Model Litigation Cases
Involving Well-Known Trademark Recognition
Handled by Chang Tsi & Partners
Trademark Infringement through English
Since we presented reasonable arguments
Trade Name - Honeywell International Inc.
and sufficient evidence before the court, the
v. Wuxi Honeywell Precision Manufacture
court rendered a judgment upholding our
Co., Ltd
request for recognizing HONEYWELL as a
In August 2004, we represented Honeywell
well-known trademark. WHPM was also
International Inc. (HII) in a lawsuit against
ordered by the court to cease infringements
Wuxi Honeywell Precision Manufacture Co.,
and to make compensations to HII.
Ltd (WHPM). The latter used HONEYWELL
in its English trade name and on the wall of its
Trademark Infringement through Chinese
workshop, employee overalls and company
Trade Name - Honeywell International Inc.
brochures.
v. Shenyang Honeywell Radiator Co., Ltd.
After an in-depth investigation on WHPM
On June 29, 2005, on behalf of HII again, we
and a thorough research on HII’s rights, we
lodged a suit against Shenyang Honeywell
lodged a lawsuit against WHPM for its
Radiator Co., Ltd. (SHR) for its infringing use
infringement on HII’s Honeywell trademark
of Honeywell and “霍尼威尔” (Honeywell in
and
Chinese).
unfair
competition
Intermediate
People’s
at
SHR, which is a company located in
Province with well-prepared evidence. In
Northern China, predominantly used the
particular, in view of the reputation of the
wording “霍尼威尔 (Chinese transliteration of
HONEYWELL trademark in China and our
Honeywell)” as its Chinese trade name. SHR
evidence,
court
to
also used the expressions “Honeywell” and
as
a
“ 霍 尼 威 尔 ” in its company signboards,
well-known trademark in China in our bill of
workshops, working suits, name cards and
complaint.
other
recognize
HII’s
requested
of
City
Jiangsu
we
Court
Wuxi
the
HONEYWELL
company
signs.
Meanwhile,
the
trademarks were extensively used in the
SHR’s radiators, the radiators’ packages and
brochures.
Liaoning
Province
Shenyang
City
Intermediate People’s Court held that:
“ 霍 尼 韦 尔 (Honeywell in Chinese)” is a
well-known
trademark
in
China.
The
Defendant uses the signs in a predominant
way that is identical with the Plaintiff’s
trademark “Honeywell” and similar to the
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Plaintiff’s well-known trademark“ 霍 尼 韦 尔
(Honeywell in Chinese)” in its company
signboards, advertising banners in the office,
packages of the products, signed contracts
with other parties, products brochures and
work suits for the staff in the workshops.
its
Defendan’s act oft using “ 霍 尼 威 尔 (the
promoting its products through the Internet
Chinese transliteration of Honeywell)” as the
effectively.
trade
company
On Nov. 20, 2005, Liaoning Shenyang
and
Intermediate People’s Court rendered a
name
constitutes
to
register
unfair
the
competition,
the
Trademark
as
a
domain
name
or
Defendant shall bear the civil liabilities of
judgment not only finding that the defendant
ceasing
infringed upon the pharmaceutical company’s
infringement
and
compensating
damages.”
trademark rights, but also recognizing the
Subsequent to our success in recognizing
HII’s
house
mark
HONEYWELL
as
a
trademark of the pharmaceutical company as
a well-known trademark.
well-known trademark, this is the second time
This is the third time we helped our client
that we helped HII to make another important
establish
trademark 霍 尼 韦 尔
trademarks in judicial proceedings.
Chinese)
recognized
(HONEYWELL in
as
a
well-known
status
for
their
well-known
trademark in China. Both of the recognitions
will significantly improve HII’s influence in
Trademark
Infringement
through
China and facilitate its protection of IPR in the
Commodities and Trade Name- Kohler Co.
future.
v. Guangdong Chao’An Tos Ceramics Co.,
Ltd.
Entrusted by Kohler Co., our lawyers Simon
Trademark Infringement through Domain
Tsi and Grant Huang lodged a civil suit at
Name- Certain Pharmaceutical Company v.
Guangdong
Lihua Xue
Intermediate
Represented by Chang Tsi & Partners, a
pharmaceutical
company
lodged
a
suit
Province
People's
Chaozhou
Court
City
against
Guangdong Chao’An Tos Ceramics Co., Ltd.
(hereinafter referred to as "CATC") in April,
against Lihua Xue (an individual, hereinafter
2005
regarding
trademark
referred to as "defendant") for domain name
Through the hearing, Chaozhou Intermediate
dispute. The defendant registered the domain
Court rendered the judgment of first instance
name that is identical with the pharmaceutical
on December 22, 2005, recognizing Kohler
company’s trademark (hereinafter referred to
Co.'s
as the “Trademark”) in bad faith. The domain
characters" and "THE BOLD LOOK OF
name registered by the defendant prohibited
KOHLER"
the pharmaceutical company from registering
ordering the CATC to stop infringement
trademarks
as
"Kohler
well-known
infringement.
in
Chinese
trademarks,
immediately and compensating the Plaintiff
for economic loss of RMB 120,000.
