Mona Lisa Group Co., Ltd. vs Shanghai Xiayu Industrial Co., Ltd., et al .for Dispute over the Infringement of Trademark Ownership

Basic facts

Mona Lisa Group Co., Ltd. was verified as the registrant of the “M+ 蒙娜丽莎 + MONALISA” trademark combined with graphic and words, “head portrait of Mona Lisa” graphic mark, “Mona Lisa” word mark for Class 19 goods. The trademark with combined graphics and word was once identified as China’s well-known trademark by the Trademark Office of the State Administration for Industry and Commerce while all of the three aforesaid ones were also identified as well-known trademarks on a case-by-case basis by Foshan Intermediate People’s Court and Guangdong High People's Court. In addition, the Mona Lisa floor tile product was awarded the title of "Famous Brand of Guangdong Province" for many times, and its advertising costs exceeded RMB 96 million from 2010 to 2013. Then recently Mona Lisa Group Co., Ltd bought the “Mona Lisa joint mixture” produced and sold by Xiayu Company from the Taobao shop of Mincai Company. The packages of the accused infringing goods were printed with identical or similar logos of the aforesaid three trademarks. Based on these findings, Mona Lisa Group Co., Ltd requested the court to recognize the three registered trademarks as well-known trademarks, stop the infringement of Xiayu Company and Mincai Company, eliminate the adverse effects by publishing apology in the newspaper and jointly compensate economic loss RMB 500,000 and reasonable cost totaling RMB 65,000.

 

Results of judgment

Shanghai Intellectual Property Court held after the trial that the tile and tile joint mixture were main material and auxiliary material used as combination in the decoration. As the two were closely related and overlapped in the place of use, marketing channel, target buyers and other aspects, they should be recognized as similar goods, and there was no necessity to recognize the well-known trademarks in this case. Xiayu Company’s act was the trademark infringement on similar goods by using the identical or similar trademarks which would easily lead to misunderstanding while Mincai Company was selling the goods that infringed the exclusive right to use registered trademarks. Based on these grounds, the court rendered the ruling that Xiayu Company and Mincai Company should cease the infringement acts while Xiayu Company should eliminate the adverse effects by publishing apology in the newspaper. In addition, Xiayu Company should compensate economic losses including reasonable expense RMB 180,000 and Mincai Company should be jointly and severally liable for the compensation RMB 5,000.

 

      Typical significance

The accused infringing goods in this case were recognized as the associated goods to the ones in respect of which the use of the registered trademark had been approved. The determination of whether the two goods were similar directly influenced the necessity to apply the well-known trademark cognizance as the fact required to be recognized in the case handling. This case demonstrated how to prudently grasp of the principle of “case-by-case confirmation as required”. Besides, though the accused infringing goods were not high-valued, the determined compensation amount should manifest the crackdown force against the source of infringing goods given that Xiayu Company was the manufacturer.

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