• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees’ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Clara Elinor Grünewald
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Infringement of a shape of goods in China – Chanel defeated

16. July 2019

Goods in the form of the famous logo with the double C of Chanel were sold by the Chinese jeweler. The IP court had to decide in this trademark dispute whether the infringement of a shape of goods in China is a trademark infringement – and ruled against Chanel.

Chanel

In an investigation initiated in 2016, Chinese officials found goods in a Ye Meng-Zong jewelry store in the form of Chanel’s double “C” logo. Chanel saw this as an unlawful counterfeiting of products and brought an action before the Guangzhou Haizhu District People’s Court (Haizhu Court) for trademark infringement. The court upheld the claim and awarded Chanel damages from Ye in the judgment.

Dissatisfied with the court’s decision, Ye Meng-Zong appealed the decision to the Guangzhou Intellectual Property Court, one of three courts that China has recently created exclusively for intellectual property (IP) judgments.

The IP Court therefore dealt with the question of whether the shape of Yes’s products can be regarded as infringing. Was the double C form used and perceived decoratively or were the pieces of jewellery perceived by the double C as a Chanel brand?
Ultimately, the IP court in Guangzhou had to identify the shape of goods that violate the rights of a registered trademark. The current legal framework through IP judgements in China does not yet provide a clear answer.

 

A Short Look at Chinese Trademark Law

Article 57 of the Chinese Trade Mark Law provides for trade mark infringement where identical or very similar goods are used. Moreover, under Article 58 of the Chinese Trade Mark Law, it is even possible to invoke unregistered trade marks which are, however, well known as trade mark. Infringements in the sense of trademark infringement can be asserted in such a case. But there is no equivalent in Chinese trademark law for the infringement of a shape.

Read more about Chinese trademark law in our articles  “Trademark act reform in China against trademark squatting”  and “Trademark infringement in China: what to do?”

Is the shape of a product part of the product decoration?

Ye Meng-Zong argued that its business is only a franchise shop of Zhoubaifu, ZhouBaifu Jewelry International Group Co, Ltd (Zhoubaifu Ltd) from Hong Kong. All his products had been approved by the franchisor prior to sale. In addition, all products sold in Yes Shop carry the registered trademark of “Zhoubaifu”. Therefore, its goods must not be confused in any way with the Chanel goods.

Chanel, on the other hand, argued that brand confusion does not only include the direct confusion of the origin of the products, but also a fundamental associative confusion, which occurs quasi post-sales. The shape of the product is used as a trade mark. Chanel invoked Article 76 of the Chinese Trademark Law, according to which similar goods may be infringing if the logo and manufacturer’s name of another trade mark or the decoration of the goods are used. Irrespective of shape and packaging, Chanel goods are associated with the double C, was stated by the French high fashion house. The shape of the product therefore must belong to the category of product decoration.

However, there is no clear definition of decoration in China, not even in the Chinese dictionary.

Chanel loses in Chinese IP court

The Chinese Court therefore rejected Chanel’s arguments and held that Article 76 of the Chinese Trade Mark Law did not apply to that case. In its judgment, the IP Court confirmed that under Article 57 of the Chinese Trademark Law, trade mark confusion refers only to direct confusion caused by misleading producers or traders. However, Chanel has provided no evidence that ordinary consumers with a general understanding would assume that they would buy Chanel products in Ye Zong’s shop. The Guangzhou court also stressed that the judgment was a case-by-case decision and that questions of shape will continue to be assessed on a case-by-case basis.

View beyond the horizon

The judgment is all the more astonishing because the Chinese courts have already twice recognized 3D shapes as trademarks and subject matter of a trademark infringement – we reported. It was only last year that Dior won the trademark dispute in the Chinese Supreme Court over its perfume bottle design.

It therefore remains exciting to follow the further judgments in trademark infringement proceedings in China. Chanel, on the other hand, would still have the possibility to bring a new action under Chinese trade mark law, referring to unfair competition.

One consolation remains for Chanel: in Europe, Chanel successfully defended its famous double C against Chinese imitators in 2017 – we reported.

Would you also like to protect or defend your trademark or brand – in China also?

Our lawyers are experienced in trademark and patent law, national and international law.

 

Sources:

Judgement Court Gov CN

Image:

Nehsa /pixabay.com / CCO License  

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconInternational Intellectual Property,  Trademark Law Tag iconInfringement,  3D,  Chanel,  China,  chinese trademark law,  Guangzhou Intellectual Property Court,  Form,  Guangzhou,  IP court,  shape of goods,  double-C,  decoration,  IP court China,  shape of a product

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: International Intellectual Property

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Bacardi wins in trademark dispute Vodka 42 BELOW 20. January 2021
  • HALLOUMI vs. BBQLOUMI: Cyprus loses again in trademark dispute 20. January 2021
  • Short word marks and similarity: First letter is not everything 19. January 2021
  • Where in Europe is a patent application worthwhile? 18. January 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

20. January 2021
Bacardi wins in trademark dispute Vodka 42 BELOW

Bacardi wins in trademark dispute Vodka 42 BELOW

20. January 2021
HALLOUMI vs. BBQLOUMI: Cyprus loses again in trademark dispute

HALLOUMI vs. BBQLOUMI: Cyprus loses again in trademark dispute

19. January 2021
Short word marks and similarity: First letter is not everything

Short word marks and similarity: First letter is not everything

15. January 2021
HOTTINGER vs. HOTTINGUER: trademark dispute over financial services

HOTTINGER vs. HOTTINGUER: trademark dispute over financial services

12. January 2021
US Trademark Law Modernized (TMA): Faster and Better for Trademark Challenges

US Trademark Law Modernized (TMA): Faster and Better for Trademark Challenges

7. January 2021
Nice Classification 2021: Robots, Joysticks and Automation

Nice Classification 2021: Robots, Joysticks and Automation

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form