About "litigation strategy near the famous" trademark infringement case

Authors: Xu Manjiang

Party

Plaintiff: DomesticSFamous small household electrical appliances listing Corporation

Defendant: Zhongshan, Shunde, GuangdongTManufacturing company

 

A

SThe company is one of the well-known domestic small household electrical appliances listing Corporation, its main commercial pressure cooker series products in the approved the use of goods article11Class product is synonymous with.SCompany registered trademark"S"Text and graphic combination with remarkable characteristics, product packaging every few years to establish a dominant hue,"S"Combination of text and graphics on the packaging is very striking.2002Years"S"Registered trademark by the State Administration for Industry and Commerce Trademark Bureau identified as" a well-known trademark". The"S"The name of the enterprise also has the extremely high commercial value.

The plaintiff found in Guangdong Zhongshan, Shunde and other places, the emergence of a large number ofTThe company, its products with the same category, packaging mimic the commodity, also prominent"S"Chinese words or"S"Variation Chinese font, hypothesisSAs the "sun",TThe company will make a fuss in the sun, or "too-Yang ", or" sun "" new "etc.. Some of the plaintiff's registered trademark imitation, or imitate graph structure, or serious tone, trademark English letters are not the same. In the manufacture of information goods,TCompany outstanding annotationSInternational company (Hongkong) Ltd. producer, orSHongkong science and Technology Co., Ltd. producer and so on, so as to attract the attention of ordinary consumers, the company and theSA relationship between the company. This is what we call "draw near famous brand", "hitchhike".

The plaintiff by the local industrial and commercial department, asked the government to investigate and punish. But the response is suchTThe company is the authorized production, sales partner of mainland enterprises in Hong Kong ltd.,TCompanies are using their own trademarks, such as judicial departments is tort government departments will be dealt with.

 

Two

Commissioned by the plaintiff to the team, for the typical "near the famous" behavior, how to do?

First of all, we in view of the above situation, officers conducted an investigation of v..TThe company has the following main features:

1,TThe company mainly in Zhongshan, Shunde, Guangdong Nanhai, manufacturing industry is relatively developed area, the company scale is generally small, and even some individual workshops, but few enterprises have a considerable scale. Using this kind of technique in production and sales, is flooding;

2, product sales network throughout the country, the yield greatly. Products are relatively concentrated in the several main product sales, such as Changsha, Wuhan Hanzheng Street Gaoqiao market, Zhengzhou electrical wholesale market. Two or three line city is sporadic shops in the main;

2The Hongkong company, is a shell company, basically beTThe shareholders of a company in Hong Kong for relatives, not in the long-term business state;

3, most family enterprises, and the local industry and commerce, taxation relationship is good.

 

Three

The combination of the above factors, how to formulate the litigation strategy, the team considers the following case key points:

1,  Qualitative

The definition of the case is the priority among priorities, often determines the action direction and be totally different results. As in the case of validity of contract, litigant direction is a valid contract, the judge as invalid contract and its correction, the result was overturned, wasting a lot of the cost of litigation, The loss outweighs the gain. And the business often vary from minute to minute, time consumption of victory after sometimes become meaningless.TCompanies use the establishment of the company in Hong Kong, and then to the people and signed cooperation agreements in Hong Kong companies act first impression is a registered trademark of the trademark infringement, think carefully and otherwise, seems to be illegal to trademark infringement covers not all of its technique, the litigation to unfair competition disputes properly. And this phenomenon has the biggest feature is the act of tort has been carried out, even if it is the case in the proceedings, losses have been expanding, the market share eroded.

First.SCompany logo is very has the advantage, in the2002By the State Bureau of brand of industrial and Commercial Bureau awarded the well-known trademarks.TCompanies are in theSAfter the company brand with fame, continued to take the method. As we know, the well-known trademark has the function of cross category protection etc.;

Secondly.TThe company is a comprehensive tort. In the Hong Kong companies useSCompany name,TCompany product packaging color imitationSProducts, outstandingSThe combination of graphics trademark,SChinese font and marked HongkongSSome companies, are directed atSSign away;

Again,SThe company has many subsidiaries and Associate Company, are authorized to useSTrademark. HongkongSA company is easy to cause the company isSAssociate Company's mistake.

Several issues concerning the application of law provisions of civil cases involving unfair competition of the fourth interpretation of the Supreme People's Court: enough to make public the source of merchandise cause misidentification, including mistaken and operators of well-known commodity has permission to use, associated enterprises relationship specific connection, should be identified as the Anti Unfair Competition Law (article fifth two) the provision "and others caused confusion with the well-known commodity, so that the buyer is mistaken as the well-known commodity". Use the same or visual basic undifferentiated commodity name, packaging, decoration in the same product, it shall be regarded as sufficient to cause confusion and others famous commodity. Rule sixth: the enterprise registration authority legally registered enterprise name, and foreign commercial use in Chinese territory (area) the name of the enterprise, shall be regarded as the Anti Unfair Competition Law Article fifth (three) provision of "enterprise name". Have a certain market visibility, are known by the relevant public enterprises in the name of the font size, can be identified as the Anti Unfair Competition Law Article fifth (three) provision of "enterprise name". Rule seventh: for commercial use in China territory, including the well-known commodity specific name, packaging, decoration or business name, name of a commodity, commodity packaging and commodity trading documents, or for advertisements, exhibitions and other commercial activities, shall be regarded as the Anti Unfair Competition Law Article fifth (two) item, article (three) use the rule "".

