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September 2012
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Model Litigation Cases Involving Well-Known Trademark Recognition

Trademark Infringement through English Trade Name - Honeywell International Inc. v. Wuxi Honeywell Precision Manufacture Co., Ltd

In August 2004, we represented Honeywell International Inc. (HII) in a lawsuit against Wuxi Honeywell Precision Manufacture Co., Ltd (WHPM). The latter used HONEYWELL in its English trade name and on the wall of its workshop, employee overalls and company brochures.

After an in-depth investigation on WHPM and a thorough research on HII's rights, we lodged a lawsuit against WHPM for its infringement on HII's Honeywell trademark and unfair competition at Wuxi City Intermediate People's Court of Jiangsu Province with well-prepared evidence. In particular, in view of the reputation of the HONEYWELL trademark in China and our evidence, we requested the court to recognize HII's HONEYWELL as a well-known trademark in China in our bill of complaint.

Since we presented reasonable arguments and sufficient evidence before the court, the court rendered a judgment upholding our request for recognizing HONEYWELL as a well-known trademark. WHPM was also ordered by the court to cease infringements and to make compensations to HII.

Trademark Infringement through Chinese Trade Name - Honeywell International Inc. v. Shenyang Honeywell Radiator Co., Ltd.

On June 29, 2005, on behalf of HII again, we lodged a suit against Shenyang Honeywell Radiator Co., Ltd. (SHR) for its infringing use of Honeywell and "霍尼威尔" (Honeywell in Chinese).

SHR, which is a company located in Northern China, predominantly used the wording "霍尼威尔 (Chinese transliteration of Honeywell)" as its Chinese trade name. SHR also used the expressions "Honeywell" and "霍尼威尔" in its company signboards, workshops, working suits, name cards and other 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 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. Defendan's act oft using "霍尼威尔(the Chinese transliteration of Honeywell)" as the trade name to register the company constitutes unfair competition, and the Defendant shall bear the civil liabilities of ceasing infringement and compensating damages."

Subsequent to our success in recognizing HII's house mark HONEYWELL as a well-known trademark, this is the second time that we helped HII to make another important trademark霍尼韦尔 (HONEYWELL in Chinese) recognized as a well-known trademark in China. Both of the recognitions will significantly improve HII's influence in China and facilitate its protection of IPR in the future.

Trademark Infringement through Domain Name- Certain Pharmaceutical Company v. Lihua Xue

Represented by Chang Tsi & Partners, a pharmaceutical company lodged a suit against Lihua Xue (an individual, hereinafter referred to as "defendant") for domain name dispute. The defendant registered the domain name that is identical with the pharmaceutical company's trademark (hereinafter referred to as the "Trademark") in bad faith. The domain name registered by the defendant prohibited the pharmaceutical company from registering its Trademark as a domain name or promoting its products through the Internet effectively.

On Nov. 20, 2005, Liaoning Shenyang Intermediate People's Court rendered a judgment not only finding that the defendant
infringed upon the pharmaceutical company's trademark rights, but also recognizing the trademark of the pharmaceutical company as a well-known trademark.
This is the third time we helped our client establish well-known status for their trademarks in judicial proceedings.

Trademark Infringement through Commodities and Trade Name- Kohler Co. v. Guangdong Chao'An Tos Ceramics Co., Ltd.

Entrusted by Kohler Co., our lawyers Simon Tsi and Grant Huang lodged a civil suit at Guangdong Province Chaozhou City Intermediate People's Court against Guangdong Chao'An Tos Ceramics Co., Ltd. (hereinafter referred to as "CATC") in April, 2005 regarding trademark infringement. Through the hearing, Chaozhou Intermediate Court rendered the judgment of first instance on December 22, 2005, recognizing Kohler Co.'s trademarks "Kohler in Chinese characters" and "THE BOLD LOOK OF KOHLER" as well-known trademarks, ordering the CATC to stop infringement 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 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 & Litigation- Formula 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 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.

15th Anniversary of Chang Tsi & Partners --