Recently, Shanghai Intellectual Property Court concluded an appeal of dispute over commercial disparagement between appellant Romax Ceramics (Shanghai) Co., Ltd. (hereinafter referred to as “Romax”) and appellees Shanghai Ronglian Ceramics Co., Ltd. and Shanghai Ronglian Building Ceramics Co., Ltd. (hereinafter referred to as the “two Ronglian companies”) dismissed the appeal and upheld the original judgment. In addition, Shanghai Intellectual Property Court expressed the hope that the two parties should operate according to law, compete fairly, and win the market with integrity thereafter with a “judge postscript” for the first time. President Chen Yajuan served as the presiding judge in the trial. In this case, the parties are operators in the ceramic industry. A customer of the two Ronglian companies complained to the program Gossip of Shanghai New Entertainment Channel due to the quality of tile products. After the program was broadcast, Romax contacted the program maker and made statements about the two Ronglian companies that “fake Roman tiles”, “consumers are deceived”, “copycat well-known brands”, “cooperate with the industrial and commercial bureau in cracking down on counterfeit goods” in a new episode of the program. The two Ronglian companies believed that the statements of Romax in the program were commercial disparagement, thus bringing an action to the court, requesting for economic compensation and eliminating the ill effects. Through trial, the court of first instance held Romax’s behavior constituted commercial disparagement and ordered Romax to compensate the two Ronglian companies RMB 60,000 for economic loss and reasonable expenses and publish a statement on Xinmin Evening News to eliminate the effects. Romax refused to accept the first-instance judgment and appealed to Shanghai Intellectual Property Court. After hearing the case, Shanghai Intellectual Property Court held that in this case Roman Tile is a well-known tile brand in Taiwan and Romax claimed that it’s the sole heir and owner of the brand, while the two Ronglian companies directly used the sign “罗马磁砖新纪元” in its production and sales. The court held through trial that the existing evidence submitted by Romax could not prove its trademark right on Roma Tile in Chinese mainland or its unique correspondence with Roman Tile. Romax actively took part in the production of the program involved and made statements “consumers are deceived”, “copycat well-known brands”, etc. against the two Ronglian companies, which easily made the public falsely believe that Romax is the lawful owner of Roman Tile or the two Ronglian companies committed copyright infringement or unfair competition against Romax, thus damaging the goods reputation and commercial reputation of the two Ronglian companies and constituting unfair competition. Hence the court dismissed the appeal and affirmed the original judgment.

In the trial of this case, the collegiate bench found that although the case was a commercial disparagement dispute, what was hidden behind it was the long-standing controversy over the use of the brand Roman Tile by Romax and the two Ronglian companies. Both Romax and the two Ronglian companies were also aware that foreign names of places known to the public may not be used as trademarks in Chinese mainland. And both parties have also registered their own trademarks in Chinese mainland. But instead of using them in normative manner in commercial activities, they operate in the name of the owner of Roman Title. In order to truly quell the dispute and close the case, and further regulate the use of trademarks by the two parties in business activities to avoid further confusion and misunderstanding of the relevant public, the collegial panel made clear that Romax may not directly use the registered trademark in Taiwan for production and sales activities in Chinese mainland, and the two Ronglian companies may not use the registered trademark “ROMERA” in correspondence with “罗马磁砖 新纪元”, and warn both parties to abide by competition principles and operate faithfully in the form of a “judge postscript.” In this case, Shanghai Intellectual Property Court for the first time since its establishment reviewed and interpreted the dispute involved in the form of a “judge postscript”, which has enhanced the persuasiveness of the judgment document, highlighted the education and guidance function of intellectual property trials, and produced good social effects.