Brief of the Case:
Kingdee owns the Trademarks No. 1505793 " ", No. 26760297 " ", No. 4362974 " ", No. 28658925 " ", and No. 18790329 " " (hereinafter referred to as "the involved trademarks 1-5" respectively). Among them, the involved trademark 1 was approved for registration on January 14, 2001 and designated for use in goods of "Computer software; Computer programs, recorded" etc. in class 9; the involved trademark 2 was approved for registration on October 14, 2018 and designated for use in goods of "Computer software applications, downloadable; Computer program" etc. in class 9; the involved trademark 3 was approved for registration on January 14, 2008 and designated for use in goods of "Paper; Printed publications" etc. in class 16; the involved trademark 4 was approved for registration on December 21, 2018 and designated for use in goods of "Paper; Ledgers [books]; Forms" etc. in class 16; the involved trademark 5 was approved for registration on February 7, 2017 and designated for use in goods of "Paper; Printing paper; Ledgers [books]" etc. in class 16.
On April 7, 2008, Huang Yang signed the "Employment Statement of Kingdee Employee" with Kingdee, and later took charge of purchasing logistics and direct sales in Chengdu as the director in western region of the company. On July 2, 2012, the company Moneywise was established. Its business scope includes sales of office supplies and stationery, computer software and hardware R&D, sales and technical services, etc. On July 5, 2013, Huang Yang joined Moneywise after leaving Kingdee. On January 1, 2013, upon application of Moneywise and authorization of Kingdee, Moneywise became a golden partner of Kingdee selling auxiliary products in Chengdu, which continued until December 2014. In March 2015, Kingdee began to use the trademark "金蝶妙想(Kingdee Miaoxiang)". As of June 2015, the trademark 金蝶妙想(Kingdee Miaoxiang) had gained a high reputation in the fields of financial software and financial voucher paper products. On August 12, 2015, Huang Yang became the controlling shareholder of Moneywise with a 100% shareholding ratio and also served as the legal representative. He resigned from the legal representative position after the case was filed and participated in the litigation as an employee of Moneywise.
At the beginning of 2015, after the termination of authorization, Moneywise continued to carry out business activities in the fields of financial software and voucher paper products, and was still selling Kingdee's software and its auxiliary voucher paper. Moneywise marked "applicable to Kingdee" on the financial voucher paper products sold and used "applicable to Kingdee" in publicity and promotion, and prominently used the marks "金蝶(Kingdee)" and "Kingdee". Since then, Moneywise even applied for registration of the Trademarks No. 18233177, No. 18233130 and No. 27329567 "金蝶妙想(Kingdee Miaoxiang)" on goods in classes 16, 9, and 35 in November 2015 and November 2017 respectively. Among them, the Trademark No. 18233177 " " was approved for registration on goods of "Paper" etc. in class 16 on December 14, 2016, and the other two trademarks were determined to violate Article 15.2 of the Trademark Law by the China National Intellectual Property Administration (CNIPA) during the opposition proceedings and thus were not approved for registration. On December 8, 2017, Moneywise used its maliciously squatted trademark "金蝶妙想(Kingdee Miaoxiang)" to file the invalidation procedure against Kingdee's trademark "金蝶妙想(Kingdee Miaoxiang)", and filed malicious complaints against the on-line store operated by Kingdee on JD, declaring that the use of "金蝶妙想(Kingdee Miaoxiang)" in multiple places in the store infringed the Trademark No. 18233177. On December 22, 2017, Kingdee submitted the "Trademark Appeal" to JD for defense. After that, the Trademark No. 18233177, which was used by Moneywise as the basis of rights, was invalidated by the CNIPA on February 6, 2018 upon request of Kingdee.
Kingdee believed that the aforementioned actions of Moneywise infringed its legitimate rights and interests, and entrusted Unitalen to file a lawsuit against Moneywise for trademark infringement and unfair competition in July 2020. The case was accepted by the Chengdu Intermediate People's Court of Sichuan Province and was concluded on July 20, 2021.
Judgment of the Court:
After trial, the Chengdu Intermediate People's Court made the judgment of this case on July 20, 2021, ordering Moneywise to:
1. immediately cease to use the mark that infringes the above 5 registered trademarks involved in the case;
2. immediately cease to sell the financial software that infringes the registered Trademarks No. 1505793 and No. 26760297;
3. compensate 1.3 million yuan for economic damages and pay 37,026 yuan for reasonable expenses;
4. publish a statement in the prominent position of Shenzhen Evening News and Chengdu Economic Daily for 7 consecutive days and publish a statement in the prominent position of "Moneywise Form Flagship Store" on JD for 30 consecutive days (the contents of the statements shall be reviewed by this court) to eliminate the influence.
The typical significance of this case is mainly manifested in the two aspects: "regulating the abuse of trademark rights through Article 2 of the Anti-unfair Competition Law" and "judgment rules for the fair use of trademarks".