The Beijing Xicheng District Court recently concluded a trademark infringement lawsuit between Victorinox AG ("Victorinox"), Beijing Weishi Elite Trading Co., Ltd. ("Elite"), and Shanghai Baoshun Trading Co., Ltd. ("Baoshun"). The court ordered Elite and Baosun to immediately cease trademark infringements and compensate Victorinox economic damages of RMB2.9 million (USD407,355) and reasonable expenses of RMB100,000 (USD14,046). Baoshun appealed the first instance decision but the Beijing IP Court rejected the appeal request.
The alleged infringements in this case were: 1. The alleged
infringing store sells bags and uses "victoriacross
flagship" in the store name and uses "
" pattern on its webpage; 2. "Weishi
Cross in Chinese" was used in the name of each product; 3. The
home page of each product introduction picture uses a combination
of "VICTORIACROSS" and 
"; 4. "" was used alone in many places on the
products bought during notarized purchase, and
"VICTORIACROSS" and "" were used in combination on packaging
and tags. The allegedly infringing products were backpacks,
handbags, suitcases, etc., which fell into the goods approved for
use under Victorinox's "VICTORINOX" mark with reg.
no. G763828, the "
" mark with reg. no. 3491225, and the
"Victorinox" mark with reg. no. 8563347. Therefore, the
alleged infringement fell within the scope of protection of
Victorinox's trademarks, which constituted trademark
infringement.
The court found that the production and use of Elite and Baoshun
lacked a legal basis. Moreover, the following factors were
considered: First, Elite's "Weishi Cross in Chinese"
mark with reg. no. 6954073 was determined by the China Supreme
Court to fall under Article 13, Paragraph 2 of the 2001
Trademark Law, which "reproduces, imitates or
translates others well-known mark that are not registered in China
are likely to cause confusion," and invalidated. Therefore,
Elite's copying, imitating, and translating others' prior
well-known marks were done with bad faith intentions. Second, the
alleged infringing stores and products used the "
" logo that was similar to
Victorinox's registered marks. Compared with "
," the latter has a higher significance.
The composition elements, method, and overall appearances were all
very similar. Elite and Baoshun did not provide evidence to prove
that their use had a legal basis for rights. Third, in the (2018)
SPC Administrative Judgment No. 64 issued by the China Supreme
Court on May 31, 2018, it was determined that prior to the
registration date of the "VICTORIACROSS" mark with reg.
no. 349122, Victorinox's prior marks with reg. nos. G763828 and
3491225 were widely used in class 18's goods for handbags,
travel bags, and other goods, which could establish a certain fame
in China. Therefore, as a product operator in the same industry, it
was impossible for Elite to be unaware of Victorinox's brand
reputation, but it still used the "VICTORIACROSS" and
"Weishi Cross in Chinese" in combination with the "
" logo, which was very
similar to the use of Victorinox. Its intention to actively seek to
confuse the results was obvious. In summary, it can be determined
that the subjective bad faith of Elite and Baoshun was obvious, and
that their acts have infringed Victorinox's trademark right,
and they should bear the legal responsibility to stop the
infringements.
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