Key words: exclusive license, trademark right infringement, compensation for loss
Case description: On October 15, 1982, FILA Wool Spinning Brothers Company (Italy), not an involved party in the case, was approved by Trademark Office under the State Administration for Industry and Commerce to get No.163332 trademark “
” and No.163333 trademark “
”. The trademarks were approved for use on “clothing” of the 53rd class. Subsequently, they were approved for use on commodity of the 25th class, including “clothing, shoes, caps, gloves, scarfs, socks and stocking”. The No.163332 trademark and No.163333 trademark involved in the case were approved for transfer to a party (IP company limited) not involved in the case on March 7, 2008. On June 10, 2016, IP company limited signed trademark authorization permit and notarized it. It was confirmed that the two trademarks above were authorized to FILA Sports Co., Ltd. (hereinafter referred to as FILA company) in 2008 and both trademarks would be used exclusively in business on mainland of China. In addition, FILA company has the right to take legal action and initiate legal proceedings to a behavior of infringement on the exclusive right to use trademark. On March 20, 2019, Trademark Office under China National Intellectual Property Administration issued [S-B-C-Z (2019) No.87] Reply for No.163332 trademark and No.163333 trademark involved in the case. It is specified that “famous trademark protection shall be given to this trademark in the infringement cases of other trademarks”. FILA company found that Haikou Meilan Rock Leisure Shoe Store (hereinafter referred to as Rock Shoe Store) sold shoes with trademark that was the same as the registered trademark “
” without the permission of FILA company and trademark registrant. After FILA company purchased the product in Rock Shoe Store, it sue the store to the court and requested Rock Shoe Store to immediately stop selling the products with No.163333 registered trademark “
” and compensate 50,000 yuan involving economic loss of FILA company, goodwill loss of FILA company and reasonable expenses paid for safeguarding right.
Result of judgment:
In the judgment of the court, FILA company is the exclusive holder of the right of using No.163333 registered trademark “
”. Rock Shoe Store sold the shoes with the same trademark as the registered trademark without the permission of FILA company and trademark registrant. Consumers can be easily confused and wrongly think the products are manufactured by FILA company. It is an act of trademark infringement. Rock Shoe Store shall undertake responsibility of stopping trademark infringement and compensating loss of FILA company. Therefore, it is judged that: 1. Rock Shoe Store immediately stops selling the products with No.163333 registered trademark “
” of FILA company from the first day of the judgment taking effect. 2. Rock Shoe Store compensates 10,000 yuan involving economic loss of FILA company, goodwill loss of FILA company and reasonable expenses paid for safeguarding right within seven days from the first day of the judgment taking effect. 3. Other claims of FILA company are rejected.
No.163333 registered trademark “
” involved in the case is owned by FILA Wool Spinning Brothers Company (Italy). Trademark Office under China National Intellectual Property Administration affirmed that “famous trademark protection shall be given to this trademark in the infringement cases of other trademarks”. FILA company was authorized to get exclusive use and safeguard right for the registered trademark above. The court ordered the individual business that infringed the registered trademark right above to undertake the compensation responsibility. The individual business should build the awareness of legal operation. At the same time, a “warning board” was set up to others and noticed legal consequence caused by the breach of law. In this kind of cases, the right holder could not offer relevant evidences that the infringer gets benefit from the infringement, the evidences of loss caused by the infringement and amount of trademark use permission fee, but the people’s court can determine the amount of compensation considering the nature of infringement, severity of fault, time of infringement, goodwill of right holder and the expenses paid by the right holder for safeguarding the right. This protects legal interest of the right holder effectively.