This is the fourth lawsuit in which we
represented our clients in obtaining the
well-known status for their trademarks. It is
also the tenth judicial determination of
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well-known trademarks applied for by foreign
parties in China.
Trademark Infringement through
Commodities and Trade Name Under
the Authorization of an Overseas
Shadow Company - Kohler Co. v.
Jianjun Jin and Chunxia Yu
On January, 2006, representing Kohler Co.,
the owner of the worldwide well-known
trademarks KOHLER, KOHLER in Chinese
and THE BOLD LOOK OF KOHLER, we
lodged a lawsuit against Chinese residents
Jianjun Jin, principal of Wuhan City Qiaokou
District Longxin Construction Materials Shop
(hereinafter referred to as the Shop), and
Chunxia Yu, manager of the Shop.
The Shop, which was operated by the two
defendants, was found selling plumbing
products bearing the device of “THE BOLD
LOOK OF” which was printed on the products
and the packaging. The term “Kohler
Plumbing International Group Industry (Japan)
Co., Ltd. (KPIGI)” was also found on the
packaging. Moreover, the two defendants
used the mark of “THE BOLD LOOK OF” and
words of “Kohler International Group Industry
(Japan) Co., Ltd.” on business cards of its
sales staff and signboard of its operation
premises. They also used pictures copying
the original advertisement of the plaintiff on
the signboard of its operation premises.
These behaviors of the two defendants
infringed upon the plaintiff’s trademark right
and trade name right and constituted unfair
competition.
With respect to our claim regarding
infringement on trade name rights, the
defendants argued in the court open session
that the Shop was entrusted by KPIGI, which
was a legitimate company incorporated in
Hong Kong and was entitled to exercise its
right of name.
After the hearing, the court rendered a
judgment in favor of Kohler Co., ordering the
defendants to cease infringing upon Kohler
Co.’s trademark rights, trade name rights,
cease the unfair competition with Kohler Co.
and compensate Kohler Co.’s economic
losses.
An issue worth noting is that according to the
judgment, the Shop’s use of Kohler in its
name is considered an infringement on
Kohler Co.’s trade name rights by the court
despite the fact that the use has been
authorized by KPIGI. The reason is that
although the legality of registration of KPIGI’s
company name is governed by the laws of
Hong Kong, where KPIGI was incorporated,
KPIGI’s business operation in Mainland
China must comply with the laws of P.R.C.
Pursuant to relevant laws of P.R.C.. KPIGI,
with its company registration in Hong Kong,
must refrain from permitting others to use its
trade name, which contains the term “Kohler”,
in carrying out its business operations in
Mainland China. The trade name of Kohler
Co., who entered Mainland China in 1991, is
protected by the Paris Convention and
Chinese laws against any infringement within
the jurisdiction of Mainland China.
Domain Name Arbitration & LitigationFormula One Licensing B.V. v. a Beijing IT
company
FORMULA ONE LICENSING B.V. (FOL),
under the authorization of Federation
Internationale de I' Automobile (the organizer
of FIA Formula One World Championship and
the international organization responsible for
international automobile competitions), is in
charge of the registration, protection and
licensing of the trademarks "F1", "F1 &
Device", "Formula 1", "Formula One" &
"FORMULA 1 WORLD CHAMPIONSHIP &
Device" in English and its correspondent
foreign language marks (for instance,
"Formula One in Chinese Characters"), as
well as the promotion, organization and
management of the products/services
designated on the "F1" formative marks. The
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first F1 Championship was held on May 13,
1950 in the UK. Up to now, F1 Championship
is one of the three most influential
championships in the world, together with the
Olympic Games and FIFA World Cup.
On Apr 4th, 2001, a Beijing IT company.
(hereinafter referred to as "B Corporation")
registered a domain name F1.com.cn, which
is dominated by FOL's most famous
trademark F1, and upgraded the same to
f1.cn on Mar. 17, 2003. B Corporation
published/linked a great deal of F1
Championship
related
contents
and
information on/to the website under the
disputed domain names, which seriously
infringed upon FOL's exclusive rights to its
registered trademarks and affected the
ordinary operation of FOL's business.
On May 25th, 2005, entrusted by FOL, we
filed an arbitration complaint against the two
domain names with China International
Economic and Trade Arbitration Commission
(CIETAC) Domain Name Dispute Resolution
Center, claiming that the two domain names
should be transferred to FOL. CIETAC
sustained FOL's claim.
B Corporation was not satisfied with the said
Arbitration Award and lodged a civil suit to
Beijing No. 1 Intermediate People's Court on
July 15th, 2005. B Corporation was of the
view that FOL's filing a domain name
complaint with CIETAC had infringed on its
legitimate rights, and required FOL to stop
infringement. We, as the agent of FOL,
participated in the first instance proceeding.
The Court of first instance held an open
session and rendered judgment overruling
the Plaintiff B Corporation's claim.
On January 24th, 2006, B Corporation filed
the Civil Appeal Petition with the original
Court against the judgment of first instance.
So far, the second instance of the case has
not been concluded yet.
This dispute has gone through nearly all the
appellate procedures, namely arbitration, first
instance and second instance at court. We
have participated on behalf of FOL in all the
procedures and succeeded in the first two
proceedings.
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