BELIMO Holding AG v.Bolimou Xiamen trademark Infringement Dispute

China IP,[Trademark]

 

First-instance case number: (2014) Xia Min Chu No.1604, (2014) Xia Min Chu No.1605
Second instance case number: (2019) Min Min Zhong No.883, (2019) Min Min Zhong No.884
 
With regard to the alleged infringer's denial of the sales evidence submitted thereby in related cases, the court held that although the alleged infringer claimed that some invoices and contracts overlapped and some contracts were not fulfilled in the sales evidence, the evidence was submitted by the accused infringer in the trademark invalidation procedure to prove that he sold and used a large amount. Now, the case claims that the actual sales amount is not the amount reflected in the evidence, which obviously violates the principle of good faith and does not support this claim. With regard to the alleged infringer's claim that the lawsuit should be rejected because the case is a dispute between two registered trademarks, the court held that according to Article 39 of the Trademark Law, "the validity period of a registered trademark is ten years, counting from the date of approval of registration", the opinion of the alleged infringer that "once a trademark is approved for registration, its protection begins from the date of trademark application" was not supported. Because the alleged infringer approved the registered trademark later than the time when the obligee notarized the infringement, and the trademark was declared invalid by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce during the trial of the original court, the alleged infringer's claim of rejecting the lawsuit was not supported.  
 
Case introduction
Appellant (plaintiff in the first instance): BELIMO Holding AG
Appellant (defendant in the first instance): Bolimou (Xiamen) Valve Co., Ltd. (hereinafter referred to as Bolimou Xiamen Company)
 
In this case, the trademark of the right holder BELIMO Holding Company has a high reputation. BELIMO Holding Co., Ltd. is a global company, which was established in 1975 and the scope of business covered the whole world. It entered the Chinese market in 1997 and set up the Beijing Representative Office on January 27, 1999. From 2010 to 2012, the trademarks involved in the case have been sold in more than 20 large and medium-sized cities in China. One of them is Xiamen, the city where the accused infringer Bolimou Xiamen Company is located. Without the authorization of the obligee, Bolimou Xiamen Company has used a large number of trademarks involved by the obligee in its storefront door, interior decoration, products and product packaging, car body advertising, publicity atlas and other promotional materials; In the publicity website of Bolimou Xiamen Company, a large number of trademarks of the obligee involved are highlighted. The above-mentioned behavior of Bolimou Xiamen Company easily leads the relevant public to think that the goods it provides come from the obligee or have a specific connection with the obligee, which is enough to cause the relevant public to confuse and misunderstand the source of the goods. In addition, Bolimou Xiamen Company has obvious subjective malice. It applied for the same trademark in Chinese and English as the obligee Belimou Holding Company and registered a company in Hong Kong called Swiss Belimou Valve Group Co., Ltd., which claimed that it was a wholly-owned subsidiary controlled by Swiss Belimou Company and a Sino-Swiss joint venture. BELIMO Holding Company filed a civil lawsuit against Bolimou Xiamen Company for trademark infringement and unfair competition. At the same time, BELIMO Holding Company filed an application for invalidation of the registered trademarks "Bolimou" and " BELIMO " applied by Bolimou Xiamen Company. During the trial of invalidation cases, Bolimou Xiamen Company submitted a large number of sales contracts and invoices in order to prove that its use of the applied trademark has gained a certain popularity. BELIMO Holding Company requested the court to order that Bolimou Xiamen Company bear the economic loss of 10 million yuan (5 million yuan in each case) caused by its infringement.
 
The court of the first instance found that the use of the same or similar logo as the registered trademark on similar goods by Bolimou Xiamen Company without the permission of BELIMO Holding Company constituted trademark infringement; Fake and unauthorized use of the English name of the holding company and false propaganda in business activities constitute unfair competition. However, because BELIMO Holding Company failed to prove its losses or the specific amount of Bolimou Xiamen Company's profits, the court of the first instance comprehensively considered the factors and determined the compensation amount as 1 million yuan at its discretion (each case was awarded 500,000 yuan). The factors that were taken into consideration by the court include the popularity of the disputed trademark and brand name, the duration of the infringement, the degree of damage, the influence and the malicious infringement of Bolimou Xiamen Company, as well as the reasonable expenses of BELIMO Holding Company such as notary fees, purchase of notarized products, translation fees and attorney fees to stop the infringement.
 
The court of the second instance comprehensively considered the popularity of the trademark involved, the massive sales amount of the accused infringer, and his subjective malice and behavior. It determined that the compensation amount determined by the court of the first instance was too low, which was adjusted to 3 million yuan (1.5 million yuan in each case).
 
The lawyer of Beijing Wanrui Law Firm, as the agent of the plaintiff and appellant (Bolimou Company) in the original trial, participated in the proceedings of the first and second instance.
 
Typical significance
In civil cases of infringement of the exclusive right to use trademarks, it is difficult to prove the damages caused by infringement compensation. In this case, the obligee submitted several sales evidence such as contracts and invoices submitted by the accused infringer in the case of related invalidation. It fully proved the calculation method of the operating profit and infringing sales of the obligee's similar products. Considering that the trademark of the obligee has high popularity and the alleged infringer has apparent subjective malice, the obligee held that the compensation amount determined by the court of the first instance at its discretion is too low, and appeals. In the second instance, the obligee mainly expounded the malicious infringement of the accused infringer and the calculation method of infringement compensation. Combined with the current judicial policy of strengthening judicial protection of intellectual property rights and the actual situation of this case, the court of the second instance found that the compensation amount in the original trial was too low, and adjusted the compensation amount to three million yuan. In this case, the accused infringer claimed that some invoices and contracts overlapped and some contracts were not fulfilled in the sales evidence and denied the sales evidence submitted by him in related cases. The court refused to support it because it obviously violated the principle of good faith. This determination has a positive impact on the rights-holders in trademark infringement cases and has a powerful guiding significance for similar cases in the future.

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