Sanyou customer: SCT CHEMICALS FZE

Proxy lawyers: Hu Miao, Zhang Xue

Adjudication Authority: Shanghai Intellectual Property Court

Trial result: The appellant's appeal request is established. Considering factors such as the respondent's subjective fault and the severity of the infringement, the appellant's claim for triple punitive damages is supported, and the appellant's request for 3 million yuan in compensation is fully supported.

01 Basic Facts

The appellant, Aishidi Chemicals (SCT), is an internationally renowned supplier of lubricants and engine oils, affiliated with the German SCT Group. The appellant enjoys the registered trademark "Mannol" on goods such as "lubricating oil, engine oil, etc.", and "SCT" is the enterprise name of the appellant and its affiliated companies. Both the appellant's "Mannol" brand and "SCT" enterprise name have high popularity.

Trademark involved:

The appellee in this case, Mr. Mai, used to be the appellant's agent. After the termination of authorization, Mr. Mai used "MANNOL", "MANO" and "MANO" logos on his WeChat official account, Tiktok and other social media to promote his products such as "MANOIL" brand engine oil, printed the appellant's associated company name "SCT Lubricants" and "SCT Vertriebs GmbH" on the package of "MANOIL" brand engine oil products, registered to use the domain name "mannol. com. cn", and used the appellant's company's promotional content on his official website, WeChat official account and Tiktok with the intention of causing confusion.

In addition, Mai Company also applied for registration of multiple logos similar to the appellant's trademark, claiming that its products are new and upgraded versions imported from Germany. Without factual basis, it maliciously slandered the appellant's product quality, claiming that the "MANNOL" brand oil "may cause problems such as loud car noise, high fuel consumption, and oil burning".

SCT Company has entrusted Lawyer Sanyou to sue in court, claiming that Maimou Company has committed trademark infringement and unfair competition. They request the court to order Maimou Company to cease infringement, transfer domain names, publish statements to eliminate the impact, and apply punitive damages, compensate for economic losses and reasonable expenses of 3 million yuan.

02 First instance judgment

The court of first instance found that the use of the "MANOIL" logo on social media such as WeChat official account and Tiktok infringed SCT's trademark exclusive right; However, it is believed that "Mano" and "Manou" have not formed a stable and unique correspondence with "MANNOL", so they do not constitute trademark infringement, and no determination has been made on the nature of Mai's use of the "MANNOL" logo.

In terms of unfair competition, it is difficult to determine that the "SCT" brand name constitutes a "certain influence" brand name as stipulated in Article 6 of the Anti Unfair Competition Law. However, it is believed that the registration and use of the "mannol. com. cn" domain name by Mai constitutes unfair competition, and its false advertising constitutes false advertising and commercial defamation. The final judgment: Mai stops trademark infringement and unfair competition, transfers the accused domain name to SCT company, compensates SCT company for economic losses and reasonable expenses of 350000 yuan, and publishes a statement to eliminate the impact.

SCT Company is dissatisfied with the infringement issues and compensation amount that were not determined in the first instance, and has entrusted lawyer Sanyou to file an appeal, claiming that punitive damages should be applied in this case, and requesting the second instance to revise the judgment to compensate for economic losses and reasonable expenses totaling 3 million yuan.

Lawyer Sanyou mainly advocated in the second instance that:

1. The appellant's "SCT" trade name constitutes a company name with certain influence;

2. The English trademark "MANNOL" of SCT company is used together with the Chinese trademarks "Mano", "Mano" and other marks to form a stable correspondence. The relevant public has used "Mano" and "Mano" as marks to identify the source of SCT company's "MANNOL" goods. The "Mano" and "Mano" trademarks used by Mai company are similar marks to "MANNOL", which constitutes trademark infringement;

3. The use of logos such as "MANNOL" by a certain company to promote its "MANOIL" products constitutes trademark infringement;

4. As a former agent, Mai Company had intentional infringement and committed serious acts of infringement, including long-term infringement, high sales volume of infringing products, diverse infringement behaviors, and negative impact. It also engaged in false advertising, commercial defamation, and trademark registration. Punitive damages should be applied in this case, and accurate, clear, and reasonable compensation calculation basis should be provided.

03 Second instance judgment

The Shanghai Intellectual Property Court held in the second instance that the use of the "MANNOL" logo by Mai Company, which is consistent with the trademark rights, infringed on the trademark rights of the owner involved in the case. It used to be the sales and promotion party of Mannol brand products in China, and there were many cases of using the "MANNOL", "Mano", and "MANNOL" logos simultaneously in product promotion. The relevant public will associate "Mano", "Mano" with "MANNOL".

After the sales and promotion relationship of Mannol brand products ended, the continued use of the Chinese "Mano" and "Manou" logos in product promotion has no justifiable reason and obvious subjective fault, which can easily cause the relevant public to mistakenly believe that the product comes from SCT company or has a specific connection with SCT company, and constitutes an infringement of using a logo similar to the "MANNOL" trademark on the same product.

The name 'SCT' is based on joint promotion with the 'MANNOL' trademark and has already had a certain impact. The use of the word "SCT" on the packaging and promotion of infringing products by a certain company constitutes unauthorized use of someone else's influential corporate name and unfair competition.

Regarding the application of punitive damages, Maimou Company was a former agent of SCT Company and was aware that the rights and trademarks belonged to SCT Company. However, Maimou Company still engaged in trademark infringement, as well as unfair competition practices such as using SCT Company and its affiliated company names, false advertising, and commercial defamation. Maimou Company also continued to apply for registration of other trademarks similar to the "Mannol" trademark in question, which constituted intentional infringement and serious circumstances, and should be subject to punitive damages.

The court calculated the infringing profit of Maimou Company based on the sales amount of infringing goods displayed in the invoice information of Maimou Company identified in the first and second trials, and the reasonable profit margin claimed by SCT Company. In addition, considering factors such as the subjective degree of fault and the severity of the infringement, we support SCT's claim for triple punitive damages and fully support SCT's appeal request of 3 million yuan.

04 Typical significance

This case is a typical case of Shanghai Intellectual Property Court's regulation of malicious trademark infringement by former agents, the application of punitive damages in accordance with the law, and the strengthening of intellectual property protection.

During the first instance stage, Lawyer Sanyou obtained the defendant's tax invoices and calculated the infringement profit and reasonable profit margin, laying the foundation for claiming punitive damages; At the same time, comprehensive evidence was provided to prove that the infringing party had obvious subjective malice, serious infringement circumstances, and comprehensive rights and trademark awareness. The claim for triple punitive damages was made in accordance with the law, and ultimately received full support from the court, effectively strengthening the punishment for malicious infringement.

In addition, the second instance court also clarified that after the foreign brand's English trademark forms a stable correspondence with the corresponding Chinese trademark, the relevant Chinese logo and English trademark belong to similar trademarks. The former agent continued to use the Chinese logo after the authorization was terminated, which constitutes trademark infringement and completely blocks the path of the infringer's imitation and attachment to the trademark reputation of the rights holder.

This case clearly delineates the protection boundary of English trademarks corresponding to Chinese trademarks, applies punitive damages to intentional and serious infringement behaviors, effectively deterring malicious infringement behaviors, providing solid judicial guarantees for foreign-related entities to operate stably in China, and helping to optimize the market-oriented and rule of law business environment.