Background

Our client Lotus Bakeries (hereinafter referred to as Lotus) is a Belgian bakery founded in 1932, and engages in the production and sales of biscuits and pastries. Its caramelized biscuits are very popular in Belgium and were exhibited as a representative commodity at the Belgian pavilion of the 2010 (Shanghai) World Expo. It not only has successfully been listed on the Brussels-based Pan-European Stock Exchange, but has also established factories in the Netherlands, France, Sweden and other countries. It has insisted on seeking for international development and formed its international sales network by establishing sales offices in nine European countries, America, Canada, China and Chile and setting up an export division and exporters in other countries.

Without permission from Lotus, Shanghai Lila Food Co., Ltd. and its branch (hereinafter referred to as "Lila"), Dongguan Weimeng Weimeng Food Co., Ltd. (hereinafter referred to as "Weimeng) used a mark similar to the reference trademark on the same type of commodities, and they also adopted internal and external trade dress similar to that of Lotus’. Lila and Weimeng labeled "焦糖饼干Caramelised" on the mark similar to that of Lotus’, but such a label was the generic name of the commodity or directly meant the feature of the commodity, and it was not distinctive and did not serve to distinguish the source of commodity.

Process

Even though this case was complex and difficult, our attorneys made the following achievements after five years' hard work: (1) establishing the appropriate basis of right; (2) collecting and sorting evidence and materials concerning the popularity of the biscuits of our client; (3) gaining the support from the Chinese Embassy in Belgium for this case; and (4) fully communicating with the court in the course of this case. All of these laid a good foundation for the ultimate victory.

Result

Thanks to meticulous and solid evidence collected by us, our claims were all supported by the first-instance court, which ordered Lila and Weimeng to stop their infringement upon the trademark of Lotus, to stop using the unique trade dress of the well-known commodity of Lotus, and to compensate Lotus for economic losses and the reasonable expenses of CNY 395,770 in total.

Upon the first-instance judgment, Lila and Weimeng appealed to the Shanghai Intellectual Property Court on account of not clearly identifying the facts and not appropriately applying the law. The Shanghai Intellectual Property Court heard the case and held that the first-instance judgment clearly identified the facts and appropriately applied the law, rejecting the petition filed by Lila and Weimeng and affirming the first-instance judgment.

Comment                                                                                                                               

    The key disputes of this case were that (1) whether the disputed commodity produced and sold by Lila and Weimeng infringed the exclusive trademark rights enjoyed by Lotus; and (2) whether the disputed commodity produced and sold by Lila and Weimeng constituted unfair competition of using the unique trade dress of a well-known commodity without authorization.

As for the aforesaid two key points, our attorneys submitted strong defenses and our claims were supported by the court.

Significance

This case shows that comprehensive argument over the identification of whether the trademark is distinctive and whether it is used at law, and over the identification of the unique trade dress of the well-known commodity plays a role in guiding similar cases.