二、芝华士控股（知识产权）有限公司[CHIVAS HOLDINGS（IP） LIMITED]、芝华士兄弟有限公司（CHIVAS BROTHERS LIMITED）诉烟台某酒业有限公司、万某侵害注册商标专用权及不正当竞争纠纷案
【案情】原告芝华士控股（知识产权）有限公司[CHIVAS HOLDINGS（IP） LIMITED]系第G858862A号“ROYAL SALUTE”图形商标、第3958981号立体商标、第7186027号立体商标、第7186031号立体商标以及第7186075号立体商标的所有人，并许可原告芝华士兄弟有限公司（CHIVAS BROTHERS LIMITED）使用上述商标。经持续、广泛的宣传，原告生产、销售的“ROYAL SALUTE/皇家礼炮”21年苏格兰威士忌酒，获得了较高的知名度。被告烟台某酒业有限公司在未经原告许可的情况下，在其生产、销售的“ELYSEE WHISKY”酒上使用与原告商标及商品包装高度近似的酒瓶瓶身及商品外包装。被告万某则未经原告许可，销售了上述商品。
Top ten typical cases of intellectual property rights protection of Wuhan in 2016
Case NO. 1: Sales of commodities with counterfeited “Baiyunbian” trademark by defendant Li, et al.
[Background and Ruling]
After being informed of the types and quantity of “Baiyunbian” white spirit the buyer Zhang needed, defendant Li proposed to defendants Zhou and Wang that they should buy white spirit with counterfeited “Baiyunbian” trademark. Then, defendant Zhou contacted defendant Guo to purchase the counterfeited commodities and arranged for defendant Wang to approach defendant Guo. Under the direction of defendant Wang, Guo drove to join Li and finally sold the white spirit with counterfeited “Baiyunbian” trademark to the buyer Zhang. The amount of the illegal income of defendants Li, Zhou, Wang and Guo was RMB 324,700 yuan, 268,050 yuan, 230,550 yuan and 183,500 yuan, respectively.
The Wuhan Jiang’an District People’s Court ruled that defendants Li, Zhou, Wang and Guo bought a bulk of commodities with counterfeited “Baiyunbian” trademarks for the purpose of sales, although they had known explicitly that these commodities were counterfeited, and their actions constituted the crime of selling commodities with counterfeited registered trademarks. A judgment was made according to law: defendant Li was sentenced to three years’ imprisonment and a penalty of RMB 165,000 yuan, defendant Zhou was sentenced to two years and six months’ imprisonment and a penalty of RMB 135,000 yuan, defendant Wang was sentenced to two years’ imprisonment and a penalty of RMB 115,000 yuan, and defendant Guo was sentenced to two years’ imprisonment and a penalty of RMB 95,000 yuan.
This case is a typical crime of trademark infringement. The characters and images or logos of “Baiyunbian” brand are legally registered by the corresponding trademark holders and possess a high reputation nationwide, which should be protected by law in China. After these counterfeited commodities entered the market, the good business reputation of the trademark holders, which had been built for many years, was infringed. Furthermore, the counterfeited white spirit directly threatened consumers’ health and brought about a serious harm to the society. As a result of the perpetrators’ actions of intellectual property infringement, they undertook the legal consequences including both the imprisonment and penalties, which restricted personal liberty and brought tremendous economic losses. The trial and judgment of this case cracked down on the crime of selling commodities with counterfeited registered trademarks, which played an active role in punishing and preventing such crimes.
Case NO.2: Exclusive right of registered trademarks and unfair competition disputes between Chivas Holdings (IP) Limited, Chivas Brothers Limited and a liquor-making Co Ltd in Yantai and defendant Wan
[Background and Ruling]
The plaintiff, Chivas Holdings (IP) Limited was the trademarks holder of the figurative trademark “ROYAL SALUTE” (registration NO. G858862A) and several three-dimensional trademarks (registration NO. 3858981, 7186027, 7186031 and 7186075) and permitted the other plaintiff, Chivas Brothers Limited, to use these trademarks. By continuous and wide propaganda, “ROYAL SALUTE” blended Scotch whisky (21 years old) produced and sold by the plaintiffs had gained a high reputation in the market. The defendant, a liquor-making Co Ltd in Yantai, used wine bottles and outer packaging similar to those of “ROYAL SALUTE” in their own products, “ELYSEE WHISKY”, without the permission of the plaintiffs. Defendant Wan sold the above products “ELYSEE WHISKY” without the permission of the plaintiffs as well.
