Recently, the Shanghai Intellectual Property Court concluded a trademark infringement lawsuit between Furuta Food Trading (Shanghai) Co., Ltd. ("Furuta Shanghai") and Ohisi International Trading (Shanghai) Co., Ltd. ("Ohisi"). The court held that the alleged infringing products s did not infringe upon Furuta Shanghai's trademark rights.
Furuta in Chinese
Furuta Japan has registered the "Furuta" mark in Japan and China, and Furuta Shanghai has registered the corresponding "Furuta in Chinese" mark in China. Neither of them has registered the "Furuta in Chinese" trademark in Japan, the country where the accused infringing products were exported. Both the accused infringing products and products bearing the "Furuta in Chinese" mark imported and sold by Furuda Shanghai originated from Furuta Japan. Ohisi used the "Furuda in Chinese" mark on Chinese labels of its imported products. Furuda Shanghai sued Ohisi for trademark infringement based on its "Furuta in Chinese" mark.
The court found that, first, the accused infringing products are genuine, have the same quality as the "Furuta in Chinese" products imported and sold by Furuta Shanghai, and were both legally sourced from Furuta Japan. Furuta Japan is the controlling shareholder of Furuta Shanghai and there was a close relationship between them. Second, although the trademark owner of the "Furuta in Chinese" mark is Furuta Shanghai, after long-term use, the "Furuta in Chinese" trademark and the "Furuta" mark of Furuta Japan have formed a sole correspondence. Furuta Japan also confirmed this corresponding relationship. Thus the identification function of "Furuta in Chinese" in the case is unique and one-directional relationship between the goods and the manufacturer Furuta Japan. Ohisi marked "Furuta in Chinese" on the accused infringing products, which can be used to identify the sole relationship between the "Furuta in Chinese" mark and Furuta Japan and would not cause confusion among the relevant public. Moreover, the quality of accused infringing products were no different than genuine products, which would not cause damage to the quality and goodwill carried by Furuta Japan's marks and would not damage consumer's interests. Therefore, the accused infringing acts did not constitute trademark infringement.
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