Basic facts
Burberry Limited is the owner of “BURBERRY” trademark registered for Class 25 of clothing. On March 20, 2013, the public security organ solved a criminal case that Chen Kai and Lu Qiumin sold counterfeit goods of the aforesaid the registered trademark and requested the Burberry Limited to assist identifying the counterfeit goods involved the next day. On August 24, 2012, the two Defendants were sentenced to 2 years of imprisonment (probation) and pay a fine. On August 15, 2014, Burberry Limited filed a lawsuit for the case and requested the court to rule that the two defendants should compensate the economic losses and reasonable cost totaling RMB 1 Million. Chen Kai and Lu Qiumin argued that Burberry Limited knew the infringement act on March 20, 2012 but sued in August 2014, so the claim was beyond the limitation period.
Results of judgment
The People’s Court of Yangpu District held after the first trial that since the limitation period of the case should start from the day when the criminal judgment took effect, the claim of Burberry Limited was still within the limitation period. Hence Chen Kai and Lu Qiumin infringed the exclusive right to use trademark of Burberry Limited and should be jointly and severally liable to compensate the economic loss RMB 150,000 and reasonable cost RMB 15,000 to the Plaintiff Burberry Limited. Lu Qiumin refused to accept the ruling in the first trial and instituted an appeal. Shanghai Intellectual Property Court held after the second trial that as the criminal proceedings related to this case effectuated the limitation period suspension, the claim of the Plaintiff in the first trial was still within the limitation period. The court rejected the appeal and affirmed the verdict of the first trial.
Typical significance
This case was about the identification of reasons for suspending the limitation period. The effective judgment made it clear the legal significance on the limitation period of the fact that the holder knew others’ infringement act had entered into criminal prosecution process and assisted in the investigation upon the request of the investigation department. The court held after the trial that the aforesaid fact was of dual significance on the right holder. Firstly, it was the legal consequence arising from the starting of the limitation period since the holder had already known the infringement of its right. Secondly, it was the legal consequence arising from the suspension of limitation period as the holder had reason to believe that its civil rights could be protected by the criminal investigation while the indicted act constituted infringement and the infringement result depended on the determination of the effective criminal judgment. Such determination defined the reason for the suspension and the legal basis of the limitation period, safeguarding the owner’s legal rights with better approach.
