CHANG TSI
Insights
With the continuous improvement of China’s intellectual property protection system, trademark infringement has been effectively curbed. However, some malicious market entities are increasingly using more covert means, such as imitating product packaging and decoration, to gain unfair competitive advantages. This article takes the case "Gillette vs. Mkodo et al. for Unfair Competition," recently handled by Chang Tsi, as an example. By analyzing the court’s key rulings and the strategies for protecting rights, it explores the judicial recognition criteria for "rights to trade dress with certain influence" under Article 6 of the China’s Anti-Unfair Competition Law. This aims to provide practical references for similar cases.
The plaintiff, The Gillette Company LLC (hereinafter "Gillette"), is an internationally renowned brand in personal care, founded in 1901. While excelling in men’s grooming, Gillette was also a pioneer in introducing female shaving products. In 2001, Gillette launched the world’s first shaving razor designed specifically for women: the Venus. Subsequently, Gillette had introduced the Venus Snap women’s shaver to the Chinese market, a product that combined the exceptional qualities and brand characteristics of the Venus line with innovative designs tailored to the needs and aesthetics of women, particularly for travel and everyday use.
Defendant 1, Jiangsu Mkodo Electronics Technology Co., Ltd. (hereinafter "Mkodo"), is a manufacturer of razors and a direct competitor of Gillette. Mkodo’s Meshe women’s shaver features packaging and decoration that bears a high resemblance to Gillette's Venus Snap razor (see Comparison 1). Defendant 2, Yueju (Dalian) Trading Co., Ltd. (hereinafter "Yueju"), serves as Mkodo’s distributor, selling the infringing products online. Further, Yueju unlawfully used Gillette’s trademark, the product name with certain influence, as well as promotional materials and pictures that closely resembled those of Gillette (see Comparison 2).
Gillette consistently upholds its commitment to protecting consumers' rights to purchase genuine products, avoiding confusion caused by infringing products, and ensuring that every consumer can confidently identify and purchase authentic goods. Therefore, it has decided to take legal action against the above targets to achieve the goals. In this case, Gillette’s key legal basis lies in Article 6 of China’s Anti-Unfair Competition Law, which protects the "rights to trade dress with a certain influence." In practice, it is rather challenging and difficult to address this type of infringement through administrative or other non-judicial means. Typically, rights holders have to initiate civil litigation, requesting the court to confirm that the involved product trade dress have a certain influence and function as identifiers of the product’s source, thereby achieving the goal of stopping the infringement.
After receiving this case, Chang Tsi quickly assembled a specialized litigation team to analyze the case details and assist the client in conducting field investigation and online evidence collection, ultimately forming a clear litigation strategy that identified the two defendants. Gillette then instructed the litigation team (led by attorneys Sue Gui, Nancy Qu, and Xin Wang) to file a lawsuit with Dalian Intermediate People’s Court, suing the defendants for unfair competition and seeking to stop all infringing activities, along with damages and reasonable legal expenses totaling RMB 1 Million.
After trial, the Dalian Intermediate People’s Court issue the first-instance judgment, concluding:
1. The trade dress (packaging and decoration) of Gillette’s Venus Snap Razor have obtained a certain level of market recognition and fame and deserve legal protection. The court explicitly defined “protected trade dress” as including the overall shape and color scheme of the razor’s storage case, the "VENUS" English logo on the lid, ventilation holes on the bottom, colors of the razor head, the shape and colors of the handle grip, and the color scheme and structural connection of the razor head to the grip. These distinctive design elements feature unique creativity and strong visual appeal, making them highly distinctive. Through continuous use and promotion by Gillette, the elements have become well-recognized by the relevant public as identifying Gillette’s products.
2. Gillette has legitimate rights over its advertising materials. The promotional texts and photos used in e-commerce for the razor were created under Gillette’s authorization for the Chinese market and actively promoted, thus granting Gillette the corresponding civil rights over these materials.
3. "Gillette" is a trade name with a certain level of influence, and its recognition as a trademark extends to its use as a company name.
4. The trade dress of the products manufactured and sold by Mkodo and distributed by Yueju are highly similar to that of Gillette’s products, constituting unfair competition. Yueju's use of promotional materials similar to Gillette’s also constitutes unfair competition. Additionally, Yueju’s use of the "Gillette" name in product listings constitutes both trademark infringement and unfair competition.
Protecting product trade dress under the Anti-Unfair Competition Law is a rather challenging task and requires significant efforts the evidence collection. If we would like to effectively establish such rights in court, the following criteria should be met:
1. Clearly defining the scope of protection for the packaging and decoration with "a certain influence" and its distinctiveness in identifying product origin. In this case, Chang Tsi attorneys conducted a meticulous analysis of the product’s design and summarized all the elements to be protected, including features such as "the razor storage case’s overall design and colors, the English logo on the lid, ventilation holes, the color scheme of the razor head, the handle grip’s design and colors, and the connection structure between the razor head and grip." These elements were distinctly different from the general designs of competing products on the market and displayed strong distinctiveness. Consumers could easily identify Gillette’s product based on these visual and structural features.
2. Proving that the trade dress has achieved "a certain influence." When determining whether packaging and decoration hold market influence or recognition, courts consider factors such as the level of public awareness in China, the product’s sales duration, regions, volume, and target consumers, as well as the extent and scope of advertising and promotional activities. In collaboration with Gillette, the litigation team collected evidence in the following areas:
3. The defendants’ actions caused or could cause market confusion. The law stipulates that using identical or visually indistinguishable packaging and decoration on identical products may result in confusion over the product’s origin. Although the defendants’ packaging and decoration were nearly identical to Gillette’s, the Chang Tsi team emphasized this argument by collecting consumer reviews posted online. Many customers have mistakenly purchased the defendants’ products due to the similar packaging and only realized they had bought the infringing products after receiving the goods.
By providing thorough evidence and arguments, Chang Tsi Team not only helped the client secure a favorable judgment and stop the defendants’ infringing activities, but also established a judicial precedent recognizing “the market reputation and protectability of the Venus Snap Portable Razor’s trade dress.” This precedent will serve as a valuable reference for future rights protection cases in similar situations.
Gillette always insists on safeguarding consumers' legal rights to purchase genuine products, avoiding confusion caused by counterfeit items, and ensuring that every consumer can confidently identify and purchase authentic products.
Comparison 1
Comparison 2
