The trademark infringement case between Chocoladefabriken Lindt & Sprüngli Aktiengesellschaft (hereinafter “Lindt”) and Lind Food (Shanghai) Co., Ltd. (hereinafter “Lind Food”) was finally concluded after a trial and an appeal. The appeals court ruled that Lind Food’s use of the mark “Lind” infringed Lindt’s trademark “Lindt”, and that Lind Food must cease its infringement and pay damages to Lindt. Watson & Band represented Lindt in this case and successfully protected the “Lindt” trademark of more than a hundred years, thereby clearing away obstacles for its client’s further expansion in the Chinese market.

Lindt is a famous Swiss chocolate company. Its “Lindt” trademark, derived from the founder’s family name, has been globally well-known for over a hundred years. To protect its legitimate rights and interests, Lindt registered the trademark “Lindt” in China back in 1982, and has been using it to this day. Mr. Lind, a German, invested in China and established Lind Foods, which used the trademark “Lind” and opened a number of bakeries in China. Since the trademark “Lind” is very similar to the trademark “Lindt”, Watson & Band represented Lindt in filing a trademark infringement lawsuit against Lind Foods.

Mr. Lind’s family, the Linds, use “Lind” as a trademark for their bakeries in Germany, and the Linds reached a preliminary trademark co-existence agreement with Lindt for the “Lindt” and “Lind” trademarks in Europe. For this reason, Lind Foods insisted that since “Lind” is Mr. Lind’s family name and since the Linds reached a trademark co-existence agreement with Lindt, their use of the trademark “Lind” did not constitute infringement. At trial, Watson & Band proved that Lind Foods is not entitled to use the trademark “Lind”, and that their use of the trademark caused confusion among consumers regarding the two trademarks. The trial court ruled in favor of Lindt, ordering Lind Foods to cease the infringement and pay damages to Lindt.

Lind Foods then filed an appeal to press their non-infringement assertion. The appeals court eventually issued its final judgment, holding that based on the principle of territoriality of trademarks, whether or not Lind Foods registered the trademark “Lind” in Germany and whether or not this trademark enjoys a significant reputation cannot be used to justify its use of the “Lind” trademark in China. Consequently, the appeals court dismissed the appeal and upheld the original judgment.

In this case, both trademarks “Lindt” and “Lind” represent the family names of the founders of the two companies. Nevertheless, since Lindt registered “Lindt” as a trademark, the family name “Lindt” enjoys exclusive trademark rights and Lindt has the right to prevent others from using trademarks that are identical or similar to the “Lindt” trademark on identical or similar goods or services. This case shows that even if a founder names its goods using his family name, he must still register the family name as a trademark before any other party in order to actually protect the exclusive right to use the registered trademark and prevent others from using identical or similar trademarks.