Luxury brand owner successfully enforces its rights

China
The Beijing First Intermediate People’s Court has handed down a judgment in favour of well-known trademark owner Cartier International NV.

Cartier sued Shanghai A-Zenith and Beijing A-Zenith (collectively A-Zenith, as these are related companies), alleging that A-Zenith had:
  • infringed Cartier's registered marks CARTIER and ??? by using them without authorisation on furniture; and
  • made false and misleading online advertisements which associated the marks with the furniture sold by A-Zenith.
Cartier also sued Beijing Easyhome Gold Source Household Building Materials Market for selling the infringing furniture in physical stores. 
 
A-Zenith argued that:

  • it had never used the marks on furniture;
  • the marks were used by Cartier on jewellery; and
  • A-Zenith was selling only furniture.
A-Zenith further argued that:
  • it had not infringed the marks, nor made any false or misleading advertisements;
  • Easyhome did not sell or distribute the infringing furniture; and
  • Easyhome had asked its tenant (A-Zenith) to remove the marks from the shop signs.
The Beijing First Intermediate People’s Court first recognised that CARTIER has been a well-known mark in respect of jewellery since 2004.

The court then accepted that, on the facts, the marks were not used on the furniture itself. However, the court found that A-Zenith did use the marks on shop signs and did make false and misleading online advertisements associating the marks with the furniture.
 
A-Zenith knew that the marks were well known in respect of jewellery. Therefore, by using these on online advertisements, A-Zenith had committed an act of unfair competition. The court also held that, since Easyhome had previously asked A-Zenith to remove the marks from the shop signs, it was not liable for trademark infringement.
 
The court ordered that A-Zenith:
  • remove the marks in all its business dealings and advertisements;
  • publish a statement of apology to negate the diluting and negative influence of the infringing use of the marks; and
  • pay Cartier Rmb150,000 in compensation.
This decision is yet another victory for well-known mark owners - it bodes well for the future of enforcement of trademark rights by luxury brands and multinationals in the Chinese mainland.
 
Ai-Leen Lim, Bird & Bird IP (Beijing) Co Ltd, Beijing and Hong Kong

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