Sanyou Client: OMRON Corporation

Case Representatives: Chen Jian, Mi Tai

Adjudicating Authorities: Hangzhou Intermediate People's Court of Zhejiang Province, Zhejiang High People's Court

Judgment Result: The final judgment upheld the first-instance ruling in favor of our client, successfully awarding OMRON Corporation RMB 2 million in compensation for economic losses and reasonable legal expenses.

CHEN JIAN

Partner

Lawyer / Patent Attorney

With over 20 years of experience in intellectual property legal services, Chen Jian has handled numerous patent invalidation and IP litigation cases for renowned domestic and international enterprises. Many of his cases have been selected as representative cases by the IP courts.

MI TAI

Lawyer / Patent Attorney

LL.M., China University of Political Science and Law. Engaged in IP work since 2016. Specializes in IP and unfair competition litigation, patent and trademark administrative litigation, patent reexaminations, invalidation procedures, and advisory responses, particularly in mechanical engineering and related fields.

Legal Background

IP laws and regulations typically list specific types of infringing acts. However, considering the diversity of infringement methods, they often include “catch-all” clauses to cover acts not explicitly enumerated. Article 57(7) of the Trademark Law and Article 6(4) of the Anti-Unfair Competition Law are such catch-all provisions. The application of these provisions requires meeting the core elements of infringement, aligning with legislative intent and principles, and is reliant on judicial interpretation and practice. As such, this article refers to behaviors regulated under catch-all clauses as “atypical infringement.”

The Interpretation by the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes over Trademark Cases provides further elaboration on Article 57(7) of the Trademark Law. Three circumstances falling under this catch-all clause include: prominent use of a business name, cross-class use of a well-known trademark, and registering a trademark as a domain name.

The Interpretation by the Supreme People’s Court on Several Issues Concerning the Application of the Anti-Unfair Competition Law of the PRC further defines Article 6’s catch-all provision to include two specific situations: the use of identifiers with certain market influence not listed in Article 6, and using someone else’s registered or unregistered well-known trademark as a trade name.

This article introduces two atypical types of trademark infringement based on a real case:

Registering a trademark as a domain name.

Using another party’s registered trademark as a business name component in a misleading way.

Case Background

Our client, OMRON Corporation (Plaintiff, hereinafter "OMRON"), was founded in Japan in 1948 and renamed to its current name in 1990. Its products include industrial automation control systems and electronic components. In 1981, OMRON applied to register the “OMRON” word trademark in China, approved under Class 9 for relays and similar products. In 1991, OMRON entered the Chinese market by establishing a subsidiary.

The defendant, Zhejiang OMLON Company, was established in 2007 and primarily manufactures and sells elevator products. In 2023, OMRON discovered the defendant promoting its elevator products via the domain name “www.omlon.net,” along with other infringing behaviors. OMRON filed a civil lawsuit with the Hangzhou Intermediate People’s Court for trademark infringement and unfair competition.

In this case, OMRON argued that the use of the domain name “www.omlon.net” constituted trademark infringement and that the defendant's use of the transliteration “欧姆龙” (OMRON) in its trade name constituted unfair competition.

Using a Trademark as a Domain Name Constitutes Infringement

According to judicial interpretations, this behavior constitutes infringement if it meets the following three criteria:

The domain name is identical or similar to another’s registered trademark.

The domain name is used in e-commerce involving related goods.

The use is likely to cause public confusion.

For criterion 1, the comparison standard is the same as typical infringement. Domain names generally consist of English letters or numbers, so the comparison focuses solely on the word portion of the trademark. If the trademark’s word part isn’t distinctive, establishing similarity may be difficult.

For criterion 2, courts differ in interpreting “e-commerce involving related goods.” Some courts require direct transactions through the website. However, from the perspective of legislative intent, “e-commerce” under the Judicial Interpretation should align with Trademark Law Article 48, which includes promotional use such as advertising.

Furthermore, under the likelihood of confusion principle, actual confusion is not required. Promotional use through a website aims to market products and create sales opportunities, thus potentially confusing consumers. Therefore, Zhejiang OMLON’s use of “www.omlon.net” to promote elevator products qualifies as e-commerce, even without direct transactions.

In this case, the court agreed, stating that “Zhejiang OMLON uses the domain name to promote its company and products, showcase elevator types and specifications, and provide contact information, all with the intent of creating trade opportunities. This constitutes e-commerce.” The Supreme People's Court made a similar determination in the Chateau Lafite Rothschild v. Shenzhen Jinhongde Trading Co. case (2011, Hunan High Court, Civil Final No. 55).

The relevance of goods is assessed similarly to typical infringement. OMRON’s registered trademark covers Class 9 electronic components and automation equipment. The defendant manufactures elevators. To bridge the classification gap, OMRON submitted substantial evidence from trade journals and academic papers to demonstrate the close connection between elevator control systems and automation equipment. The court accepted this reasoning.

For criterion 3, factors include the trademark's distinctiveness, fame, and the infringer's intent. OMRON argued that “OMRON” is a coined term with no fixed meaning, is highly well-known, and that the infringer's prior attempts to register the contested mark had been invalidated. These factors support the likelihood of public confusion.

Using a Registered Trademark as a Trade Name Component Constitutes Unfair Competition

The Trademark Law and Anti-Unfair Competition Law both aim to protect the source-identifying function of commercial signs. This protection extends beyond the trademark itself to include its recognized translations under certain conditions. Similarly, using another's trademark as a trade name—especially through translation—can constitute unfair competition if the translated name is widely recognized and associated with the original brand.

To prove this, the rights holder must show simultaneous use of both the trademark and its Chinese translation. This includes both the owner’s own use and widespread use by others. However, passive use that the rights holder explicitly rejects is excluded. For example, in the “Viagra” v. “伟哥” case, the Supreme Court found that Pfizer never officially used the term “伟哥” in China and rejected its association with the trademark.

In the present case, OMRON consistently used the English and Chinese marks together in promotion. Due to its high brand recognition, the Chinese public and media also regularly referred to OMRON as “欧姆龙.” Ample evidence proved that “OMRON” and “欧姆龙” had formed a stable corresponding relationship.

Conclusion

This case applied dual legal strategies based on a single trademark: one under Trademark Law Article 57, and another under Anti-Unfair Competition Law Article 6’s catch-all clause. This layered protection sent a strong warning to the market: any attempts to "free ride" on brand recognition or exploit legal gray areas for unfair gains will be firmly sanctioned by law.

As a professional IP legal team, Sanyou remains committed to providing end-to-end services—prevention, monitoring, enforcement—to safeguard brand value and uphold market order.