Unitalen Represented Trademarks "后" and "the history of 后" of the Korean High-end Cosmetics Recognized as Well-known for the First Time in China by the Judicial System

June 28, 2022

Case brief:

The brand "WHOO后" (including trademarks " ", " ", and " ", etc.) is a sub-brand of LG Household & Health Care Co., Ltd. (hereinafter referred to as "LG H&H"), which means the queen's secret. The WHOO后 brand was first launched in Korea in 2003, and then entered the Chinese market in 2005. As of 2016, cosmetics of the WHOO后 brand have nearly 200 off-line counters opened in 88 cities in China, and have official brand stores on-line in Tmall and JD.com. The product sales covered most provinces and cities in mainland China. With high-quality products and services, the brand has now become one of the top representative brands of Korean cosmetics in the world.

LG H&H has two trademarks claimed in this case, including Trademark No. 4819575 " " (applied for registration in 2005 and approved for registration in 2009) and Trademark No. 9327294 " " (applied for registration in 2001 and approved for registration in 2012) approved for registration on goods of "Moisturizer Lotion; Cosmetics", etc. in class 3.

In 2020, LG H&H found out that a Trading Limited Company in Shenzhen (hereinafter referred to as the "Shenzhen Company") used trademarks "The History of Whoo一后", "The History of Whoo后", "Whoo一后" and "Whoo 后", etc. on the website www.whoo.com, Sina Weibo account "Whoo后", etc. to promote funeral goods and services such as shrouds, wreaths, coffins, cremation urns and the like, and declared to "commit to build the best funeral etiquette and supplies brand Whoo一后 in China". Not only that, since May 2016, the Shenzhen Company has also applied for registration of trademarks "Whoo后", "Whoo一后", and " ", etc. in the classes related to funeral supplies and funeral services of classes 20, 24, 26, 44, and 45, and the trademarks have been approved for registration. The earliest applied trademarks had been announced invalid by the China National Intellectual Property Administration before the first-instance judgment was made; the trademark " " applied for registration on goods of "Cosmetic utensils" etc. in class 21 was rejected. The legal representative of the Shenzhen Company had expressed the willingness to sell the approved and registered trademarks related to "Whoo后" and the domain name "whoo.com" at a price of 2.5 million US dollars.

In 2021, LG H&H filed a trademark infringement lawsuit against the Shenzhen Company with the Shenzhen Intermediate People's Court. After hearing, the Shenzhen Intermediate People's Court supported the claims of LG H&H in ceasing the infringement and eliminating the impact, and awarded compensatory damages in the amount of RMB 450,000 yuan (LG H&H claimed 500,000 yuan). This case is currently in the appeal period.

Determination of the Court:

First, regarding the necessity of being recognized as well-known. The court held that, in this case, the goods and services on which the accused trademarks of the Shenzhen Company are used and the goods on which the trademarks claimed by LG H&H are approved for use are not the same or similar goods and services, which involves the issue of cross-class protection. Therefore, it is necessary for the trademarks to be recognized as well-known in this case.

Second, regarding the possibility of being recognized as well-known. The court held that the evidence in this case could prove that the products of the two claimed trademarks that have been continuously used have huge market influence in terms of market share, sales area, publicity and promotion, etc. and have high brand value, and determined that before the Shenzhen Company applied for registration of trademarks related to "Whoo后", Trademark No. 4819575 " " and Trademark No. 9327294 " " have achieved the well-known state on goods of cosmetics in class 3, and the well-known state has maintained until the alleged act was evidenced and prosecuted.

Third, regarding determining the trademark infringement. The court held that in actual use and publicity, "whoo" and trademark " " and trademark "Whoo 后" often appeared together, and "Whoo" itself is a transliteration of "后". The above trademarks, upon extensive and long-term publicity and use, have formed and continuously deepened the corresponding relationship. The accused trademarks "Whoo一后", "Whoo 后", "The History of Whoo一后" and "The History of Whoo后" constitute reproduction, imitation and translation of the trademarks " " and " ", respectively. Considering the strong distinctiveness and high notability of the trademarks claimed in this case, the relevant public will mistake that the accused trademarks are considerably related to the well-known trademarks of LG H&H involved in this case, which will damage the interests of the trademark registrant. Therefore, the court found that the trademark infringement was established.

Fourth, regarding determining the amount of compensation. The economic losses and reasonable expenses claimed by LG H&H amounted to 500,000 yuan. The court has comprehensively considered factors such as the notability of the trademarks claimed, the circumstances and nature of the alleged infringement act, the reasonable expenses of LG H&H, and the infringement intent of the Shenzhen Company, and determined the economic losses and reasonable right protection costs totaling 450,000 yuan as appropriate.

Typical Significance:

This case not only protects the legitimate rights and interests of LG H&H and protects the brand reputation of WHOO后, but also defeats the malicious infringement act of clinging to the notability of others' trademarks and downplaying and defaming the well-known trademarks. After the " " and " " trademarks were recognized as well-known trademarks for the first time in China, it is believed that in the future, right protection of the WHOO后 brand of LG H&H in China will be unhindered.