Sanyou won an Administrative Retrial involving trademark infringement & unfair competition disputes and invalidation representing Basic House （Shanghai） CO., LTD

Sanyou Client: Basic House (Shanghai) Fashion Co., Ltd.
Trial Organ: Wuhan Intermediate People's Court of Hubei Province, Hubei High People's Court, Supreme People's Court of Hubei Province
Trial Result: The court ordered the infringing party to stop the unfair competition and compensate RMB 346,863.63 to Sanyou’s client for economic losses and reasonable rights protection expenses, and invalidated the trademark of the infringing party.

Case Facts
The right holder, South Korean-based Basic House Fashion Co., Ltd. is mainly engaged in the sale of designer clothing. Mind Bridge is its casual clothing brand, which ranks in the forefront of Korean casual clothing brands and represents the trendy fashion brand in Korea. Since the right holder opened its first store in mainland China in 2004, it now has nearly 500 Mind Bridge brand stores nationwide. The right holder applied for the "Mind Bridge" trademark No. 4119796 in China as early as 2004, and in 2008, it was approved to be registered on the Class 25 of clothing and other goods. The "Mind Bridge" trademark of the right holder is not a fixed expression in English, and thus has strong distinctiveness and high reputation through the long-term and wide publicity and use by the right holder.

In recent years, the right holder has found that there are glasses products that plagiarize and imitate their trademarks on the market. After investigation, it was found that the infringing party Wu Haidong applied for the "mind bridge" trademark No. 10372783 on glasses of Class 9 and other goods, and since 2017, he has opened many glasses stores nationwide to sell "mind bridge" glasses as well as on internet platforms. The infringing party not only prominently used the "Mind Bridge" trademark in its store decoration, but also prominently used the "Mind Bridge" trademark on glasses, glasses cases, glasses bags, and glasses cloth.

The right holder authorized Basic House (Shanghai) Fashion Co., Ltd. to file a trademark infringement and unfair competition lawsuit against the infringement. After trial, the court of first instance found that the infringer knew the existence and popularity of the "Mind Bridge" trademark registered by Basic House, and had the intention to take free ride of the trademark. In view that the infringer's behavior constituted unfair competition, the court ordered the infringer to stop the unfair competition and compensate RMB 346,863.63 for economic losses and reasonable expenses. The infringing party refused to accept the first-instance judgment and appealed to the Hubei Provincial Higher People's Court.

In the course of the infringement lawsuit, Sanyou attorneys also started the trademark invalidation procedure on behalf of the right holder, and successfully invalidated the "mind bridge" trademark applied by the infringing party on Class 9 -- glasses and other goods. In the administrative retrial for trademark invalidation, the court deemed that the defendant had the intention of free riding the cited trademark of the Basic House in view that it clearly knew the existence and popularity of the cited trademark, which violated provision in the Similar Goods and Services Table, and thus determined the defendant’s trademark on glasses of Class 9 constituted similar trademarks with the right holder’s trademark on clothing of Class 25.

Typical Significance
In commercial activities, competitors in the same industry should respect the prior intellectual property rights of others when choosing commercial logos, and should reasonably avoid registered trademarks with strong distinctiveness and high reputation. However, in this case, the infringing party, knowing the right holder's trademark and its popularity, not only preemptively registered the right holder's trademark in relevant classes, but also deliberately imitated the right holder's trademark in various aspects in actual business operations.
The bad-faith intention improperly stolen certain market attention and business opportunities that should have belonged to the trademark of the right holder.

For such infringement cases, the right holder needs to formulate a comprehensive rights protection strategy for the registered trademark, timely preserve evidence of relevant infringements, bad-faith of infringement, scale of infringement, etc., so as to ensure the success of trademark rights confirmation cases and trademark infringement and unfair competition cases. This will help crack down on trademark squatting and infringement and is conductive for obtaining reasonable compensation.

In this case, Sanyou attorney represented the right holder to declare the invalidation of the squatting trademark and instituted a civil lawsuit against the infringement, which were all supported by the court, and turned out to be effective in cracking down on the behavior of taking free ride of famous brands.