We think, as unfair competition disputes with coverTThe company all sorts of techniques, should be as the main case. However, all over the court's approach is not the same, some courts in such cases as the two case is composed of two cases for treatment, were sentenced to. For example, The Walt Disney Company v. a domestic shoe company, the Guangzhou intermediate court pleadings of two case by each independent subject of litigation60Million yuan, respectively, in favor of. And some of the court the case as a unified sentence. Obviously, two cases with excellent effect by litigation. But the case is different with the case, sometimes in infringing registered trademark disputes as the main direction of effect is better, can be flexibly grasp case.

In practice, we focus on litigation to unfair competition dispute case, winning a majority of the court's support. We also find that, most courts are unwilling to take the cases were divided into two cases, respectively, decision. For example, Jiangxi, two courts will cause side by side, a trial. Guangdong Zhongshan, choose a trial court. These details are different, resulting in litigation directly change direction. In fact, for plaintiffs, what cause, whether can be divided into two cases from two cases is not very important, can be made to eliminate infringement dens of the objective can be.

2,  "Hongkong" is listed as the defendant

"Hongkong company" malicious registration, malicious and mainland companies signed a cooperation agreement, malicious authorized as the defendant, there seems to be no problem. However, for the problems listed in the procedure: first, listed Hongkong enterprises as the defendant, the first instance level suddenly raise to higher court level, litigation costs increase; secondly, service of documents is a big problem, the law entrust the judicial service program back and forth for half a year long delay for a long time, the litigation unbearable; once again, Hongkong company has long been in a state of suspension, no contact, and increased the difficulty in the case of intangible. In addition, there are a series of problems such as the applicable law. Can say, Hongkong companies to join the litigation is The loss outweighs the gain.

If you can avoid the Hongkong company? We think, fromTThe company how to defense of:TThe company says the innocent, production and sales of Hongkong is authorized, a cooperation agreement. However, the Supreme People's court release [2001]33Number "on the civil evidence regulations" provisions of article eleventh, the parties to provide evidence to the people's court is formed in Hongkong, Macao, Taiwan area, relevant proving formalities shall be gone through. In particular, no residence in mainland Hongkong parties from outside the mainland sent or support related litigation materials submitted by the delegation of Hongkong, China's Justice Department lawyers notary, notary book shall be affixed with the China legal services (Hongkong) Co., Ltd. Hongkong notary documents transmitting dedicated seal. Under the current provisions, in the management of Hong Kong commercial cases occurred in Hongkong area, the legal significance of events and documents, shall require the parties to submit a commissioned notary department authorized by the Ministry of Justice issued and China legal services (Hongkong) Co., Ltd. audit notarization pass that other agencies, certification documents; the Commission notary duty personnel issued or unaudited plus chapter transfer procedures, shall be deemed to be proved not to be "notary documents stipulated in Civil Procedure Law of the PRC" the potency and effectiveness, validity is not with the "PRC security law" stipulates that the forty-third against third people, the behavior is not protected by law. Set up in Hong Kong company basically isTCompany shareholders private behavior, and long-term business. One can imagine, the handle of the evidence notarization procedure of no small difficulty. And the law, for the common infringement behavior, the plaintiff has the right to choose, choose litigation and non prosecution, litigation right who. Can say,SThe company to avoid Hongkong company not v.,TCompanies may not answer.

In practice, we will notTThe company as a defendant.TThe company has presented this case missing parties, should additional Hongkong company as a defendant's request, and provide the seal of the cooperation agreement. However, there is not even aTThe company can provide the notarization and authentication of the judicial process to meet the requirements of the material. Sources of evidence are not legitimate, the court made the program illegal is inadmissible. Another point of view, the legal facts from the court, the cooperation agreement, authorized the mainland company production and sales of a thing is no basis, there is no Hongkong company. Furthermore, we had to getTCompany production of evidence, andTThe company has been identified as all responsibility. There are a few enterprises appeal to the Supreme Court, was rejected.

3,  In proceedings where

The implementation of joint act of tort, any a connection point of the court has jurisdiction, which provides more options for the plaintiff, the plaintiff may have the option to court in the production, sales and other any place.

In proceedings where, is actually according to company procedure needs to be cleaned, such as market, hit the sales link, can choose the sales concentrated in court. For example, Hunan Changsha Takahashi Market, Jiangxi Nanchang Hong City market, the surrounding radiation from the area, we choose to focus on the city intermediate court proceedings. Then with the prevailing legal documents to the regional city of industry and Commerce complaints, striking effect.