The Wuhan Intermediate People’s Court determined that the concerned commodities produced and sold by the defendants had infringed the plaintiffs’ exclusive right to use the registered trademarks (registration NO. G858862A, 3858981, 7186027, 7186031 and 7186075), and the actions of the defendants to use similar packaging in their own commodities without the permission of the plaintiffs constituted unfair competition. The court ruled the two defendants should stop the violation, destroy related products in stock or on sale, and the liquor-making Co Ltd in Yantai should provide compensation for economic losses RMB 500,000 yuan to the plaintiffs. Neither of the parties filed an appeal after this judgment, which has come into effect.
Firstly, this case involved the worldwide famous brand “Chivas”. After this judgment, neither of the parties filed an appeal, which achieved a good social effect. Secondly, details of this case were complicated. Compared with the two-dimensional or figurative trademark, the infringement judgment of the three-dimensional trademark is quite different. The distinctive features of the three-dimensional trademark should be included, but at the same time, all the general elements which affected the shape of commodities should be excluded, such as the inherent properties, the technical effect or the substantive value of commodities. Finally, the case is so specific that it is the first three-dimensional trademark infringement case in Hubei Province. Similar cases are also rare throughout the country.
Case NO.3: Copyright infringement dispute between Wuhan Xiaojudeng Culture and Information Communication Co Ltd and defendant Xu and Zhejiang Taobao Network Co Ltd
[Background and Ruling]
The plaintiff, Wuhan Xiaojudeng Culture and Information Communication Co Ltd (hereinafter referred to as Xiaojudeng), is the copyright holder of the book, “Xiaojudeng lesson plan for quick step sequence composition writing”. Before November 2, 2015, without the permission of the plaintiff, defendant Xu, the operator of an online shop “Anhui Happy Book Bar” on Taobao.com, had been offering books called “Latest Xiaojudeng paper lesson plan for composition writing - special offer for one-stop composition class” for sale, as well as several other commodities including the Chinese characters of “Xiaojudeng”, such as “Xiaojudeng training guidance for composition class”, “Xiaojudeng training for composition writing” and “Xiaojudeng lesson plan (Full set)”, et al. The sales had totaled approximately RMB 19,000 yuan. On October 20, 2015, Xiaojudeng sent a lawyer’s letter to Zhejiang Taobao Network Co Ltd (hereinafter referred to as Taobao), saying that “Latest Xiaojudeng paper lesson plan for composition writing - special offer for one-stop composition class” sold in the online shop “Anhui Happy Book Bar” on Taobao.com were infringing works, and this violation should be stopped immediately and detailed information of the shop operator should be offered. Then, Taobao deleted the links related to “Latest Xiaojudeng paper lesson plan for composition writing” on its website on November 2, 2015. However, this online shop continued to sell other books including the Chinese characters of “Xiaojudeng” and the total sales reached RMB 1,500 yuan. On May 3, 2016, the first-instance court ruled that defendant Xu should stop this violation and provide compensation for economic losses RMB 22,000 yuan to the plaintiff, and defendant Taobao should delete the links of these infringing books on the website of Taobao.com and pay RMB 5,000 yuan out of the above penalty since it should be held accountable for assistance in the infringement. Taobao refused to accept the ruling and instituted an appeal to Wuhan Intermediate People’s Court. The second-instance court upheld the original decision related to defendant Xu and canceled those related to Taobao.
After the provider of online trade platform service deletes the related links of the infringing commodities for sale at the request of the right holder, if the seller commits violations repeatedly, whether the provider should be held accountable for assistance in this infringement has been always a difficult problem in the network intellectual property infringement litigation. Currently, the Internet economy is now in the ascendant and e-commerce has become the main support. Consequently, the understanding and application of “Tort Liability Law” should find a reasonable balance between the protection of the interests of the right holder and the development of the prosperous Internet industry. The second-instance court held that, to judge whether or not the provider of online trade platform service had a subjective cognition of the shop’s repeated violations, several key elements should be coherently considered to make a comprehensive conclusion, such as procedures for commodities online trading, administrative regulations of online commodity naming and tort punishment rules instituted by the online platform. It was unfair for the online platform providers to be presumed to know the shop’s repeated violations and then bear joint liability. This judgment makes a successful transition of the law from abstraction to concretization and strikes a balance between the rights protection and the development of Internet industry.
Case NO. 4: Counterfeiting registered trademark “Miiow” by defendants Chen and Zhang, et al.
