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Trademarks Infringement - world judicial practice

International trademark infringement cases commonly result from the use of linguistically or phonetically similar words or phrases in another language. However in some cases they result from companies specifically copying profitable and well-known brands to increase their business.

“Borrowing” the branding of another company can bring financial gain and increased exposure to a lesser-known, local company. However, positioning a company to profit off of the branding of another does not come without repercussions. That being said, some companies will still try to get away with it.


1. South Korea: Louis Vuitton vs. Louis Vuiton Dak
Verdict in favor of Louis Vuitton


In one of the more shocking examples of international trademark infringement, a South Korean fried chicken restaurant recently lost a trademark battle with designer Louis Vuitton.


The court ruled in the designer's favor after determining that the restaurant's name of Louis Vuiton Dak was too similar to Louis Vuitton. In addition to the name infringement, the restaurant's logo and packaging closely mirrored the designer's iconic imagery.


The restaurant, ‘Louis Vuitton Dak,’ is a play on the designer name and the Korean word for whole chicken, tondak.


Louis Vuitton had the court ban the restaurant from using his brand name, as it “damaged the originality and value of the French brand.”


Kim came up with a new name for the restaurant, "chaLOUISVUI TONDAK," and Louis Vuitton demanded 14.5 million won (USD 12 750) from Kim for breaking compliance for 29 days.

The court once again ruled in the brand’s favor, stating that although he changed the name with different spacing, the two names sound almost the same. So he violated the court order and should pay the money.


2. US: Academy Awards vs. GoDaddy
Verdict in favor of GoDaddy


In a cybersquatting case that lasted more than five years, the Academy of Motion Picture Arts and Sciences has suffered a landmark loss to GoDaddy with a judge ruling in the domain registrar giant's favor.


The Academy had hoped to win as much as $30 million and looked to be the heavy favorite given earlier rulings in the case. Initially, the Academy managed to demonstrate in court that 57 domains out of 293 were sold by GoDaddy with the potential for confusion, since they were confusingly similar to their trademarks. However, a U.S. District Court Judge decided there were a lack of proof that GoDaddy had a bad faith intent to traffic in trademarks like the "Academy Awards" and "Oscars".


The lawsuit was targeted GoDaddy for allowing customers to buy domains like 2011Oscars.com or betacademyawards.com, "park" that page and collect a portion of revenue from GoDaddy's advertising partners on a pay-per-click basis.


GoDaddy's program hardly made any money. Domains like academyawardbuzz.com generated just a few hundred dollars in advertising revenue and less than 50,000 page impressions in total. Nevertheless, it triggered litigation that lasted half a decade. Many saw this as a test case in the cybersquatting arena.


Towards the end of the lengthy ruling, the judge says there is a "fundamental problem" with the Academy's theory of liability under the Anticybersquatting Consumer Protection Act. He writes, "It confuses GoDaddy’s technical capacity to filter all trademarks with AMPAS’s legal duty to police its own trademarks. At its core, AMPAS’s ACPA claim would impose upon GoDaddy (and presumably any other company offering parking, hosting, or other basic internet services) the unprecedented duty to act as the internet’s trademark police. The ACPA did not impose such sweeping obligations".


Julia Nikoleva's remark: The Anticybersquatting Consumer Protection Act is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The law was designed to thwart “cybersquatters” who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party.


3. China: 3M vs. 3N
Verdict - in favor of 3M

A Chinese court recently ordered a Chinese company that had blatantly infringed one of the world's better known trademarks to pay significant damages to the trade mark owner. African companies that have heeded their lawyers' advice and registered their trade marks in China should take heart from this.


The facts in this case are simple. The 3M Company has two Chinese trade mark registrations for the trade mark 3M. These registrations are in class 17 and they cover "thin sheets or strips made from retro-reflective materials" and "retro-reflective plastic film other than for packing (to improve and boost visibility and safety)". A subsidiary, 3M China Ltd, is a licensed user of the trademarks, and it has been manufacturing and distributing 3M retro-reflective marking products in China since 2004.


A local company, Changzhou Huawei Advanced Material Co Ltd ("Huawei"), filed an application to register the less-than-original trade mark 3N in class 19 for a range of goods. 3M opposed this application but the trade mark authorities accepted the application for a limited specification. 3M took this decision on appeal to the Trademark Review and Adjudication Board which upheld the opposition.


3M also launched trade mark infringement proceedings in the Hangzhou Intermediate Court. It sought all the usual relief – an injunction, damages and legal costs. Huawei defended this action by raising some interesting defences. It said that the trademarks 3M and 3N were not similar and, even if they were, they wouldn't be confused. This is because it had been using the trade mark 3N for a number of years on goods that were cheaper than 3M's, and that it had, in the process, built up a stable market. Finally, it said that it had never intended to infringe the trade mark 3M – as part of this argument, it claimed that 3N comprised the initials of the company's corporate philosophy or slogan, which was "New Concept, New Technologies, New Products".


The court of first instance found for 3M. It made the point that the 3M mark was distinctive and well known. It said that as the trade marks were visually similar, there was a likelihood of confusion or, at very least, association. Further, it said that the infringement was clearly intentional because the company had never promoted its apparent slogan.


