On Oct 27, 2022, Beijing IP Court in an appeal case confirmed the first instance court decision and awarded Continental Tire China damages of RMB 4.5 million (~US$ 643,000) plus reasonable expenses of RMB 250,000 (~US$ 36,000). The court found defendants committed trademark infringement and unfair competition.
Continental Tire Germany owns registered Chinese trademarks Nos. 13111679A (Fig 1) and 1121138 (Fig 2) in class 12 for vehicle tires, etc., and licensed these trademarks to Continental Tire China for use in China and authorized it to enforce these trademarks independently.
Mapai Autoparts (Jiangxi) Co., Ltd. was found to have made and sold products such as engine oil, brake fluid, antifreeze, cleaning agent and wipers. Logos as shown in Fig 3 and Fig 4 were found on the products, packages, brochures, invoices or websites. Beijing Bangda Yuexing Trading Co., Ltd. was found to be a distributor of Mapai Autoparts (Jiangxi) and have sold these products. Fig 3 is the Chinese trademark No. 15725091 owned by Mapai Jiangxi which was later invalidated.
The Beijing IP Court held that with the general attention of the relevant public, the accused infringing logos (Figs 3 and 4) and Continental's two trademarks (Figs 1 and 2) all have the elements of the horse figure and the double-ring, and the design and overall visual effect are similar. Hence the accused infringing logos are similar to Continental's trademarks.
The Beijing IP Court further held that even though Continental's two trademarks have both been approved in class 12 for vehicle tires while the alleged infringing products are automobile oil, brake fluid, antifreeze, cleaning agent and wipers, the alleged infringing products are auto parts and maintenance commodities. Although the former and the latter five type of products have differences in functional uses, they are highly overlapping in terms of sales targets, sales channels, and consumption places, and have strong correlations. Since Continental's two trademarks have a certain reputation in tire products, Maipai Jiangxi's use of the accused infringing logos on the five types of products easily causes the relevant public to associate the products with Continental and think that the products have certain connections with Continental, and hence causes confusion and misunderstanding. Therefore, the make and sale of the alleged infringing goods by Mapai Jiangxi constituted trademark infringement.
As explained by the Beijing IP Court, although the accused infringing goods and the approved goods of Continental's two trademarks are not in the same class according to "Chinese Classification Table for Similar Goods and Services", when determining whether the goods constitute similar goods, this table should be used only for reference, and the judgment of similar commodities should be made according to the actual situation.
Furthermore, Mapai Jiangxi Company use "Mapai" in the business name and "Mapai" is the Chinese name of "Continental". The court ruled that Maipa Jiangxi had obvious intention to take advantage of the goodwill of Continental, which constituted unfair competition.
In addition, Mapai Jiangxi and Nanchang Lubricant Company have the same legal representative and same office. The court found that Nanchang Lubricant Company constituted joint infringement. Bangda Yuexing sold the infringing products. The court ruled that although it proved its legitimate source, it failed to fulfill due diligence and should be jointly liable for compensation.
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