[introduction of the lawyer in this case]
Wang Xiyu, partner of Liaoning Tongfang law firm, mainly engaged in construction engineering, real estate, civil and commercial litigation, corporate business, bankruptcy business, intellectual property business, etc. During his practice, he represented a large number of litigation cases, provided legal support for many customers, and had rich experience in the construction field.
[referee points]
MCM entrusted its agent to purchase the goods involved in the case twice from shop XX in the east of a shopping mall. The marks printed on the goods involved are the same as those of the plaintiff's registered trademark, and the alleged infringing goods are all within the scope of category 18 goods approved and used by MCM's registered trademark. The operator cannot explain the legal source of the goods involved, and its sales behavior infringes on the plaintiff's exclusive right to use the registered trademark, and shall bear the legal responsibility for stopping the infringement and compensating for the losses.
According to the provisions of the trademark law, it is also an act of infringing upon the exclusive right of another person's registered trademark to deliberately provide convenience for the act of infringing upon the exclusive right of another person's registered trademark. Wang Mou, the seller of the infringing goods involved in the case, is a merchant of a shopping mall. As the initiator and manager of the market involved, a trading company has the responsibility to maintain the market operation order, protect the legitimate rights and interests of consumers, and guarantee the quality of goods. It also has the legal obligation to inspect and monitor the operators and the goods sold and services provided. After MCM sent a written letter stating that it knew the fact that the stalls and other operators of a trading company were selling the infringing goods in its market, a trading company failed to take effective measures to stop the infringing sales in its market, resulting in MCM still purchasing the infringing goods from the stalls operated by Wang during the second public security purchase. Therefore, a trading company subjectively knew or should have known that the stall of the defendant Wang involved in the case had infringed upon the right to use the registered trademark of MCM company, and objectively provided it with business premises and market operation convenience. The behavior of a trading company was at fault, and it was also an infringement of the exclusive right to use the registered trademark of MCM company. It should bear joint and several liability for the losses caused by Wang's infringement.
[basic case]
MCM brand was founded in 1976 in Munich, Germany. It is a designer and manufacturer of high-end leather goods, jewelry and other products. MCM company is the owner of the "" series trademark. The "" trademark has been widely publicized and used, and enjoys a high market reputation in the world, including Chinese Mainland. In order to provide quality guaranteed products to consumers, MCM only sells its products through its direct sales network, which includes the plaintiff's official website and the exclusive stores listed on the website. Up to now, MCM has set up more than 90 stores in major cities in Chinese Mainland, all of which are located in well-known high-end shopping malls in Chinese Mainland, and spread across the first and second tier cities, forming a good physical publicity and sales platform.
On February 25, 2016, MCM company entrusted its agent to buy a wallet with a counterfeit plaintiff's registered trademark at shop XX in the east of a shopping mall, with a transaction price of 400 yuan.
On April 18, 2016, MCM company issued a warning letter to a trading company, clearly informing a trading company of the fact of selling counterfeit goods at No. XX shop in the east of a shopping mall, requiring it to take practical and effective measures to stop the merchants from selling counterfeit goods, and conduct a major inspection in the market to thoroughly investigate and deal with the commodities that sell counterfeit MCM company's registered trademark, so as to ensure that there is no infringement of the exclusive right of MCM company's registered trademark in any form in the market.
On June 27, 2016, MCM company entrusted its agent to purchase a wallet counterfeit MCM company's registered trademark at shop XX in the east of a mall, with a transaction price of 400 yuan. The defendant sold goods infringing the plaintiff's exclusive right to use the registered trademark at No. XX shop in the east of a shopping mall. A trading company failed to fulfill its management obligations and provided convenience and assistance for the infringement of No. XX shop in the east of a shopping mall. In order to protect the legitimate rights and interests of MCM company, it sued the court.