The court issued an injunction ordering the company to stop selling goods under the trade mark 3N and it ordered Huawei to pay 3M's legal costs.


Huawei took this decision on appeal, but the Zhejiang High Court upheld the decision. It said that it would be quite wrong for a court to recognise the defence that there would be no confusion because of the considerable market share and client base that the alleged infringer company had acquired through its unlawful conduct. Recognising this would simply be sending this message to other potential infringers – go big or go home!


4. India: Zara fashion vs. Zara food
Verdict – in favor of fashion


One is a well-known fashion brand, operating all across the world; the other was a restaurant operating in a single Indian city. Would any consumer confuse one for the other — or assume that the restaurant was started by the fashion brand? The Delhi High Court thought so. This was so because the fashion brand Zara, which opened its first store in India in 2010, had a presence (through a joint venture) in the country since 1986 and had even applied for a few trademarks. The restaurant now operates simply as The Tapas Bar.


The Honorable High Court of Delhi granted an injunction, restraining the defendant from the use of the plaintiff’s well-known trademark ZARA as a part of the defendant’s mark, ZARA Tapas Bar.


The Court emphasized the defendant’s bad faith intent, which the Court said was evident from the defendant’s website advertising the mark. The Court observed that the word “ZARA” was used in such a manner that it was almost 10 times bigger than other words following it. In certain places, the said word was used per se, leaving no doubt of it being identical/deceptively similar to the plaintiff’s well-known mark.


The Court held: “If the Defendants did not want to ride on the plaintiff’s reputation, they would have not used the word ZARA prominently in the words ”ZARA Tapas Bar” or ”ZARA, the Bar and Restaurant”.


With respect to the issue of ZARA being common to trade, the Court observed that the defendant could not establish the generic nature of the word ZARA. Further, the plaintiff provided several registrations in its name for the mark ZARA, whereas the defendant relied on 46 third-party registrations for marks it contended to be similar/identical to ZARA, which according to the Court was misconceived, as the words HAZARA, KEWDA, ZARATOR, LOZAR-A, etc. were sought to be claimed similar to the word ZARA by the defendant.


The Court held: “We are living in the 21st century. At least since the beginning of this century, there is widespread dissemination of information through the Internet and television. ZARA was catering to the middle class and higher middle class. Consumers in India cannot be unaware of the plaintiff’s company and its product”.


5. India: Eclairs Cadbury’s or everyone’s?
Verdict – in favor of everyone’s


Cadbury is very particular about intellectual property. In some jurisdictions, it even owns the right to the use of a shade of purple on chocolate wrappers. In India, it had registered three trademarks containing the word Eclairs (Chocolate Eclairs, Orange Flavoured Chocolate Eclairs and Chocolate Eclairs Pop). All three names were, however, not in use despite being registered way back in 1972.

In a win for ITC Ltd, the Intellectual Property Appellate Board (IPAB) said that Cadbury India is no longer the owner of the three trademarks, putting to rest over a decade-old battle.


The three trademarks were ordered to be removed from the trademarks registry as the patent board found that Cadbury could not provide evidence showing the use of the three trademarks after they were registered.


The only defence of the respondent is that they are registered proprietors both in India and abroad.


Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the ground of non-use, or if there has been no proof of use for a period of five continuous years from the date of application for registration of the trademark.


It is puzzling why Cadbury could not provide proof of usage, given that usage can be proved by giving evidence of advertisements of the product and showing proof that it was available in the market.


This, however, does not mean Cadbury will no longer be able to use the word Eclairs on their products. You do not need registration to use a name. Éclair is a common word and everyone is entitled to use it.


6. London Dairy vs. Londonderry
Verdict – in favor of Londonderry


London Dairy sells premium quality ice cream. Londonderry sells inexpensive confectionery items.


Phonetically, they are the same. However, all the rest except the sound of the brand is different.



















The order held there to be no visual or structural similarities between the products, and, for the want of demonstration of deceit or misrepresentation or differences in color, trade dress, the goods and their pricing, sided with the defendant (Londonderry).


7. Bata vs. Bata
Verdict – in favor of foam materials


In the 1980s, the shoe maker Bata wanted to stop a company marketing foam materials from operating under the same name. The judge asked, “How would the customers know that Bata is not producing foam?” The judge reasoned that it is reasonable to assume that a customer would not ask a seller whether the product is manufactured by the shoe maker.

For this reason, Bata the foam producer, won the case, despite the fact that its domain is completely different.


8. China: Qiaodan Sports Co. vs. Michael Jordan
Verdict – in favor of Michael Jordan


Perhaps one of the most well recognized pieces of footwear and its “jumpman” logo faced a case of brand “borrowing” in China.

Whether or not you agree Michael Jordan is the greatest basketball player of all time, he is certainly well-known. And after an over four-year battle, China’s trademark courts have agreed.


Michael Jordan and his JORDAN brand have been a staple of Nike’s shoe and apparel business for over thirty years. Nike so values the “Jumpman” logo that it transcends basketball – the Michigan Wolverines, for example, wear the logo on jerseys for all sports, including football.

