CIPN: Local Brewer Uses Carlsberg as Trade Name to Circumvent Direct TM Infringement, Still Nailed by Court
Recently, Beijing Shijingshan District People's Court concluded a trademark dispute between Carlsberg Company and Shandong Jiashibo Beer Company, Shandong Jinfulong Beer Company, ordering the defendants to immediately cease infringement and indeminify Carlsberg 1.08 million yuan in damages and reasonable expense and Jiashibo immediately to stop using "嘉 士 伯" (Note: official Chinese translation of Carlsberg, pronounces Jiashibo in Chinese) in the trade name of the first defendant.
The plaintiff, Carlsberg Company, alleged that its " 嘉 士 伯 " beer is famous in the world and the company obtained many prestigous and still- active registered trademarks carrying either "嘉 士 伯" or "Carlsberg" in Class 32 goods including beer. Jiashibo and Jinfulong produced or distributed beer by infringing its trademark rights without its permission. In addition, Jiashibo used its reputable trademark "嘉士伯" as its trade name and as abbreviation of " 嘉 士 伯 " and "pure European tastes" in promotion and sales pitch, which evidently constituted unfair competition.
The defendants argued that the alleged infringing goods were not produced or distributed by Jiashibo or Jinfulong. Jiashibo's trade name was registered upon approval by the industrial and commercial registration authority by following the established procedures, and is not highlighted in the company's daily operation and shall be conferred the right of name of the legal person of enterprise.
After hearing, the Court found that Plaintiff was the exclusive right holder of seven registered trademarks concerning "嘉士伯" and "Carlsberg and its figure" and the trademarks involved in the case have a high reputation and influence in China. The Court held that Jiashibo and Jinfulong jointly implemented the act of production and distribution of the alleged infringing goods; Jiashibo alone used the same or similar trademark with the trademark in quesiton in its promotion, infringing the registered trademark rights of Carlsberg. Both companies shall cease infringement and pay damages.
Moreover, the Court held that Jiashibo, founded in December 2015, used the registered trademark of the plaintiff as its trade name and engaged in production and transaction of similar goods, which easily led to confusion and misunderstanding among the general public. Its act with a willful intent of using the goodwill of Plaintiff and obtaining unfair competitive advantage constitutes unfair competition. In addition, Jiashibo conducted false promotional activities on its website that would conveniently lead the public to confusion and misunderstanding. Therefore, it should change its trade name to cease unfair competition.
In this connection, the Court made the above-mentioned judgment. As Jinfulong has appealed, the case is hearing.