Trial Docket: (2017) Hu 0115 XingChu No. 3300-3303, 3326-3327
City of Shanghai
[Headnotes]
Determination of "basically identical mark," which is substantially undifferentiable from a registered trademark by visual observance, and likely to mislead the public, should be made by general observation, overall observation, detailed observation, and separate observation. Minute visual differences undetectable by public under ordinary circumstances would be sufficient. Attention must be paid to distinction from "similar marks" in civil cases, by observing alteration of the distinctive features of the registered trademark, any difference in visual effect, and whether such effect would be sufficient to affect public recognition.
[Synopsis]
Plaintiff: Dole Food Company of the United States, Zespri Group Limited of New Zealand and Sunkist Growers, Inc. U.S.A
Defendant: Chen and other 12 people
and SWEETIO are the trademarks registered in China by Dole Food Company of the United States; and are the trademark registered in China by Zespri Group Limited of New Zealand; and (designating color) is the trademark registered in China by Sunkist Growers, Inc. U.S.A. All the above trademark registrations are in their effective terms and are under the protection of Chinese laws. The 13 defendants, Chen and others, knowing purchased false labels in large amount, and then sold in their stores. On May 25, 2017, police arrested the 13 defendants of Chen and other in their stores, seizing 1.1 million labels of Upon verification of organizations authorized by trademark registrants, all these labels at issue are counterfeit labels. All defendant confessed to the above facts.
The Pudong Court found there were 14 illegally made trademark labels, of which 11 showed no overall visual disparity when compared to the registered ones. Although some of the labels were different from the registered marks by adding addresses, changing the words or word order, or adding barcodes, these changes are hardly noticeable, and are not substantial changes to the registered mark, and do not affect the marks' distinctive features. Therefore these 11 marks constitute identical marks in criminal law sense. Whereas, the label , compared to the registered mark , should not be considered as identical mark in criminal law sense because although the upper portions are basically the same, the lower part is changed significantly, with the English and numeral changed to Chinese "红心" for which the wording styles and pronunciations are all different, with obvious visual difference from the registered mark. The marks and comprise letter, numerals and designs, and when compared to the registered mark (designating color), the orientation of the mark is changed, the word "Sunkist" is located to the upper portion with smaller fonts, the vertical stripes and the word JINGPIN in a white background take up much of the label.
The composing elements, the overall structures, the conspicuous visual disparities of both the accused mark and the registered mark do not show trademark identicalness in criminal law sense. Therefore the marks ,,ought be deducted from the criminal gains. The court eventually found the 13 defendants Chen and others guilty of selling illegally made labels of registered trademarks, and sentenced them to various terms including detention from two years and eight months to five months, probation of five months, and fines. After the sentencing, none of the defendants appealed. Neither did the prosecution. The judgment became effective.
[Judge's Comment]
This is one of the criminal cases involving over 10 trademarks, 1.1 million labels, for well known imported fruits consolidated at the people's court of Pudong New District, relating to Zespri, Dole, Sunkist, and other well known marks. These cases followed strict standards, accurately measured "identical trademarks" denoting that the "identical trademark" in criminal law sense means completely identical or substantially undifferentiable in visual from the registered trademark sufficient to cause mistake among the public. Determination of "identical mark" should be made by general observation, overall observation, detailed observation, and separate observation. Minute visual differences undetectable by public under ordinary circumstances would be sufficient. Attention must be paid to distinction from civil standard of "similar marks" by observing alteration of the distinctive features of the registered trademark, any difference in visual effect, and whether such effect would be sufficient to affect public recognition.
If the accused mark merely changes the color, word order, by adding places names or barcodes which are insignificantly noticeable indicia, without affecting the distinctive feature of the registered mark to influence public recognition, it should be taken as "identical mark" in criminal law sense. If, however, the composition element or the overall structure of the accused mark is insufficiently identical, with visual disparities, no criminal finding should be made for "identical mark" even if the mark contains the major portion of a registered mark. These cases represented the strength for judicial protection of intellectual properties and suppression of counterfeiting goods, to the benefit of construction of lawful business environment.