Unitalen Representing the Famous Accounting Firm Grant Thornton Won in the First-Instance of the Civil Lawsuit of Brand Right Protection

January 27, 2022

Case Summary:

Grant Thornton, formerly known as Beijing Accounting Firm, was established in 1981. It is the first accounting firm in Beijing since the reform and opening-up and is one of China's first accounting firms. It has gradually developed into a comprehensive business consultant that can provide a full range of professional services such as auditing, taxation, consulting, appraisal and valuation, and project management. In 2009, Grant Thornton Joined GTIL (Grant Thornton International Ltd) and became the only member firm of GTIL in China. In 2012, it officially changed its name to "Grant Thornton (Zhi Tong)", and "(Zhi Tong Guo Ji)" has become its only Chinese name used in the world. Clients of Grant Thornton include Sinopec Group Co., Ltd., Sinopec Xinjiang Energy & Chemical Co., Ltd., Sinopec Engineering (Group) Co., Ltd., Zhongtong Guomai Communication Co., Ltd. and other well-known large domestic enterprises.

Grant Thornton is the owner of the "Grant Thornton (Zhi Tong)" trademark approved and registered on services such as Class 35 accounting, Class 36 financing services, and Class 42 intangible asset assessment, and is authorized by GTIL to use the trademark "" on Class 35 accounting services and the figurative trademark "" on Class 36 financial services, and have the right to defend the rights of these two figurative trademarks. After a long period of extensive publicity and use, the above-mentioned trademarks have gained high recognition and influence.

Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. was established in April 2019 with its registered address in Suzhou Industrial Park. In September 2021 (during the course of the first instance), it was renamed "Cai Xin (Suzhou) Assets Appraisal Co., Ltd.". In 2020, Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. used "" as the icon of its WeChat official account, and used the expression "[致同] (Zhi Tong)" in the "About Us" section at the end of articles published on the official account. In addition, Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. also abbreviated the company as "Zhi Tong Appraisal" in the "Company Profile" section of its official website, and used the word "致同 (Zhi Tong)" and logo "" on the first page of the "Asset Appraisal Report" issued by it. Before the name change of Cai Xin, the full name of "Zhi Tong (Suzhou) Assets Appraisal Co., Ltd." was used in many places such as the WeChat public account name, official website, company registered address, office, and the "Assets Appraisal Report" issued. Even at the end of the WeChat public account article, it stated that its "headquarter is in Beijing", and declared on the official website that it "has served many well-known domestic and foreign enterprises such as Petro China, Sinopec ..."

Under the circumstance that the warnings did not work, Grant Thornton entrusted Unitalen to file a lawsuit against Zhi Tong (Suzhou) Assets Appraisal Co., Ltd. After accepting the entrustment, mainly starting from the two aspects of the trademark reputation and the infringer's subjective maliciousness, Unitalen lawyers did a lot of preparation work mainly in the two aspects of determining the nature of infringement and quantifying the compensation.

Court Judgment:

After trial, the Suzhou Intermediate People's Court of Jiangsu Province held that Cai Xin's act of using "致同 (Zhi Tong)" and the commercial logo "" constituted trademark infringement, and the use of the brand name "致同 (Zhi Tong)" as its corporate name and publicity constituted unfair competition. The declaration that its "headquarter is in Beijing" and "has served many well-known domestic and foreign enterprises" constituted unfair competition of false advertising that misled the public, Thus, the court ordered Cai Xin to immediately cease the infringement on the disputed trademark and unfair competition, and publish a statement to eliminate the impact, and compensate Grant Thornton for its economic losses and reasonable expenses totaling RMB 1 million.

After receiving the first-instance judgment, Cai Xin once took the initiative to contact Grant Thornton to express its willingness to obey the first-instance verdict, and tried to communicate about the execution and settlement of the judgment. It has now appealed against the first-instance judgment under the condition that the communication between the two sides failed.

Typical Significance:

This case is Grant Thornton's first right protection case through civil prosecution for brand protection. Through this right protection, not only its legal rights and interests are initially protected, but other infringers and potential infringers can also be deterred to a certain extent.