1. Case Brief

Burberry Limited is the holder of the series of registered trademarks “BURBERRY” in class 25 for “clothing”. On March 20, 2012, a public security organ detected the criminal of selling counterfeiting commodities bearing the aforementioned registered trademark by Chen Kai and Lu Qiumei, and asked Burberry to help identify the involved counterfeit goods.  On August 24, 2012, both defendants were sentenced to imprisonment (probation) and a fine.

On August 15, 2014, Burberry Limited filed this lawsuit, requesting the court to order the two defendants pay one million yuan (around USD 150,000) as compensation for economic loss and reasonable expense. Two defendants Chen Kai and Lu Qiumei argued that Burberry Limited had been aware of the infringing acts since March 20, 2012, and the litigation in August 2014 was beyond the limitation of action.

  1. Ruling of the Court

Yangpu District People's Court of Shanghai ruled in the first instance that the limitation of action should be calculated starting from the effective date of the court’s criminal decision and the litigation of Burberry Limited did not go beyond the limitation; the defendants Chen Kai and Lu Qiumei constituted the act of infringing Burberry Limited’s exclusive right to use the trademark, and shall jointly pay a compensation of 150,000 yuan (around USD 23,000) for economic loss and 15,000 yuan (around USD 2,300)  for reasonable expense to Burberry Limited. Lu Qiumin refused to take the ruling and appealed to a higher court.  Shanghai Intellectual Property Court rules that the criminal prosecution procedure related to this case has legal consequence of discontinuance of the limitation of action and the litigation of the plaintiff did not go beyond the limitation, thus rejected the appeal and sustained the decision of the first instance.

  1. Significance

The case relates to the determination of discontinuance of limitation of action. The ruling of this case clarifies that the facts of the right holder knowing the infringing acts have entered criminal procedure and assisting in investigation on the request of investigation department have legal meanings to the limitation of action. The court held that the aforementioned facts had double meanings for the right holder: one was legal consequence for the counting of time limit of action, as the right holder was aware that his right had been infringed; the other was legal consequence for the discontinuance of time limit of action, as the right holder had reasons to believe that his civil right can be protected by the criminal investigation, and whether or not the sued acts constituted infringement and consequences of the infringement were determined by the effective criminal decision. This determination reasonably defines the causes and legal basis of discontinuance of limitation of action and provides better guarantee to the right holder for safeguarding his right in accordance with the law.

Notes: This case is one of 10 typical cases concluded by Shanghai Intellectual Property Court.

Source: http://blog.sina.com.cn/s/blog_6828e0630102vzno.html