Civil Litigation Relating to a Trademark Infringement Case

Facts and Procedure:

Appellant, LACOSTE was found in 1933, and registered its trademark of “crocodile logo” in France in the same year. From 1980 to 1999, LACOSTE registered trademarks No.141103 (Class 25), No.879258 (Class 25), No.1318589(Class 25) of “crocodile logo”(as showed in following chart)and No.940231(Class 18) of “crocodile logo LACOSTE”(as showed in the following chart)in China. Until the year of 1984, LACOSTE formally brought its products into China with limited quantity. In 1994 LACOSTE opened its first boutique in Shanghai, China.

Appellee, Crocodile International Pte Ltd (hereinafter referred to as “Crocodile International” was formerly found in Singapore in 1943 under the name of “Lishengmin Co." and changed its name now in 1983. Lishengmin Co. earliest applied its trademark of “crocodile logo” in Singapore in 1949 and successfully registered in 1951. Lishengmin Co. also registered its trademark “crocodile logo” on the goods of Class 25 in Singapore and Hong Kong in 1951. During the years of 1952 to 1954, Lishengmin Co. obtained its registration of “crocodile logo” trademark in Class 25 in India Malaysia, Sarawak, Sabah, etc. In 1959, Lishengmin Co. registered the “crocodile logo” trademark in Japan, and from 1961 2003, Crocodile International successively registered its trademark “crocodile logo” on the goods of Class 25 in other countries and regions including Brunei, Indonesia, Sri Lanka, Korea, Taiwan, Thailand, Mongolia, Nepal, North Korea, Morocco, Saudi Arabia, Fiji, etc. In 1994, Crocodile International opened up its first store in Shanghai, China, and in 1993 to 1994, Crocodile International applied and registered its trademark of “CATELO crocodile logo”(as showed in the following chart)in classes 18 and 25 in China.

Lishengmin Co. once brought a civil lawsuit in Osaka, Japan in 1969, alleging that LACOSTE's agent had infringed upon its trademark right. In 1973, the two parties reached a settlement in the Higher Court of Osaka that Lishengmin Co. agreed LACOSTE register the “crocodile logo” trademark in Japan. Later on June 17, 1983, the two parties even concluded and signed a settlement agreement. However, in the year of 1995, LACOSTE found Crocodile International had opened a number of stores in China with realistic-style crocodile logos printed on signboards and selling clothing products branded with “crocodile logo” trademark(as showed in following chart). LACOSTE sent warnings to Crocodile International twice in 1995 and 1998. On May 11, 2000 LACOSTE brought a trademark infringement suit against Crocodile International and its agent SHANGHAI ORIENT CROCODILE CLOTHING CO., LTD., BEIJING BRANCH in Beijing, China.

In the trial the Beijing Higher People' s Court held that:

In accordance with the facts ascertained by our Court, the act of Crocodile International was different from those counterfeit ones intending to counterfeit famous brand products, and Crocodile International subjectively had no intent to take advantage of LACOSTE's brand reputation and lead to confusion or mistaken recognition by consumers. After long-term use in large scales in the mainland market of China, the series trademarks of Crocodile International, had objectively gained certain business reputation. Moreover, the infringing products of the suit were branded not only with the “crocodile logo”, but also with “CARTELO” and “CARTELO crocodile logo”. All of these were used as a whole that enabled the infringing products of the suit with the characteristic of overall recognition which effectively distinguished themselves from other goods with crocodile logo. With the above facts according to the principle of overall alignment and comprehensive judgment, series trademarks of LACOSTE and the series trademarks of Crocodile International, as a whole, had respectively formed with significant difference characteristics from each other. Neither in the process of actually buying goods by consumers nor being used after goods were sell, the marks of both sides would not lead to confusion or mistaken recognition by consumers. Therefore, the Beijing Higher People' s Court ruled that the claims of LACOSTE were rejected.

Whereas being disagreed with the judgment of first instance, LACOSTE appealed to the Supreme People's Court. Supreme People's Court made a judgment of second instance on December 29, 2012 to dismiss the appeal and sustain the original judgment.

Focus of the Case:

Shall this case applied to the new Trademark Law amended on October 27, 2001?

Judgment of trademark that is similar in the sense of infringement on the exclusive right to use a registered trademark.

Key Law Articles:

Interpretation by the Supreme People's Court of the Issues relating to Jurisdiction over and Scope of Application Law to the Hearing of Trademark Cases

Article 8 Where cases were filed against infringements of the exclusive right to use registered trademarks taking place before the entry into force of the Decision on Amendment of the Trademark Law, and the People's courts had not yet rendered any effective judgments thereon at the time of the entry into force of Decision, such cases shall be handled in according with the provision Article 56 of the amended Trademark Law.

Article 9 Except otherwise provided for in this Interpretation, the provisions of former Trademark Law apply to civil cases of trademark disputes involving civil acts taking place before the entry into force of the Decision on the Amendment of the Trademark Law and accepted by the People's Court; where civil cases arising after the entering into force of the Decision are involved, provisions of the revised Trademark Law shall apply; the provisions of former and revised Trademark Laws apply respectively to civil acts which took place before and continued after the entry into force of the Decision on Amendment of the Trademark Law.

the Trademark Law before amended in 2001;

Article 38 Any of the following acts shall be an infringement of the exclusive right use a registered trademark:

to use a trademark that is identical with or similar to a registered trademark in respect of the identical or similar goods without authorization from the trademark registrant;

Interpretation of the Supreme People's Court on Several Issues Concerning Application of Law in the Trial of Civil Dispute Cases of Trademarks

Article 9,Section 2 phrase “trademark that is similar” under item (1) of Article 52 of Trademark Law means where the suspected infringing trademark is compared the plaintiff's registered trademark and the font, pronunciation or meaning the words or the composition or coloring of the device are similar, or overall structure of its combined main elements is similar, or where its 3-dimensional shape and combination of colors are similar thereby easily leading the relevant public to mistake the source of the products or to believe that their source has a certain connection to products using the plaintiff's registered trademark.

Significance of the Case:

In this case, the Supreme People's Court pointed out that, a trademark that is similar in the sense of infringement on the exclusive right to use a registered trademark shall be confusingly similar which means such similarity is sufficient to cause confusion in the market. In view of the complexity of conditions involved by disputed marks in different cases, the courts, besides usually considering the degree of similarity their components in judging trademark similarity, shall also base on specific conditions of the case and take all the factors such as the subjective intent of the alleged infringer , the history and the current situation of use of the registered trademark and disputed mark, and other relevant factors, into consideration, and then on basis of this, recognize whether the disputed mark is confusingly similar to a registered trademark.