01

Case details

On July 29, the people's Court of Shanghai Pudong New Area ruled a punitive compensation case involving the trademark "Huayi".

Recently, Huayi Brothers Media Co., Ltd. (hereinafter referred to as Huayi Brothers) sued the times Huayi movie city (hereinafter referred to as times Huayi movie city) and Shanghai Hantao Information Consulting Co., Ltd. (hereinafter referred to as Hantao company) located in Pingshan District, Benxi City, Liaoning Province to the people's Court of Shanghai Pudong New Area (hereinafter referred to as Shanghai Pudong court) on the grounds of trademark infringement and unfair competition due to the unauthorized use of its legally owned trademark by others.

The parties involved in the case are mainly Huayi Brothers and times Huayi studios. Among them, time Huayi cinema was established in December 2017 and is an individual industrial and commercial household. Huayi Brothers was founded in 2004. Since that year, Huayi Brothers has applied for registration of trademarks such as "Huayi Brothers" and "Huayi" in the 41st category of film production, film screening and other services.

02

Judgment of first instance: malicious infringement, with serious circumstances

In June 2019, Huayi Brothers found that time Huayi cinema not only used the logo of "Huayi cinema" on the shop signs, interior decoration and posters of the physical stores, but also used the "Benxi Huayi international cinema" similar to the registered trademark of Huayi Brothers for publicity and operation on the ticketing platforms such as public reviews and ticket shopping. In August of the same year, Huayi Brothers sent a lawyer's letter to time Huayi cinema, demanding that the cinema immediately stop infringing its trademark exclusive right and unfair competition, change the enterprise name, make public statements, and compensate for economic losses of 4 million yuan.

However, time Huayi studios did not respond after receiving the lawyer's letter. In January 2020, Huayi Brothers filed a lawsuit against Shanghai Hantao Information Consulting Co., Ltd., the operator of the times Huayi cinema and the public comment platform, to the people's Court of Pudong New Area, Shanghai. The litigation request was basically consistent with the requirements stated in the above lawyer's letter.

The time Huayi film city used the registered trademark of Huayi Brothers as the name of the enterprise without proper reasons, which has obvious subjective malicious intention of clinging to its goodwill, and has objectively misled the public. Therefore, it is determined that its behavior constitutes unfair competition.

After the trial, the Shanghai Pudong court made a first instance judgment. The defendant's behavior met the applicable requirements of punitive damages, so it decided that the defendant times Huayi cinema immediately stopped trademark infringement and unfair competition, changed the name of the enterprise, and compensated the plaintiff for economic losses and reasonable expenses for rights protection, totaling 935000 yuan.

After the judgment was announced in the first instance, time Huayi cinema filed an appeal to the Shanghai Intellectual Property Court, but it was not supported.

03

Legal basis

Unauthorized use of a registered trademark legally owned by others and having certain influence has obvious intention of attachment, which is easy to cause confusion and serious circumstances. The judgment of this case helps to curb the behavior of "clinging to famous brands". While safeguarding the legitimate rights and interests of trademark owners, it actively explores the application of punitive compensation, and provides a reference sample for punitive compensation for intellectual property infringement.

The following are the relevant provisions and regulations of the Trademark Law:

Article 56 the exclusive right to use a registered trademark shall be limited to the trademark approved for registration and the goods approved for use.

Article 57 Any of the following acts shall constitute an infringement of the exclusive right to use a registered trademark:

（1） Using the same trademark as its registered trademark on the same commodity without the permission of the trademark registrant;

（2） Without the permission of the trademark registrant, using a trademark similar to its registered trademark on the same kind of goods, or using a trademark identical to or similar to its registered trademark on similar goods, which is likely to cause confusion;

（3） Selling goods infringing upon the exclusive right to use a registered trademark;

（4） Forging or manufacturing without authorization the registered trademark logo of another person or selling the forged or manufactured registered trademark logo;

（5） Without the consent of the trademark registrant, changing its registered trademark and putting the goods with the changed trademark on the market again;

（6） Intentionally providing convenience for the infringement of the exclusive right of another person's trademark and helping others to carry out the infringement of the exclusive right of trademark;

（7） Causing other damages to the exclusive right of another person to use a registered trademark.

Article 58 Where a registered trademark or an unregistered well-known trademark of another person is used as a trade name in an enterprise name to mislead the public and constitute an act of unfair competition, it shall be dealt with in accordance with the Anti Unfair Competition Law of the people's Republic of China.

Trademark infringement refers to the actor's use of a trademark identical or similar to its registered trademark on the same or similar goods without the permission of the trademark owner, or other acts that interfere with or hinder the trademark owner from using its registered trademark and damage the legitimate rights and interests of the trademark owner. The infringer usually has to bear the responsibility to stop the infringement.

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