But in China, where trademark rights belong to the first party to file a trademark, rather than the first to use, the JORDAN wording has effectively belonged to another company. A sportswear company called Qiaodan Sports owned the rights to the JORDAN mark in Chinese characters – Qiaodan, pronounced “chee-ow-dan,” is a transliteration of JORDAN used in China and elsewhere for over thirty years. Qiaodan operates some 6,000 stores in China, and its associated logos also bear a striking resemblance to the Jumpman logo.


Jordan brought a lawsuit against Qiaodan in 2012, to seek cancellation of Qiaodan’s Chinese-character trademarks and, separately, a suit to enjoin use of those marks in China.


Jordan filed his appeal to China’s Supreme Сourt after his claims were rejected by two lower courts.


The Court found the Chinese character mark for JORDAN should be returned to China’s trademark office (after which, presumably, Jordan can obtain a registration of his own).


In the ruling Qiaodan Sports Co must stop using the Chinese characters for Qiaodan on its merchandise, according to a transcript of court records posted on an official website.


“The decision ensures that my Chinese fans and all Chinese consumers know that Qiaodan Sports and its products have no connection to me” – said Jordan.


What conclusions can be made?


First, it’s advisable to apply for marks in China as soon as practicable. Unlike other jurisdictions (such as the United States), China does not require proof of use for a trademark to obtain registration. Therefore, the concept of a “defensive registration” exists in China, but not the U.S. And in most cases, a trademark may not be challenged on grounds of non-use for three years after registration. So long as some genuine good faith use is made in China during that three-year period, the registration will generally avoid a non-use cancellation.


Second, this should apply equally to the concept of “transliterated” marks in Chinese characters. A Chinese trademark specialist can propose a variety of potential Chinese character marks that are the phonetic equivalent of an English language mark. It’s also possible that consumers in China may already associate a certain combination with your brand as a “de facto” transliteration.


9. Russia: Valio vs. «Баба Валя» (baba Valya)
Verdict – in favor of Valio


The roots of production of the Finnish butter go back to 1908. This year the export of the product to Russia began. Today the butter is exported to about 30 countries.


Around 2014 butter appeared in the Russian stores strikingly resembling the package of Finnish Valio butter. The design of Valio butter package with the image of a girl with a jug on a light background, which is familiar to the Russian consumer, was developed several years earlier.


According to the poll results about 50% of the Russian consumers were misled and confused the two products.

Valio LLC - the Russian branch of the Finnish concern Valio launched a proceeding in the Federal Antimonopoly Service (FAS) Office in St. Petersburg about the similarity to the degree of confusion, misleading consumers and violating the Law on the Protection of Competition.


Consumers, as a rule, are guided by the main, most striking elements of the goods including color and design style, can confuse the outwardly similar packages of “Baba Valya” and “Valio” and purchase one product instead of another.


In support of its attitude Valio LLC provided a comparative analysis performed by a patent attorney, according to which the composition and color-graphic scheme of packages are almost identical.


The defendant, the Russian company «Traditsiya» LLC, disagreed with the plaintiff but during the proceeding altered the package of its butter.

As a result, the FAS order was not issued but despite this, the confusion was established, the defendant was found guilty of unfair competition and violation of the Law on Protection of Competition, and a fine of 110 thousand rubles was imposed on him.


For reference:

Par. 1 of art. 14 of the Law on Protection of Competition prohibits unfair competition.
For such a violation par. 1 of art. 14.33 of the Administrative Code of the Russian Federation stipulates administrative liability in the form of a fine on legal entities in the amount of 100,000 to 500,000 rubles.


In Julia Nikoleva's editing


Original articles:

https://www.trademarknow.com/blog/9-nasty-trademark-infringement-cases-and-how-to-avoid-them

http://www.foxnews.com/food-drink/2016/04/21/louis-vuitton-fried-chicken-knockoff-ordered-to-pay-luxury-retailer-12000.html

https://www.hollywoodreporter.com/thr-esq/film-academy-loses-godaddy-oscars-821998

http://www.mondaq.com/southafrica/x/486460/Trademark/Chinese+Court+Sends+3N+Packing

https://www.inta.org/INTABulletin/Pages/India_7015.aspx

https://www.livemint.com/Companies/v2om2cMruwjp1CPzvPDXyO/Cadbury-loses-trademark-case-on-Eclairs.html

https://www.indiamart.com/proddetail/londonderry-6763989062.html

https://vakilsearch.com/advice/trademark-infringement-india/

https://www.languageconnections.com/blog/blatant-international-trademark-infringement-cases/

https://www.duetsblog.com/2016/12/articles/advertising/jordan-v-qiaodan-the-lessons-of-trademark-enforcement-in-china/

https://www.theguardian.com/world/2016/dec/08/michael-jordan-scores-partial-victory-china-trademark-case-qiaodan

https://vc.ru/flood/20126-baba-valya-fine

https://roscontrol.com/journal/news/valya-protiv-valio-schet-01/

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