[Background and Ruling]
Defendants Chen and Zhang were the former general manager and sales manager of the business division of Wuhan Miiow Garment Limited (hereinafter referred to as Miiow), respectively. Defendant Li was the dealer of Miiow in Anhui Province. Defendant Xu was the head of a textile Co Ltd in Changzhou. In 2014, defendants Chen, Zhang and Li heard that Miiow had stopped offering Miiow underwear to the dealer. Without the permission of Miiow, the three defendants decided to find a clothes manufacturer by themselves to produce Miiow underwear. Then, defendant Zhang was acquainted with defendant Chang by the introduction of defendant Chen. Defendant Chang further introduced defendant Xu to defendants Zhang and Li, although he was fully aware that the three defendants did not obtain the permission of Miiow. From May to August in 2014, defendants Zhang, Li, Chang and Xu discussed the details of Miiow underwear manufacture several times. In this period, defendants Xu and Li signed a contract for purchases of knitwear and textile products in the name of the textile Co Ltd in Changzhou and a commercial and trading Co Ltd in Hefei, respectively. This contract agreed upon the production of thermal underwear, of which the suit number was over 18,000 and the total value was over RMB 1,380,000 yuan. Subsequently, without the authorization of Miiow, defendant Xu organized the production of thermal underwear in accordance with the electronic documents such as certificates and tags provided by defendant Zhang, and the sample underwear provided by defendant Li. For all the counterfeited underwear of Miiow trademark of over 18,000 suits, defendant Li paid more than RMB 1,330,000 yuan to defendant Xu when taking delivery. Besides, defendant Li paid defendants Zhang and Chen off successively with a total amount of RMB 60,000 yuan, and defendant Xu paid defendant Chang off with a benefit of RMB 190,000 yuan.
The Wuhan Jiang’an District People’s Court ruled that Miiow trademark was legally registered by Miiow and was still in the term of validity, which should be protected by law in China. Defendants Zhang, Chen and Li in collusion with defendants Chang and Xu, used the same trademark “Miiow” in the same type of commodities without the permission of the trademark right holder. This action violated the trademark management system in our country, infringed the exclusive right of registered trademark of the right holder and constituted the crime of counterfeiting the registered trademark. The defendants hereinbefore were sentenced to imprisonment, probation and penalties, respectively.
This case is a crime of counterfeiting registered trademarks. Its characteristic lies in the fact that two of the defendants were employees of the registered trademark right holder, Miiow. Five defendants intended to cover up their illegal purpose in a legal form to get round the law. Moreover, the registered trademark and its relevant commodities involved in this case had a high reputation in the market. After these counterfeits entered the market, the good business reputation of the trademark holder, which had been built for many years, was infringed. Furthermore, these counterfeits directly disrupted the order of the market economy and brought about a serious harm to the society. The court sentenced the five defendants to both imprisonment and penalties, aiming to deprive their ability to commit another crime and thus deter illegal crimes of the same kind.
Case NO. 5: Sales of commodities with counterfeited PHILIPS trademark by defendant Zhou, et al.
[Background and Ruling]
In August 2016, PHILIPS (China) Investment Co Ltd reported to the public security organ that “PHILIPS” LED strip lights used by Wuhan Oceanwide City Square Development & Investment Co Ltd in the first-phase indoor advertising light boxes were counterfeited commodities. According to the investigation of the public security organ, defendant Zhou, on behalf of a company in Wuhan, participated in a project bidding of design and construction of Wuhan Oceanwide City Square Development Investment Co Ltd in July 2013. He won the bidding at a price of RMB 1,330,000 yuan and worked as the project manager. In order to obtain illegal benefits in this project, Zhou ordered counterfeited “PHILIPS” LED strip lights of 9000 meters from a LED manufacturer Li in Shenzhen with a total value of RMB 270,000 yuan. These LED strip lights were then utilized in the first-phase indoor advertising light boxes of Oceanwide City Square. However, the income that defendant Zhou earned by selling these counterfeited strip lights in this project reached RMB 600,000 yuan. On August 16, 2016, the bureau of public security arrested Zhou and brought him to justice.
This case was highly concerned by the Netherlands Embassy and Consulates in China and had great social effects. In this case, defendant Zhou bought in large stocks of counterfeited PHILIPS LED strip lights at a low price and put them into the market for mass use. This behavior seriously infringed the intellectual property rights of the famous international brand, PHILIPS. The successful crack-down of this case indicates that in China, foreign litigants enjoy the same protection on intellectual property rights with domestic litigants.