[judgment result]
1、 The defendant Wang and a trading company immediately ceased to infringe upon the exclusive right of the plaintiff MCM Holding AG No. g623685 and No. 1927130 registered trademarks from the effective date of this judgment;
2、 Within 10 days from the effective date of this judgment, the defendant Wang will compensate the plaintiff MCM Holding AG for the economic losses and reasonable expenses incurred to stop the infringement, totaling 50000 yuan;
3、 The defendant's trading company shall bear joint and several liability for the second item of the above judgment;
4、 Other claims of the plaintiff MCM Holding AG were rejected.
[reasons for adjudication]
The court held that MCM was registered in Switzerland, and the alleged infringement occurred in Shenyang City, Liaoning Province, the people's Republic of China. MCM chose to file a lawsuit in a Chinese court. According to the provisions of articles 48 and 50 of the law of the people's Republic of China on the application of law on foreign related civil relations, the ownership, content and tort liability of intellectual property rights shall be governed by the law of the place where the protection is requested. For tort liability, the parties may also choose to apply the law of the court after the occurrence of the tort. This case shall be governed by the laws and regulations of the people's Republic of China.
On whether the defendant Wang's behavior constitutes infringement. MCM company has obtained the exclusive right to use No. g623685 and No. 1927130 registered trademarks after registration. Its legal rights are protected by law. Using the same trademark as its registered trademark on the same commodity without the permission of the trademark registrant is an infringement of the exclusive right to use the registered trademark. MCM entrusted its agent to purchase the goods involved in the case twice from shop XX in the east of a shopping mall. The marks printed on the goods involved are the same as the plaintiff's No. g623685 and No. 1927130 registered trademarks, and the alleged infringing goods are within the scope of category 18 goods approved for use of MCM's registered trademarks. Wang, the operator of shop XX, cannot explain the legal source of the goods involved, and his sales behavior infringed the plaintiff's exclusive right to use the registered trademarks, It shall bear the legal liability for stopping the infringement and compensating the losses.
On whether a trading company should bear the responsibility. According to the provisions of China's trademark law, it is also an act of infringing upon the exclusive right of another person's registered trademark to deliberately provide convenient conditions such as storage, transportation, mailing and concealment. Wang, the seller of the infringing goods involved in the case, is a merchant of Liaozhan clothing city. As the initiator and manager of the market involved, a trading company has the responsibility to maintain the market operation order, protect the legitimate rights and interests of consumers, and guarantee the quality of goods. It also has the legal obligation to inspect and monitor the operators and the goods sold and services provided. After MCM sent a written letter stating that it knew the fact that the stalls and other operators of a trading company were selling the infringing goods in its market, a trading company failed to take effective measures to stop the infringing sales in its market, resulting in MCM still purchasing the infringing goods from the stalls operated by Wang during the second public security purchase. Therefore, a trading company subjectively knew or should have known that the stall of the defendant Wang involved in the case had infringed upon the right to exclusive use of the registered trademark of MCM company, and objectively provided it with business premises and market operation convenience. The behavior of a trading company was wrong, and it was also an infringement of the right to exclusive use of the registered trademark of MCM company. It should bear joint and several liability for the losses of MCM company caused by Wang's infringement. The plea of a trading company that it has fulfilled its obligations of market management and supervision lacks factual and legal basis, and the court will not support it.
As for the amount of compensation, MCM company failed to provide evidence to prove the losses it suffered due to infringement, and requested the court to determine the amount of compensation for shop XX in the east of a shopping mall and a trading company by applying the statutory compensation method. The quantity of infringing goods sold by shop XX in the east of a shopping mall and the infringing profits cannot be ascertained. Therefore, the amount of compensation shall be determined in accordance with the provisions of paragraph 3, Article 63 of the trademark law by applying the statutory compensation method. In view of the high popularity of the registered trademark of MCM company, the amount of compensation shall be determined as appropriate in consideration of the repeated infringement, subjective malice, fault degree and other factors of a shop at No. XX in the east of a shopping mall. MCM claims that the fees paid to stop infringement are too high, and supports its reasonable part.
