Shandong Lu Jin Industrial Co., Ltd. v. Juancheng Lu Jin Crafts Co., Ltd. and Jining Lizhibang Home Textiles Co., Ltd., A Trademark Infringement and Unfair Competition Dispute Guiding Case No. 46 (Discussed and Passed by the Adjudication Committee of the Supreme People’s Court Released on April 15, 2015) CHINA GUIDING CASES PROJECT English Guiding Case (EGC46) * November 15, 2015 Edition * The citation of this translation of the Guiding Case is: 《山东鲁锦实业有限公司诉鄄城县鲁锦工艺品有 限责任公司、济宁礼之邦家纺有限公司侵害商标权及不正当竞争纠纷案》 (Shandong Lu Jin Industrial Co., Ltd. v. Juancheng Lu Jin Crafts Co., Ltd. and Jining Lizhibang Home Textiles Co., Ltd., A Trademark Infringement and Unfair Competition Dispute ), CHINA GUIDING CASES PROJECT , English Guiding Case (EGC46), Nov. 15, 2015 Edition , available at http://cgc.law.stanford.edu/guiding -cases/guiding -case -46. This document was primarily prepared by Ivan Cardillo, Oma Lee, Wen Ou, Jeremy Schlosser, Sean Webb, and Jeff Yau. The document was finalized by Jordan Corrente Beck and Dr. Mei Gechlik. Minor editing, such as splitting long paragraphs, adding a few words included in square brackets, and boldfacing the headings to correspond with those boldfaced in the original Chinese version, was done to make the piece more comprehensible to readers. The following text, otherwise, is a direct translation of the original text and reflects the formatting of the Chinese document released by the Supreme People’s Court. The following Guiding Case was discussed and passed by the Adjudication Committee of the Supreme People’s Court of the People’s Republic of China and was released on April 15, 2015, available at http://www.chinacourt.org/article/detail/2015/04/id/1602326.shtml. See also 《最高人民法院关于发布第十批指 导性案例的通知》 (The Supreme People’s Court’s Notice Concerning the Release of the Tenth Batch of Guiding Cases ), Apr. 15, 2015, available at http://www.chinacourt.org/law/detail/2015/04/id/148149.shtml. Copyright 2015 by Stanford University 2 2015.11.15 Edition Keywords Civil Trademark Infringement Unfair Competition Generic Name of a Commodity Main Points of the Adjudication To determine the generic name of a commodity that has regional characteristics, [a court] should focus on conducting a comprehensive analysis of the following aspects: (1) [whether] the name is used as a matter of convention in a certain region or field, and has [also] been commonly used for a long time and recognized by the relevant public [of that region or field]; (2) [whether] the craft for producing the commodity that the name refers to has been formed by long -term common labor practice of the masses in a certain region or field; [and] (3) [whether] the raw materials for producing the commodity that the name refers to have been widely produced in a certain region or field. Related Legal Rule(s) Article 59 of the Trademark Law of the People’s Republic of China 1 Basic Facts of the Case Plaintiff Shandong Lu Jin Industrial Co., Ltd.2 (山东鲁锦实业有限公司 ) (hereinafter referred to as “Lu Jin Company”) claimed: Defendants Juancheng Lu Jin Crafts Co., Ltd. 3 (鄄城 县鲁锦工艺品有限责任公司 ) (hereinafter referred to as “Juancheng Lu Jin Company”) and Jining Lizhibang Home Textiles Co., Ltd. (济宁礼之邦家纺有限公司 ) (hereinafter referred to as “Lizhibang Company”) produced and sold a large quantity of Lu brocade products marked with 1 Translators’ note: this refers to the Trademark Law of the People’s Republic of China as amended in 2013, which was in effect when this Guiding Case was prepared. See 《中华人民共和国商标法》 (Trademark Law of the People’s Republic of China ), Article 59, passed and issued on Aug. 23, 1982, effective as of Mar. 1, 1983, amended three times, most recently on Aug. 30, 2013, effective as of May 1, 2014, available at http://www.gov.cn/jrzg/2013 -08/30/content_2478110.htm. 2 Translators’ note: the name “ 山东鲁锦实业有限公司 ” is translated here as “Shandong Lu Jin Industrial Co., Ltd.” The term “ 鲁锦 ” is translated as “Lu Jin” in accordance with the logo used on the company’s website, at http://www.chinalujin.com/qyjj.aspx. The words “ 鲁” (“Lu”) and “ 锦” (“Jin”) mean Shandong Province and brocade, respectively. 3 Translators’ note: the name “ 鄄城县鲁锦工艺品有限责任公司 ” is translated here as “Juancheng Lu Jin Crafts Co., Ltd.” The shortform “Juancheng Lu Jin” is used in accordance with the company’s blog, http://juanchenglujin.blog.163.com, listed on the company’s website, at http://www.lujinchina.com/lxwm.asp. Copyright 2015 by Stanford University 3 2015.11.15 Edition the words “Lu Jin”, infringing [the plaintiff’s] exclusive right to use the “Lu Jin” registered trademark. The inclusion of the words used [in] the plaintiff’s “Lu Jin” registered trademark in the enterprise name of Juancheng Lu Jin Company misled consumers and [thus] constituted unfair competition. “Lu Jin” was not a generic name. [The plaintiff] requested that [the court] order the two defendants to bear legal responsibility for the infringement of [the plaintiff’s] exclusive right to use [its] trademark