Case NO. 6: Counterfeiting registered trademark “Dongfeng” by an electronic appliance Co Ltd in Wuhan
[Background and Ruling]
On June 21, 2016, the industrial and commercial administrative department inspected that an electronic appliance Co Ltd located in Hanyang District of Wuhan was suspected of manufacturing counterfeited commodities with registered trademark “Dongfeng”, which infringed the exclusive right to use the registered trademark “Dongfeng”. The further investigation revealed that this electronic appliance company purchased a batch of packing boxes and labels marked with “Dongfeng Xiangfan Instrument System Co Ltd” and the registered trademark “Dongfeng” on April 20, 2016. Without the permission of the right holder of the “Dongfeng” registered trademark, these packing boxes and labels were used in the automobile sensors manufactured and marketed by this electronic appliance company. The illegal business income totaled RMB 20,400 yuan. According to law, the industrial and commercial administrative department ordered the company to stop the violations immediately and pay a penalty of RMB 200,000 yuan for the tort. The infringing counterfeited commodities were confiscated and destroyed.
“Dongfeng” is a nationwide well-known trademark and its automobile accessories are closely related to people's lives and property safety. In order to seek illegal interests, the litigant used the counterfeited labels marked with “Dongfeng” trademark on the automobile accessories, which seriously damaged the rights and interests of both Dongfeng Motor Corporation and the consumers. In order to maintain a fair competitive market environment and escort the enterprise development, the industrial and commercial administrative department has devoted greater efforts to crack down on the infringement of the exclusive right to use well-known registered trademarks.
Case NO. 7: Infringement of the copyright of the movie “Mr. Six” by contractor Zhou
[Background and Ruling]
On January 30, 2016, as soon as the municipal cultural market comprehensive law enforcement detachment received “Notice about checking and handling the suspicion of pirated movie screening in the Huada Youth Theatre” from Administration of Press, Publication, Radio, Film and Television of Hubei Province, the detachment immediately organized the municipal and district-level law enforcement team to rush to the Huada Youth Theatre in Central China Normal University and conduct an investigation. The investigation found that the contractor of the theatre, Zhou, screened the movie “Mr. Six” by a blue-ray player and a projector and sold 140 tickets at a price of RMB 10 yuan per ticket without the permission of the copyright holder of this movie. The law enforcement officers gathered evidence about the business operations of this theatre and ordered the theatre to stop screening the movie, refund the ticket price and apologize to the audience. A penalty of RMB 5,000 yuan was made to the theatre as an administrative punishment according to law.
According to the “Copyright Law” in China, the copyright holder of the movie “Mr. Six” has the right to screen, which means playing the movie through a projector, a slide projector or other technical equipment. The theatre contractor Zhou screened the movie by a projector without the permission of the copyright holder of the movie, which violated the legitimate rights and interests of the copyright holder. The municipal cultural market comprehensive law enforcement detachment exercised the right of administrative enforcement timely and made the administrative punishment based on the scene evidence according to law. This enforcement effectively safeguarded the legitimate rights and interests of the copyright holder, protected and promoted the standardization and prosperity of Chinese movie market.
Case NO. 8: Manufacturing and sales of counterfeited screw-thread steel by defendant He, et al.
[Background and Ruling]
In April 2016, according to the masses report, the municipal bureau of quality technical supervision and inspection deployed enforcement officers to conduct a law enforcement inspection of the hot rolled ribbed bars used in the steel concrete (known as “screw-thread steel”) in three construction sites located in East Lake High-Tech Development Zone and Hongshan District. It was revealed that screw-thread steel products marked with “Egang Company of Wuhan Iron and Steel Group” were found in all the three construction sites, which were supplied by defendant He (10 volumes with a total value of RMB 46,371.12 yuan), a materials Co Ltd in Wuhan (5 volumes with a total value of RMB 23,715 yuan) and a commercial trading Co Ltd in Wuhan (7 volumes with a total value of RMB 42,420 yuan). After further investigation and verification, it was verified that the screw-thread steel products aforementioned were purchased from another steel mill rather than Egang Company of Wuhan Iron and Steel Group and sold to the three construction sites after the illegal replacement of the counterfeited certificates and labels marked with the plant name and address of “Egang Company of Wuhan Iron and Steel Group”.
The municipal bureau of quality technical supervision imposed administrative penalty on the three litigants according to law and confiscated the counterfeited products. The details of the case were then reported to the departments concerned such as the construction supervision department and the public security organ.
Screw-thread steel products are closely related to the quality and safety of the construction projects. The municipal bureau of quality technical supervision played an active role in strengthening the supervision and cracking down the counterfeited and substandard commodities. This forceful supervision supported and protected the superior enterprises and cleaned up the inferior ones, and thus prevented the occurrence of harmful consequences.
