Unitalen client Ferrari (the plaintiff) is the registrant of “法拉力” and “Ferrari” and its horse image trademark in Class 12 for use in cars and other goods since 1995. The defendant had registered “法拉利” trademark in Class 33 for use in wines goods. Meanwhile, the defendant used “法拉利”, “Falali” (the pinyin of 法拉力 and 法拉利) , the similar horse image trademarks in their wine products, as well as displaying the name and pictures of Enzo Ferrari, car races and so on to imply the connection with Ferrari. In addition, the defendant used “法拉利” as their business name and named one of its wine product after the plaintiff’s car model.
Unitalen brought the case to the Intermediate People's Court of Changsha, Hunan and the court made the following deicion of the first instance:
(1)The defendant shall immediately stop the infringement of the plaintiff’s trademark exclusive rights;
(2)The defendant shall immediately stop using 法拉利” as its business name;
(3)The defendant shall pay the plaintiff the idemnity of 2 million yuan for economic losses;
(4)The defendant shall publish statement in the "Xiaoxiang Morning News" to eliminate the impact.
Firstly, the defedant’s “法拉利” trademark was approved and stayed active during the trial of first instance, although it was later invalidated. The plaintiff therefore need to prove its trademark had constituted well-known trademark prior to the registration of the defedant’s trademark. This achivement thus knowcked out the obstacles of right conflict and had the court hold that the alleged trademark constitute infringement.
Secondly, the plaintiff successfully broke through the five-year limit on invalidation request by claiming well-known trademarks and the defendant’s malice. This case was initiated after the defendant’s "法拉利" registered trademark had been registered for 5 years, but the plaintiff proved that its "法拉力(Ferrari)" trademark was well-known prior to the defendant's application of the alleged trademark, which is of malicious intent. The court of first instance redered support to the plaintiff's claims.