The court finds that the product “metal stud” in Class 6 is similar to the product “plasterboard” in Class 19.
LAFARGE SA, the world leading building material manufacturer, is the owner of the trademark “拉法基” (“Lafaji” in Chinese) (Figure 1) covering “plasterboard for construction” in class 19 and the trademark “LAFARGE + L device” (Figure 2) covering “metal construction materials” in Class 6.
These two trademarks are used in China by Shanghai LAFARGE Gypsum Construction Material Co Ltd., the subsidiary of LAFARGE SA, on gypsum construction materials and metal studs for a long time
In April 2004, a natural person named ZHAO Qiangsheng applied to register the trademark “拉法基(“Lafaji” in Chinese)” (Figure 3) covering metal construction materials in Class 6. LAFARGE SA opposed this trademark application, but the Trademark Office rejected the opposition. The procedure is being reviewed by the TRAB.
In 2011, LAFARGE SA found that a company called Nanjing Mei Shi Da Construction Materials Co, Ltd was producing and selling metal studs bearing the trademark“拉法基”. Mei Shi Da claimed that it acted under a licence granted by ZHAO Qiangsheng. The packaging used by Mei Shi Da was closely similar to LAFARGE’s packaging, for the same kind of metal studs. Mei Shi Da also used the mark “拉法基” in its advertising. It had a trademark license with ZHAO Qiangsheng.
In October 2011, LAFARGE SA and Shanghai LAFARGE jointly filed a civil lawsuit with Nanjing Intermediate Court against MEI SHI DA on the grounds of trademark infringement and unfair competition.
In its judgment, the court found that, according to the Chinese Classification on Similar Goods and Services, metal studs and plasterboards are respectively classified in two different classes of goods, 6 and 19. However, the products are always used together to make ceilings and wall partitions. Their consumers, sales channel and manner of use are also the same. Therefore, metal studs and plasterboards should be recognized as similar goods, and the defendant’s use of the trademark “拉法基” on its metal studs infringes LAFARGE’s registered trademarks “拉法基” in class 19. Moreover, “拉法基” and “LAFARGE” have established corresponding relationship through the plaintiff’s long time use together in the market. So, the defendant’s use of the trademark “拉法基” also infringes the plaintiff’s “LAFARGE + L device” trademark. The defendant’s use of the plaintiff’s trade name “拉法基” in advertising and on packaging takes the advantage of LAFARGE SA’s reputation and constitutes unfair competition.
In this case, the court broke the restriction set by the Chinese Classification on Similar Goods and decided that plaster boards and metal construction material are similar goods. This decision will be used to support the review of opposition concerning the trademark “拉法基” in Class 6.