Objective in the fight against the manufacturer, manufacturers can choose in the local court. Taking into account the local protectionism and other factors, the company may also increase the cost of litigation, but also necessary in the other connection points courts. The team has a lot of the courts at all levels to lawyers, familiar court logical choice. Cases effect, basically can do the litigation cost balance.

In addition, we found that manufacturers and key city sales outlets are closely related. Money is often on the sales agent of a party, case analysis, a case to do fine how important.

4,  Whether to take the injunction before litigation or litigation preservation

Similar to the case, whether to adopt property preservation principle varies from case to case. This series of cases is relatively small enterprises, access to the lower threshold, a lawsuit down, did not take protective measures producers, small owners a change, a name and opened the phenomenon also occurs. Application for property preservation condition is likely due to a party or other reasons, the decision behavior, difficult to perform or can not perform. In the case of the preservation, breaking the chain of funds has become the main purpose of production. For reducing the cost of litigation, there are security. For example, Nakayama Ichi enterprise is the preservation of the proceedings50Million yuan, we seized the basic account, its not normal deduction tax, to pay the workers social insurance, bank credit rating damaged. But in the accounts into more than50Million yuan of funds operation. The court did not open, everywhere through relationship for reconciliation, compensation and promises to destroy the infringing products.

In the court the efforts the case, the preservation of evidence can also be implemented. The preservation of evidence for the preservation of evidence must be associated with the case, such as books, brochures and so on, must be consistent with the evidence may be lost or difficult to obtain later, and the parties because of objective reasons can not be collected case. It seems the enterprises are in the column, but in the current environment of law enforcement, for the preservation of difficult, not one one. A case is known as a Shanghai company sued a tort, prosecution subject15Million yuan, apply for preservation of the evidence the court after the warehouse found in books, the audit found that the enterprise profit1300Million yuan. And increase the litigation request, to obtain large compensation. Can say seized the large profits account books, completely can cause tort.

What is a temporary injunction, refers to the parties concerned in the prosecution before or during the proceedings shall be ordered to stop violations of infringement by the applicant for. Intellectual property rights in the injunction before litigation refers to the time to stop the ongoing or imminent infringement of rights of intellectual property infringement person or dangerous behavior, mandatory commands a prohibited behavior if the parties apply for court issued in the prosecution before the act. The application conditions: the applicant's right effectively, the respondent is implemented or imminent infringement of intellectual property, the applicant does not take relevant measures to stop the lawful rights and interests of the applicant, causing irreparable damage, the applicant to provide a reasonable, effective guarantee, shall be ordered to stop violations of intellectual property rights will not cause harm to the public interest. Although the above rules can achieve the ideal effect in the implementation, but limited to the court. In practice, there are few courts are willing to take a temporary injunction. Go back to the previous question, sometimes the choice of court is important!

5,  Focus on the pursuit of

According to the different requirements of the company, their focus is different. For example, the plaintiff intends to expand the influence, may require more publicity, requirements newspaper apology. To eliminate the tort, can destroy the mould, finished product etc..

In practice, many clients using litigation profit idea, operation shrink with cold, throw a small East west. We do not approve of this approach, infringement cases on evidence, although we are the basic guarantee of cases cost level, but the improper investment led to the case quality not up to the expected goal of the case is not in the minority. In this caseSThe company does not profit from starting, do early enough. The average annual investment company200Million adults, our cooperation in this part of the action effect, removal costs can do that in case a case, a slight profit.

 

Four

TThe company occupies the domestic two or three line city, in a few counties, the plaintiff has even beenTCompany siege. The low-end products, low price, highlight the use ofSChinese font. Under normal circumstances, our country general consumers are looking only at the Chinese habits, pay little attention to spelling English letters. AddSA kind of enterprise, often develop into a large company group properties, related enterprises typically have the scale of three above, this givesTThe company provides false opportunity, guide the ordinary people mistakenly believe that the products andSAssociated companies. In the process of legalization of the purchase, even had some notary also mistaken situation. One can imagine, the technique is simple, but the consequences.

SThe company represents the rise China national brand. The current China in a rapid transformation from agricultural society to industrial society era, attract people's attention source of growth in urban and rural dual structure two for industrialization of cheap labor and raw materials Everfount primary industry. But the primary development pattern of high pollution, high energy consumption, low labor cost is going to the end, the economic structure transformation brook no delay. Under the guidance of Scientific Outlook on Development, structure transformation refers to a people-oriented, rely on the path of reform of high and new technology development and energy saving and environmental protection. The production of high value-added products, enhance corporate brand value, promote the national brand to the world has become an important part in structural transition. The transformation from the factory to the world, for the world mind, cultivate and protect all cannot do without the national brand. Our enterprises in the development, innovation at the same time, but also to be good at protect themselves, their fruit.