Double Rider Medicine Co., Ltd. (hereinafter referred to as Double Rider company) is the right holder of the registered trademark "双飞人". The trademark is approved for use on goods in Class 3 including toilet water, cosmetics, etc. Meanwhile, Double Rider company is also the right holder of the two three-dimensional trademarks "双飞人" approved for use in peppermint aqua products. Haribo Ricqles Zan has the registered trademark "Lijia" designated for use on goods in Class 3. Guangzhou Laites Business Consulting Co., Ltd. (hereinafter referred to as Laites company) is the sole agent to advertise, promote, distribute and sell Lijia peppermint cure and other "Lijia" brand cosmetics in China. Double Rider company filed a lawsuit with the court on the ground that the production and sales of Lijia peppermint cure by Laites company infringed on the exclusive right of its registered trademark and at the same time Laites company carried out unfair competition. The court of first instance held that Lijia peppermint cure and "peppermint aqua" approved for use by the "双飞人" trademark belong to the same commodity. Through comparison, the packaging of the sued infringing product is similar to the three-dimensional trademark of Double Rider company and may cause confusion and misunderstanding among the relevant public. Laites company infringed the exclusive right of the three-dimensional trademark of Double Rider company. At the same time, in order to achieve commercial purposes, Laites company emphasized in the product publicity that its products are "双飞人" products (RICQLES peppermint cure), which constitutes an infringement of the word trademark "双飞人". In addition, the packaging and decoration of Lijia peppermint cure is similar to the packaging and decoration of well-known products of Double Rider company, and the act of Laites company constitutes unfair competition. Laites company refused to accept and filed an appeal. The second instance court rejected the appeal and upheld the original judgment. Laites company applied to the Supreme People's Court for retrial. The Supreme People's court held in the retrial that the evidence submitted by Laites company can prove that Haribo Ricqles Zan published the advertisement of "RICQLES peppermint cure" in newspapers in some areas of Chinese Mainland since the 1990s, which lasted for a long time and has a large distribution area and circulation volume, which can prove that the "blue, white and red" packaging used by Haribo Ricqles Zan for the priorly used "RICQLES peppermint cure" has a certain impact. Double Rider company knew that "RICQLES peppermint cure" existed in the market, but maliciously applied for registration of a three-dimensional trademark similar to the packaging of "RICQLES peppermint cure" and exercised its rights. It is hard to say that its act is justified, and the defense for prior use of Laites company is established. Double Rider company's claim that Laites company constitutes infringement of the exclusive right of registered trademark and unfair competition cannot be established. The Supreme People's Court therefore made a judgment to cancel the judgments of the first and second instance, and rejected the claims of Double Rider company.
The case involves the examination of the defense of prior use right of the trademark. The prior use right defense system aims to protect the interests of bona fide prior users to continue to use their influential business marks within the original scope, and is an important embodiment of the principle of good faith in the field of trademark law. The retrial judgment effectively protects the use rights and interests brought by the honest operation, and is a beneficial exploration for the people's court to strengthen the construction of the honest system of intellectual property litigation.
(Source of case: Supreme People's Court of the People's Republic of China)