lightened or mitigated to some extent at discretion. It was ruled that: 1. The Defendant unit had committed the crime of counterfeiting a registered trademark and thus was imposed a fine of 100,000 Yuan. 2. The Defendant was convicted of counterfeiting a registered trademark and thus was sentenced to one year and eight months in prison and a fine of 50,000 Yuan. 3. The hair cream with the counterfeit registered trademark seized in the case shall be confiscated. After the judgment of the first instance, both the Defendant unit and the Defendant refused to accept the judgment and made an appeal. The court of second instance held that the Defendant unit and the Defendant independently used the same “MAXAM” trademark logo on the same locations of the bottle cap, the bottom of the bottle and the bottle body without the permission of Shanghai Jahwa United Co., Ltd. The use of "MAXAM" registered trademarks and locations are the same as those used by the hair cream products of the right holder Shanghai Jahwa United Co., Ltd, and the circumstances were particularly serious, having constituted a criminal act of using the same trademark as the registered trademark on the same kind of goods without the permission of the trademark owner. The defender’s opinion that the Defendants’ exporting the products marked with its own trademark and the "MAXAM" was a kind of brand-name processing behavior, and was impossible to cause confusion among the relevant public to the "MAXAM" trademark did not match the objective facts. Therefore, the court dismissed the appeal and upheld the original judgment.

[Judge's Comment]

In this case, the court found that the Defendant unit used its own registered trademark “Mekexi” in combination with other person’s registered trademark “MAXAM”, which was misleading to the public and was also a criminal act of counterfeiting registered trademarks, accurately defining the constituent element of “misleading the public” in the case of counterfeiting registered trademarks. In addition, it discusses whether the behavior involved in the case belongs to branding processing, clarifies the behavior of “branding processing” and “trading of goods”, explores the constituent elements of branding processing, and has fully played a leading role in the judiciary of criminalizing and fighting the trademark infringement.