and for unfair competition. Defendant Juancheng Lu Jin Company defended its position, claiming: Before plaintiff Lu Jin Company was established by registration and before the registration of the Lu Jin trademark was completed, “Lu Jin” had already become a generic name. According to relevant provisions, [the defendant’s use of the words “Lu Jin”] was a type of “proper use”. It did not constitute trademark infringement, nor did it constitute unfair competition. Defendant Lizhibang Company did not reply during the first-instance adjudication, but stated during the second-instance adjudication: “Lu Jin” was a generic name for southwest Lu’s pure cotton handmade folk textile products. [Lizhibang Company] did not know that “Lu Jin” was Lu Jin Company’s registered trademark. After [Lizhibang Company] received the complaint, [it] ceased the relevant use [of the words “Lu Jin”] and, therefore, should not bear responsibility for compensation. The court handled the case and ascertained: Lu Jin Company was formerly Rui Jin Folk Handicrafts Factory of Jiaxiang County, which obtained the “Lu Jin” word trademark on December 21, 1999. The registration number [of the trademark] was No. 1345914 and the validity period was from December 21, 1999 to December 20, 2009. The commodities approved for use [with the trademark were] Type No. 25 (clothing, shoes, and hats). On November 14, 2001, Lu Jin Company also obtained the “Lj + LUJIN” combination trademark, whose registration number was No. 1665032 and validity period was from November 14, 2001 to November 13, 2011. The commodities approved for use [with the combination trademark] were Type No. 24 (textiles, cotton products, fabrics for underwear products, gauzes, textile products, terry cloth, nonwoven fabrics, bath towels, bed sheets, and textile furniture covers). On February 9, 2001, Rui Jin Folk Handicrafts Factory of Jiaxiang County changed its name to Lu Jin Industrial Co., Ltd. of Jiaxiang County, which was then changed to Shandong Lu Jin Industrial Co., Ltd. on June 11, 2007. After Lu Jin Company obtained the exclusive right to use the “Lu Jin” registered trademark, it publicized its products and registered trademark multiple times through quite a few media [outlets]. In March 2006, [the company] was accepted by the “China Time-Honored Brand” Work Committee 4 as a member entity. After many years of effort, as well as a large 4 Translators’ note: the name “‘ 中华老字号 ’工作委员会 ” is translated here as the “‘China Time -Honored Brand’ Work Committee”. Previously named “ ‘中华老字号’研究分会 ” (“‘China Time -Honored Brand’ Research Subcommittee”), the Committee is a social organization that was founded in 2003 by the China General Chamber of Commerce as a social organization to promote the continuation of old enterprise culture, to unite and protect the interests of old and famous enterprises, and to enhance exchange and collaboration among old Copyright 2015 by Stanford University 4 2015.11.15 Edition amount of publicity over a long period of time through advertising and marketing, Lu Jin Company’s series of products under the “Lu Jin” brand, especially its clothing under the “Lu Jin” brand, achieved a certain degree of being known in the country. On November 16, 2006, the “Lu Jin” registered trademark was reviewed and approved to be a famous trademark 5 of Shandong Province. In March 2007, Lu Jin Company purchased from Lizhibang Lu Brocade Specialty Store a commodity produced by Juancheng Lu Jin Company that was the same as or similar to the commodities approved for use [with Lu Jin Company’s registered trademark]. The label (hangtag), packaging box, and packaging bag of the commodity, as well as the façade of the store, all displayed the words “Lu Jin”. The [words] “Lu Jin” [displayed] on the façade of the store were enlarged prominently for use. The seal stamped on the issued invoice was Lizhibang Company’s seal. Juancheng Lu Jin Company was established on March 3, 2003. The trademark used on [its] products was a combination trademark [consisting of] “the words ‘Jing Yi Fang’ + a graphic”. [The company] had applied to register that trademark, but [the application] had not been examined for approval. In September 2007, Juancheng Lu Jin Company applied to revoke Lu Jin Company’s registered “Lu Jin” trademark (No. 1345914). The Trademark Review and Adjudication Board of the State Administration for Industry and Commerce 6 had already accepted [the application] but had not rendered a ruling. Based on Lu Jin Company’s application, the court of first instance [approached] Juancheng Lu Jin Company and Lizhibang Company to preserve evidence in accordance with law. [The court] discovered that the two defendants had in their possession a large quantity of commodities which were either of the same category as or similar to the products approved for enterprises. For more information, see, e.g., http://www.cgcc.org.cn/news.php?id=43415 and http://www.21jrr.com/news/zhxw/2015/0718/99168.html.