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China IP magaziine



Trial Docket: (2017) Zhe 01 MinChu No. 1681
Zhejiang Province
An order o f a preliminary injunction is a harsh pretrial remedial measure significantly affecting the parties' interest. A court in granting such an order must exercise due care.
Plaintiff: Alibaba Group Holding Limited and Zhejiang Tmall Network Limited
Defendant: Guangdong Tianmao Investment Group, Guangdong Tianmao Company and Zhou Shaowen
Alibaba Group Holding Limited ("Alibaba Group") and Zhejiang Tmall Network Limited ("Zhejiang Tmall") contend that Guangdong Tianmao Investment Group and 16 affiliates in which Guangdong Tianmao was shareholders which all use "天猫" (Chinese equivalent of "Tmall") as business names (collectively "Guangdong Tianmao"), and ZHOU Shaowen (shareholder of Guangdong Tianmao), without permission, used and registered as their corporate name for their business activities, a word that was identical with their registered trademark "天猫" (Chinese equivalent of "Tmall"), misleading the relevant public into believing that Guangdong Tianmao had connection with them, constituting thereby trademark infringement and unfair competition. These acts already caused tremendous injuries to their reputation and images, and it was highly likely that Guangdong Tianmao and Zhou Shaowen would very likely continue with even worse acts, leading to irreparable harm. Alibaba Grou and Zhejiang Tmall therefore filed suit, requested attachment, and sought preliminary injunctions against: 1. Guangdong Tianmao and Zhou for trademark infringement and unfair competition activities; 2. Guangdong Tianmao for using "Tianmao" or similar words as corporate names; 3. Guangdong Tianmao and Zhou for using "Tianmao" or any other word identical with or similar to "Tianmao" mark in any company or entity they may set up.
The Hangzhou Intermediate Court, upon examination, determined: (1). Alibaba Group is registrant of "Tianmao" (in Chinese) under Reg. No.10,130,978 and other trademarks, and Zhejiang Tmall is a licensee. The accused infringing indicia is identical with or highly similar to the "Tianmao" trademarks, likely to cause relevant public to believe that there is a connection with Alibaba Group, thereby diluting the strength of its trademarks, causing damage to its trademark rights, and a finding of infringement is highly likely. (2) Guangdong Tianmao, knowing the "Tianmao" trademarks and corporate name, registered a series of "Tianmao" corporate names and used them in business activities, with the intention to take off on "Tianmao" trademark and corporate reputation, and a finding of unfair competition is highly likely. (3).
Based on its promotion and description on Guangdong Tianmao's website, it was planning full production and multiple business development. Were it to continue with its trademark infringement and unfair competition activities, it would not only become out of control, and would cause further confusion among the relevant public, resulting in irreparable harm for the reputation derived from the trademark. Moreover, once infringement is found, Guangdong Tianmao probably would be incapable of paying damages. (4). Guangdong Tianmao's current investment is restricted to office expenses and expenses for securing intellectual property rights. Since it has been formed only 1 or 2 years ago, has not created any value to its corporate names through business activities, the impact will be limited. 5. In ordinary cases, the injunction order will apply only to the relevant corporate names in business activities. But in this case, due to the obvious bad faith of Guangdong Tianmao, and due to the covert nature of the intellectual property infringement, and were it to continue using the accused name in business activities, it might be hard to detect accurately and timely. Therefore it is necessary for it to change its corporate name.
In sum, the court decreed on December 19 2017 that: (1). Guangdong Tianmao is hereby enjoined from using any word or indicia involving "Tianmao" in any business locales, or on the Internet, effective until a judgment is rendered; (2). Guangdong Tianmao is hereby enjoined from using any corporate name involving the word "Tianmao" in business activities, and is hereby ordered to record a change of corporate name to anything other than "Tianmao," effective until a judgment is rendered; and (3). Guangdong Tianmao is hereby enjoined from making any false advertisement, effective until a judgment is rendered.
[Judge's Comment]
This is the very first case of Hangzhou Intellectual Property Court since its establishment for an injunctive order. The court conducted an analysis based on distinctiveness and reputation of the proprietor's trademarks, the intention of the accused infringers, and the possibilities of irreparable harm the infringement may cause to the lawful rights of the proprietors. Eventually it decreed for injunctions against the infringing indicia. Moreover, the court, in consideration of the conspicuous bad faith of the accused infringers, and the covert nature of IP infringement, included in the injunctive relief an order for infringer to record a change of name, which is the first in the country. This order effectively eliminates the possibility for infringer to continue the infringing business, and to avoid further injuries to the proprietor, representing the timeliness and effectiveness of the judicial IP protection.