Recently, the Shenzhen Intermediate People's Court made a first-instance judgment that the plaintiff, GEAR UP INTERNATIONAL LIMITED, represented by Unitalen, won the first-instance lawsuit against LUO X, CHEN X, and the other two companies for infringing on the exclusive right to use a well-known trademark, and obtained compensation of one million yuan. In this case, Unitalen assisted the plaintiff in comprehensively utilizing the strike method of combining civil infringement and administrative right confirmation, which not only timely stopped the trademark infringement but also ultimately eradicated the malicious preemptive trademark registration that had been registered for 10 years, achieving a comprehensive victory in both administrative and civil litigations!

Case Brief

The plaintiff is the registered trademark owner of the globally renowned fashion brands "" and "". Since the 1990s, its unique design style and high-quality craftsmanship have enjoyed a high reputation worldwide. Since entering China in 2005, it has promoted and advertised its registered trademarks through various channels, including direct-sale stores in major cities and provinces, major e-commerce platforms, endorsements by well-known popular stars, and advertisements in various media. In March 2013, the defendant LUO X registered the trademark "" for "headphones" of Class 9 and registered and operated a company  with the company name "EVISU" in Hong Kong in the same year. The company's shareholders are LUO X and CHEN X, a married couple. Later, LUO X and his wife successively registered trademarks such as "Evisu", "", "", and "Evisuhf" in Class 9 and Class 35, etc., and applied for a design patent for the packaging with the "Evisu" logo and registered the "Evisu" logo as an artwork.

Since 2017, LUO X and his wife have been selling and advising headphone products with the sued trademarks "" and "" through two companies under their respective names on e-commerce platforms such as Taobao, Alibaba's wholesale website 1688, and Pinduoduo. They have also registered the website www.evisuhf.com and continuously advertised the headphone products with the sued trademarks on the website, as well as on social media platforms like Facebook, Instagram, TikTok, and Tencent, using the name of the Hong Kong company "". Since 2017, when the plaintiff became aware of the infringement by LUO X and other defendants, the plaintiff has continuously taken proactive measures to protect its rights through administrative procedures such as trademark objection, trademark invalidation declaration, and trademark cancellation due to non-use in three consecutive years. In November 2022, after the administrative review procedure for the cancellation of the trademark "" took effect, the plaintiff sued the four defendants for jointly infringing on the exclusive right to use a well-known trademark in the Shenzhen Intermediate People's Court.

Case Analysis

The difficulties in the case not only lie in how to overcome the conflict of rights and obtain cross-class protection through the stronger protection scope of the well-known trademark but also in the complex characteristics of the infringement behaviors in the case, which are manifested in the long duration of the infringement chain, the diversity of infringement manners, and the infringement occurring both domestically and internationally. In response to this, the team members of Unitalen Law Firm extensively gathered clues, exhausted various means of evidence collection, and effectively communicated with the parties to comprehensively sort out the evidence clues of the well-known trademark. Ultimately, they laid a solid foundation for overcoming the difficulties of the case by nailing down the other party's multi-faceted malicious intentions and non-standard use of the registered trademark, solidifying the evidence of the well-known trademark, and overcoming the other party's obstruction of adducing evidence.

Typical Significance

This case is a typical example of a combined civil infringement and administrative confirmation approach to combat malicious registration and trademark infringement. On one hand, the plaintiff first conducted a detailed investigation into the defendant's hundreds of instances of "click farming and related-party transactions" and other uses in the administrative case of trademark cancellation due to non-use in three consecutive years, and successfully revoked the other party's registered trademark through subjective usage intent and "symbolic actions during the three-year period"; on the other hand, in the civil lawsuit, the plaintiff further adduced sufficient evidence of the well-known facts and effectively responded to the defendant's defense of "properly using its own registered trademark." Ultimately, the Shenzhen Intermediate People's Court adopted the opinion of the attorney, taking into account the fact that the trademark is strongly distinctive and well-known, the defendant's apparent subjective malice, the diversified infringement manners, the high similarity of the sued logo, and the obstruction of adducing evidence and other factors, the court included both the "malicious" situation in the administrative procedure and the "malice" in the use of the trademark into the infringement case for comprehensive consideration. It is the combination of the "malicious" intent in the administrative procedure and the "malice" in using the trademark that effectively prohibited the continued infringing use of the maliciously registered trademarks and further jointly consolidated the determination of the case nature and the amount of compensation for damages.