[Case Number]

First instance: Shanghai Intellectual Property Court (2021) Hu 73 Min Chu No. 551

Second instance: Shanghai High People’s Court (2023) Hu Min Zhong No. 451

[Basic Facts]

T* (Shanghai) Co., Ltd. (hereinafter referred to as “T*”) has registered the trademarks “” (No. 7792673), “” (No. 13690430), “” (No. 13690434), “” (No. 8008888), “” (No. 13690442), and “” (No. G1199678), which have been approved for products such as electric vehicles, electric transportation vehicles of Class 12. The plaintiff believed that the series of trademarks of T* were well-known trademarks. The defendants Z* Food Co., Ltd. (hereinafter referred to as “Z*”), Guangdong Z* Food Co., Ltd (hereinafter referred to as “Guangdong Z*”) used, without permission, marks such as , , 特斯拉, TESLA SODA, , , , , c ,and , which are identical or highly similar to the plaintiff’s trademarks, on the products they produced and sold and their packaging, including “TESLA” SODA, “Tesla” beer, and “Tesla” puree wine, and in their publicity activities. Such acts were extremely likely to mislead the public, thus constituting trademark infringement. The plaintiff also claimed that Z* and Guangdong Z* engaged in unfair competition by false advertising. The plaintiff filed a lawsuit requesting the court to order the three defendants to cease their infringement and unfair competition, eliminate the adverse impact, and compensate the plaintiff RMB 5 million including economic losses and reasonable expense, and the defendant Tang* Network Technology (Shanghai) Co., Ltd. (hereinafter referred to as “Tang*”) to compensate the plaintiff RMB 300,000 of economic losses. 

[Judgment]

Shanghai Intellectual Property Court held that the trademarks concerned can be recognized as well-known trademarks according to the case evidence. The defendants Z* and Guangdong Z* copied and imitated the plaintiff’s registered well-known trademarks on different or dissimilar products, and improperly utilized the market reputation of the plaintiff’s well-known trademarks to mislead the public. Such behaviors harmed the interests of the right holders of the well-known trademarks, and infringed the plaintiff’s rights to the trademarks. The defendants Z* and Guangdong Z* used misleading contents in publicity with the intent of free riding the plaintiff’s credit standing and product reputation to boost their own competitive advantages, which constituted false advertising. Tang*, an online platform operator, had verified the infringing information before it was released, and has deleted the relevant infringing information on the day it received the responding materials, so it did not constitute contributory infringement. In conclusion, Shanghai Intellectual Property Court ruled that the defendants Z* and Guangdong Z* should cease their infringement and unfair competition, eliminate the adverse impact, and compensate the plaintiff T* RMB 5 million including economic losses and reasonable expense. Z* and Guangdong Z* refused to accept the first-instance judgment and appealed. The court of second instance dismissed the appeal and affirmed the original statement. 

[Significance]

The recognition of well-known trademarks should follow the principle of “recognition as needed”, and various factors should be taken into comprehensive account in the recognition, including the market share of the products using the trademarks, the duration of the use, the scope of publicity activities, historical records of the protection for such trademarks as well-known ones, and the market reputation of such trademarks. Any party, who is aware of the popularity and reputation of the proprietary trademarks, but still applies for or accepts transfer in batches of trademarks similar to the proprietary trademarks concerned and use them to conceal the trademark infringement it has committed, will be considered committing trademark infringement and should stop using the registered trademarks. This case involves the world-renowned electric vehicle brand “Tesla” and is the first time that the Tesla series of trademarks have been recognized to be well-known in China. The judgment in this case recognized the Tesla series of trademarks as well-known trademarks, which provided cross-class protection for the trademarks. It gave negative feedback on the alleged trademark infringement and unfair competition, and determined the amount of compensation in line with the maximum limit of statutory compensation. By doing so, it effectively protected the legitimate rights and interests of the right holders of the trademarks. This case is of certain reference significance for the adjudication of similar ones.