[Case Number]
First instance: The Primary People’s Court of Yangpu District of Shanghai Municipality (2019) Hu 0110 Min Chu No. 7610
Second instance: Shanghai Intellectual Property Court (2020) Hu 73 Min Zhong No. 333
[Basic Facts]
The plaintiffs S* S.A., F* International S.p.A and F* Trading (Shanghai) Co., Ltd. are the right holders of the “Kinder Joy series trademarks”. They claimed that the “Qiaoqu Egg” and “Qi Q Egg” products sold by Chaozhou Chaoan *fa Food Products Co., Ltd. (hereinafter referred to as “*fa Food”) and Shanghai L* Trading Co., Ltd. (hereinafter referred to as “L* Trading”) and its branch used trademarks similar to the proprietary trademarks, which constituted trademark infringement. The plaintiffs also claimed that the packaging and trade dress of the allegedly infringing products were similar to those of their products, which constituted unfair competition. Therefore, the three plaintiffs filed a lawsuit with the court of first instance, requesting that the three defendants be ordered to cease unfair competition and jointly and severally compensate the plaintiffs RMB 500,000, and that *fa Food be ordered to eliminate the adverse impact.
[Judgment]
The court of first instance held the view that the claims made by the three plaintiffs in this case for the production of the alleged products by *fa Food had already been made in the case they lodged in Qingdao earlier, and that the plaintiffs stated in this case that they only made claims for the infringement behaviors in Shanghai, so this case should be considered a multiplicity of actions. The court also held the view that the sales activities of L* Trading and its branch should be determined based on the basic facts of whether *fa Food constituted infringement in the Qingdao case. Moreover, the three plaintiffs insisted in this case that *fa Food, L* Trading and its branch should bear joint and several liability. To avoid repeated behavior evaluation and overlapping of liability resulting from currently ongoing proceedings, the court suggested that the three plaintiffs wait until the judgment of the Qingdao case comes into effect before making further claims. Therefore, the court ruled to dismiss the lawsuit. The three plaintiffs refused to accept such decision and appealed.
In the second instance, Shanghai Intellectual Property court entrusted the WIPO Arbitration and Mediation Shanghai Service to conduct mediation. After several rounds of communication, a package mediation was finally achieved for both this case and the case with Qingdao Intermediate People’s Court.
[Significance]
This is a typical case entrusted by Shanghai Intellectual Property Court to the WIPO Arbitration and Mediation Shanghai Service for mediation. The Shanghai Service appointed expert mediators to conduct mediation and actively communicated with the judge in charge on the progress of mediation. Learning that there was an ongoing dispute between the parties, the mediators learned more details about the related case and listened to opinions of all parties. To effectively protect the legitimate rights and interests of the parties, they organized mediation for all parties many times and ultimately facilitated the parties to reach a package mediation, helping to avoid lengthy litigation, save judicial resources, reduce the burden on the parties, and effectively prevent “idle process”. After the case was closed, all parties concerned sent letters of thanks to the court for “closing the case with disputes truly settled”.