Case NO. 9: Enforcement of the patent rights of Wuhan Cuiyu Environmental Protection Technology Co Ltd
[Background and Ruling]
Wuhan Cuiyu Environmental Protection Technology Co Ltd (hereinafter referred to as Cuiyu) is the patent licensee of the exclusive right to use the patent “Spraying system of tower crane” (Patent NO. ZL201320052452.5) in the license contract. In October 2016, Cuiyu put forward a request to Wuhan Science and Technology Bureau (Wuhan Intellectual Property Bureau) about the infringement of its patent right by an environmental protection company in Wuhan, the sixth engineering company of China Railway Group and a corporation of China Railway Group. Cuiyu asked Wuhan Science and Technology Bureau (Wuhan Intellectual Property Bureau) to order the three companies to stop the violations immediately, make a written apology in the newspaper to promise no further infringement, and dismantle and seal up the infringing commodities. The case was then filed according to law by Wuhan Science and Technology Bureau (Wuhan Intellectual Property Bureau). Law enforcement officers made numerous trips to the installation sites of the infringing products, a bridge in Wuhan and a subway construction site, for investigation and evidence collection. A public oral hearing was held afterwards. It was revealed that the environmental protection company in Wuhan manufactured the infringing spraying systems of tower crane, and sold these spraying systems to the sixth engineering company of China Railway Group and a corporation of China Railway Group, respectively, for installation in the bridge and subway construction sites. Through the repeated mediation of the officers of Wuhan Science and Technology Bureau (Wuhan Intellectual Property Bureau), the two parties reached a mediation agreement, which ruled that the environmental protection company in Wuhan should make a one-time payment to Cuiyu and promise not to manufacture, sell or offer to sell the relevant products infringing the patent right, and the sixth engineering company of China Railway Group and a corporation of China Railway Group could continue to use the spraying systems installed in the construction sites.
According to the “Patent Law” in China, mediating the patent infringement disputes is the statutory responsibility of the intellectual property administrative organs. In this case, the officers of Wuhan Science and Technology Bureau (Wuhan Intellectual Property Bureau) performed their duty actively and eventually brought about a mediation agreement through repeated mediation on the basis of comprehensive investigation and evidence collection. The conciliation act was beneficial to both sides. On one hand, the patent right holder received a reasonable compensation, and the patent right and the enthusiasm of patent inventors were protected. On the other hand, the conciliation avoided the demolition of the installed spraying systems, which would bring an adverse effect on the environment.
Case NO. 10: Infringement of the copyright and the exclusive right to use the registered trademark WINDOWS of Microsoft
[Background and Ruling]
On July 13, 2016, the Wuhan Customs Agency in the post office found a suspicious parcel whose declare name was “GIFT” while checking and inspecting the parcels exported to the United States. Actually, the parcel contained 299 CDs and 100 tags marked with the logo “WINDOWS”, which were suspected of infringing the exclusive right to use the registered trademark of Microsoft (China) Co Ltd. The Wuhan Customs then contacted the agent of the right holder, Shanghai Hanyuan Law Firm, and delivered “Notice of confirmation of the intellectual property rights status of import and export goods”. On August 19, the right holder confirmed to the Wuhan Customs that the CDs in the parcel infringed the exclusive right to use the registered trademark of Microsoft (China) Co Ltd, and proposed a written application to detain the related CDs. On August 23, the right holder issued an identification certificate to the Wuhan Customs, noticing that the related CDs and tags in this case infringed the copyright and the exclusive right to use the registered trademark with a total value of RMB 418,301 yuan. The Wuhan Customs then informed the sender of the parcel to declare the intellectual property rights status through the address left by the sender, but failed to get in touch with the sender. On December 14, the Wuhan Customs confiscated the infringing good involved in this case according to law.
In this case, the Wuhan Customs implemented the “Fair Wind Action” launched by the General Administration of Customs and took an active part in the nationwide collaborative enforcement action to protect the intellectual property rights between the China Customs and the United States Customs. This collaborative action not only supervised the infringing counterfeited commodities imported to China, but also focused on the commodities exported to the America. By using the operation system comprehensively, the Wuhan Customs Agency in the post office made a risk analysis and a well-targeted inspection of the parcel named “GIFT” exported to the United States, and found that it actually contained CDs marked with the logo “WINDOWS”, which infringed the exclusive right to use the registered trademark of the right holder Microsoft (China) Co Ltd. The amount of money involved in this case was the largest among the intellectual property infringement cases since the establishment of this agency. This case has fully reflected the intensity and characteristics of the law enforcement of China Customs in the intellectual property rights protection.