Bonneterie Cévenole stops unauthorized use of famous MONTAGUT marks
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The Shanghai High People’s Court has upheld an injunction in favour of Bonneterie Cévenole Sarl, the owner of the famous trademark MONTAGUT, prohibiting the unauthorized use of the mark by Chinese company Shanghai Mengjiao Investment Management Co Ltd.
Bonneterie Cévenole owns Chinese registrations for:
- the word mark MONTAGUT;
- the figurative mark MONTAGUT (and flower design); and
- the word mark MONTAGUT in Chinese characters.
The marks were registered for goods in Class 25 of the Nice Classification (clothing) as early as 1986.
In late 2005 Bonneterie Cévenole became aware that Shanghai Mengjiao was using the marks on a website to promote its laundry business. In 2007 Bonneterie Cévenole filed suit with the Shanghai Second Intermediate People’s Court, seeking an injunction and damages against Shanghai Mengjiao. A hearing was held in January 2008 and the court issued its decision in February 2008.
Before the court, Bonneterie Cévenole submitted that Shanghai Mengjiao had infringed its registered trademarks in China. As Bonneterie Cévenole’s registrations for the MONTAGUT marks did not cover laundry services, it argued that its trademarks were well known in China and should thus be protected with regard to dissimilar goods and services. In support of this argument, Bonneterie Cévenole submitted voluminous evidence of use of its word and figurative marks in China.
Bonneterie Cévenole also argued that Shanghai Mengjiao’s activities contravened the Chinese Anti-unfair Competition Law. According to Bonneterie Cévenole, Shanghai Mengjiao’s use of the MONTAGUT marks would mislead the public into thinking that Shanghai Mengjiao was related to or associated with Bonneterie Cévenole. Therefore, use of the MONTAGUT marks by Shanghai Mengjiao caused damage to Bonneterie Cévenole’s business.
In view of the evidence of extensive use of the MONTAGUT marks, the court held that the marks were well known in China and were thus entitled to extended protection. The court concluded that Shanghai Mengjiao’s unauthorized use of the MONTAGUT marks for laundry services infringed Bonneterie Cévenole’s rights in its well-known trademarks. The court also held that Shanghai Mengjiao’s use of the marks constituted an act of unfair competition. Therefore, the court ordered that Shanghai Mengjiao:
- immediately cease all use of the MONTAGUT marks; and
- pay costs and damages to Bonneterie Cévenole in an amount of Rmb500,000.
Shanghai Mengjiao subsequently appealed to the Shanghai High People’s Court. However, it failed to appear at the appeal hearing. The High People’s Court assumed that Shanghai Mengjiao did not wish to pursue the appeal and upheld the decision of the lower court.
Philip Tsang, Marks & Clerk Hong Kong Incorporating Lloyd Wise, Hong Kong
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