[relevant provisions]
Tort liability law of the people's Republic of China
Article 2 anyone who infringes upon civil rights and interests shall bear tort liability in accordance with this law.
The civil rights and interests mentioned in this Law include personal and property rights and interests such as the right to life, the right to health, the right to name, the right to reputation, the right to honor, the right to portrait, the right to privacy, the right to marital autonomy, the right to guardianship, the right to ownership, the usufructuary right, the right to security, the copyright, the patent right, the right to exclusive use of trademarks, the right to discovery, the right to equity, and the right to inheritance.
Article 6 an actor who infringes upon the civil rights and interests of others due to his fault shall bear tort liability.
Article 9 Anyone who instigates or helps others to commit a tort shall bear joint and several liability with the actor.
Article 15 the ways to bear tort liability mainly include:
（1） Cessation of infringement;
（6） Compensation for losses;
The above ways of assuming tort liability may be applied separately or in combination.
Trademark law of the people's Republic of China (amended in 2013)
Article 57 Any of the following acts shall constitute an infringement of the exclusive right to use a registered trademark:
（1） Using the same trademark as its registered trademark on the same commodity without the permission of the trademark registrant;
（3） Selling goods infringing upon the exclusive right to use a registered trademark;
（6） Intentionally providing convenience for the infringement of the exclusive right of another person's trademark and helping others to carry out the infringement of the exclusive right of trademark;
Article 63 Where it is difficult to determine the actual losses suffered by the obligee as a result of the infringement, the interests gained by the infringer as a result of the infringement, or the license fee for the use of a registered trademark, the people's court shall, according to the circumstances of the infringement, make a judgment to pay compensation of not more than three million yuan.
Law of the people's Republic of China on the application of laws to foreign related civil relations
Article 48 the ownership and content of intellectual property shall be governed by the law of the place where the protection is sought.
Article 50 the liability for infringement of intellectual property rights shall be governed by the law of the place where the protection is sought. The parties may also choose to apply the law of the place of the court by agreement after the infringement occurs.
Interpretation of the Supreme People's Court on the jurisdiction and legal application of trademark cases after the implementation of the decision on Amending the Trademark Law
Article 9 except as otherwise provided in this interpretation, the provisions of the trademark law before the amendment shall apply to the Trademark Civil cases accepted by the people's court after the implementation of the decision on the amendment of the trademark law, which involve acts occurring before the implementation of the decision; The provisions of the revised Trademark Law shall apply to acts that occur before the implementation of the decision and continue after the implementation of the decision.
[lawyer's opinion]
As the agent of a trading company in this case, after receiving the entrustment, the author reviewed the files and verified the relevant information with the parties. After analysis, the author believes that the infringement facts in this case are clear. The only starting point is whether the party has fulfilled its management obligations and the amount of claim raised by the plaintiff is too high. Although the people's court finally ruled that the party was jointly and severally liable, the amount of compensation was reduced to the satisfaction of the party through the full communication between the agent and the people's court. This case has brought some enlightenment to the agency trademark infringement case. Now I share it with you.
（1） Acceptance of cases
First of all, the court of jurisdiction of the case should be clearly defined, that is, which court the case is filed and tried, and whether it is the place of tort or the defendant's residence. This needs to be determined so as to facilitate the smooth progress of the later litigation. According to the interpretation of the Supreme People's Court on the jurisdiction and application of law in trademark cases after the implementation of the decision on the revision of the trademark law, Article 3 civil cases of first instance shall be under the jurisdiction of the people's courts at or above the intermediate level and the basic people's courts designated by the Supreme People's court. Civil and administrative cases involving the protection of well-known trademarks shall be under the jurisdiction of the intermediate people's courts of the cities where the people's governments of the provinces and autonomous regions are located, cities specifically designated in the state plan, and municipal districts directly under the central government, and other intermediate people's courts designated by the Supreme People's court. Therefore, as the lawyer of the trademark owner, the competent court of the case should be fully considered. First of all, we should consider choosing a court that is convenient for the parties to bring a lawsuit, so as to control the cost of protecting the rights of the parties.
