Case Brief

Shenzhen Fengya Trading Co., Ltd. (hereinafter referred to as "Shenzhen Fengya Company") used trademarks such as "The History of Whoo一后", "The History of Whoo后", "Whoo一后", and "Whoo后" on its official website, Sina Weibo, etc. to promote the related goods and services in classes 20, 24, 26, 44, and 45, and complained to LG Household & Health Care for the discomfort caused by the relevant pictures attached to the website to the visitors.

Upon enquiry, LG Household & Health Care CO., LTD. (hereinafter referred to as "LG Household & Health Care") found that since May 2016, Shenzhen Fengya Company has applied for trademarks such as "Whoo后", "Whoo一后", and "" on goods and services in classes 20, 24, 26, 44, and 45, and the trademarks were approved for registration.

In this regard, LG Household & Health Care, based on the analysis and suggestions of Unitalen attorneys, adopted a dual approach of civil litigation and invalidation procedures to achieve prohibition of use or registration of relevant trademarks applied for use by Shenzhen Fengya Company.

In the civil litigation case, LG Household & Health Care asserted that the relevant sued acts of Shenzhen Fengya Company constituted infringement of its registered well-known trademarks. The case was first tried by Shenzhen Intermediate People's Court, Guangdong Province (hereinafter referred to as the "Shenzhen Intermediate People's Court"), which supported the relevant claims of LG Household & Health Care, and determined that before Shenzhen Fengya Company applied for the registration of the sued trademarks, the trademarks "" No. 4819575 and " " No. 9327294 had reached a well-known status on cosmetics products in class 3. Moreover, this well-known status continued until May 2020, when LG Household & Health Care took evidence of the alleged infringement of Shenzhen Fengya Company, and continued until LG Household & Health Care filed a lawsuit.

The first instance judgment of the Shenzhen Intermediate People's Court: Shenzhen Fengya Company shall immediately stop acts of infringing on the exclusive right to use the registered trademarks " " No. 4819575 and " " No. 9327294 enjoyed by LG Household & Health Care. Within ten days from the effective date of the first instance judgment, Shenzhen Fengya Company shall publish a statement on its infringement behavior in the non middle section of Nanfang Metropolis Daily and Yangcheng Evening News for three consecutive days, and publish a statement in a prominent position on its official website and official Weibo homepage for ten consecutive days to eliminate the impact. Shenzhen Fengya Company shall compensate LG Household & Health Care for economic losses and reasonable rights protection expenses of 450,000 yuan within ten days from the effective date of the first instance judgment.

Shenzhen Fengya Company refused to accept the above judgment of first instance and filed an appeal to the High People's Court of Guangdong Province (hereinafter referred to as "Guangdong High People's Court").

Basic information of the second instance and final determination

In the appeal, Shenzhen Fengya Company proposes four main reasons: "" No. 4819575 and "" No. 9327294 enjoyed by LG Household & Health Care do not constitute well-known trademarks. The acts of Shenzhen Fengya Company do not constitute infringement. Even if it is determined that Shenzhen Fengya Company constitutes an infringement, the amount of compensation determined in the first instance judgment is obviously too high. The determination of the first instance judgment that the acts of Shenzhen Fengya Company detracted from market reputation of LG Household & Health Care is wrong.

Regarding the issue of whether the trademarks involved should be recognized as well-known trademarks, the court of second instance holds that the evidence in the case can confirm that, as of May 3, 2016, when Shenzhen Fengya Company applied for the registration of the sued trademark involved on goods in class 20, the right trademark of LG Household & Health Care had a high reputation among the relevant public. With the evidence, it was found and determined that, the right trademarks involved were already well known by the relevant public, had high popularity, market influence, good market reputation, and reached a well-known status on cosmetics products in class 3 before May 3, 2016, and should be recognized as well-known trademarks. The reasons for Shenzhen Fengya Company's appeal asserting that the trademarks involved do not constitute well-known trademarks are not established.

Regarding the issue of whether the alleged infringement constitutes an infringement, the court of second instance holds that the alleged infringement obviously may undermine the stable correspondence formed between the well-known trademarks involved and the relevant cosmetics, weaken the distinctiveness of the well-known trademarks involved, also reduce the image of the trademarks involved in the relevant public eyes, weaken the identity of cosmetics consumers with the trademarks involved, derogate from the market reputation of the well-known trademarks involved, and damage the legitimate rights and interests of the well-known trademark registrant involved, which falls within the circumstance "mislead the public and damage the interests of the registrant of the well-known trademark" as stipulated in Article 13.3 of the Trademark Law, and thus the above act constitutes infringement.

Regarding the issue of whether the amount of compensation determined in the first instance is too high, the court of second instance holds that even if Shenzhen Fengya Company does not make a profit in actual operation, the damage it caused to the well-known trademarks involved of the LG Household & Health Care is objective, and the relevant costs for restoring the reduced distinctiveness of the well-known trademarks involved and the market reputation of the depreciated well-known trademarks involved should be borne by Shenzhen Fengya Company. The court of second instance holds that the amount of compensation determined by the court of first instance is not improper.

Regarding the issue of whether Shenzhen Fengya Company should bear the legal responsibility to eliminate the impact, the court of second instance holds that Shenzhen Fengya Company's unauthorized use of the marks alleged for infringement on the relevant goods and services in classes 20, 24, 26, 44, and 45 has weakened the distinctiveness of the well-known trademarks involved and detracted from the market reputation of the well-known trademarks involved, and the adverse impact should be publicly eliminated. LG Household & Health Care's claim for Shenzhen Fengya Company to publish a statement in newspaper and on its official website and Weibo to eliminate the impact is well supported.

Typical significance

This case is a typical case where well-known trademark holder cracks down on infringement acts of diluting and defaming its well-known trademark and succeeds in safeguarding rights.

This case has won both the first and second instances, and in the trademark invalidation process, the relevant trademarks have also been successfully declared invalid. With professional level and rich experience in the field of intellectual property, Unitalen attorneys skillfully apply the civil and administrative cross procedure to achieve the prohibition of use and registration of relevant trademarks, effectively safeguarding intellectual property of LG Household & Health Care. In this case, " " No. 4819575 and " " No. 9327294 enjoyed by LG Household & Health Care are successfully identified as well-known trademarks, which will definitely lay a solid foundation for the possible follow-up rights protection of LG Household & Health Care.