（2） What are the demands of the parties
According to the tort liability law, trademark infringement cases generally involve appeals for cessation of infringement and compensation for losses. In specific cases, lawyers should take care to help the parties grasp and refine their appeals.
1. The scope of cessation of infringement. Trademark rights disputes have diversity in the form and scope of infringement, which may be on infringing goods, as well as on advertising, logo, company website, Direct stores, sales agent stores, franchised stores, etc. Therefore, the carrier content and method of stopping infringement must be clearly defined in the lawsuit request to prevent omissions and avoid repeated lawsuits or single lawsuit can not solve similar infringement problems.
2. Compensation for losses. According to the provisions of the Trademark Law of the people's Republic of China, the amount of compensation for infringement of the exclusive right to use a trademark shall be determined according to the actual losses suffered by the obligee due to the infringement; Where the actual loss is difficult to determine, it may be determined according to the interests gained by the infringer as a result of the infringement; Where it is difficult to determine the loss of the obligee or the benefit obtained by the infringer, it shall be reasonably determined by reference to the multiple of the trademark license fee. If the case of malicious infringement of the exclusive right to use a trademark is serious, the amount of compensation may be determined at more than one time and less than three times the amount determined according to the above method. Where it is difficult to determine the actual losses suffered by the obligee due to the infringement, the interests gained by the infringer due to the infringement, and the license fee for the use of the registered trademark, the people's court shall, according to the circumstances of the infringement, make a judgment to pay a compensation of not more than three million yuan. Therefore, for the losses caused by trademark infringement, the plaintiff needs to provide corresponding evidence to prove the corresponding economic losses when filing a claim. Of course, such losses are generally difficult to obtain, which requires lawyers and parties to fully communicate and take effective measures to determine the economic losses.
3. The cost of safeguarding rights. This expense is clearly stipulated in the trademark law, and the amount of compensation shall include the reasonable expenses paid by the obligee to stop the infringement. Reasonable expenses here generally include attorney's fees, investigation and evidence collection fees, notarization fees, case acceptance fees, etc.
（3） Collect and organize evidence, draft complaint, list of evidence and prepare for prosecution
In the process of evidence collection, in order to ensure that the evidence can be used in the court trial, it is suggested to contact the notary office in advance to collect the infringement evidence related to the infringers, save it in the form of notarization, and make corresponding notarial documents. At the same time, prepare corresponding trademark ownership certificates to prove that the plaintiff is a legitimate trademark owner, such as trademark information, trademark certificate, trademark transfer certificate, etc. on the national trademark network. In this case, the plaintiff purchased the goods involved in the case twice from shop XX in the east of a commercial city through fair purchase, so as to determine the evidence and finally achieve the purpose of the people's court supporting the original application.
（4） Court trial preparation after case acceptance
After the case is accepted by the court and the court session is decided, the work that the attorney needs to do is how to prove the defendant's infringement in the court session. The author believes that the following aspects can be started:
1. Whether the trademark used by the defendant is graphics, letters or a combination of the two, and whether it is the same or similar to the trademark of the plaintiff, so as to confuse the public with the real and disturb the judgment ability of the buyer; At the same time, the trademark pronunciation can be compared with the trademark pronunciation of the plaintiff, whether the pronunciation is the same, and whether the English alphabet is used to replace the Chinese Pinyin for confusion.
2. Whether the products of which the defendant uses the trademark are the same as the goods approved by the plaintiff for use of the trademark, or similar goods. Similar commodities refer to commodities with the same functions, uses, production departments, sales channels, consumption objects, etc., or which are generally considered by the relevant public to have specific links and easily cause confusion.
3. The defendant's subjective purpose of infringing trademark rights. The defendant infringed the plaintiff's trademark right