Seeing the brands “Mobil” or “美孚”(a corresponding Chinese trademark of “Mobil”), we would associate it to the leading entrepreneur in the oil business – ExxonMobil, and the Mobil 1 lubricating oils we use to lubricate our cars. When seeing pesticides or fertilizers bearing the same Mobil mark, we would feel confused, and when realizing that this Mobil is not the Mobil we are familiar with, we then would accept the fact that there might be two Mobil brands? No, ExxonMobil says no to the infringement that would bring about dilution to its famous brand built up by years’ use and continuous publicity in the market. No, the Court says no to trademark infringement that would confuse the public or dilute a well-known trademark.
Recently, Beijing High Court rendered a verdict awarding RMB 3 million damages upon four joint infringers, who had being using similar “MEIFU 美孚” (This mark is composed of the corresponding Chinese trademark of “Mobil” and its Chinese pinyin) mark on pesticides and fertilizers since 2004 according to the records, and even tried to register for the mark and failed. ExxonMobil claims for cross-class protection for its well-known trademarks “Mobil”and “美孚”used on lubricants against the “MEIFU美孚” mark used on pesticides and fertilizers. The court recognized the well-known status of the “Mobil”and “美孚” marks, ruling that although there is no direct proof of the losses of ExxonMobil due to the infringement or the actual illegal income of the infringers within the last two years, the trademarks “Mobil”and “美孚”of ExxonMobil have become well-known since 2004, occupying a remarkable portion of the market share in the lubricant business in China, while the use of the infringing mark would dilute the distinctiveness of the well-known “Mobil”and “美孚”marks. Taking all into consideration, including the illegal income of the infringers, the distinctiveness, the reputation and the market value of the well-known trademarks, as well as the duration and scale of infringing acts that damage the interest of the well-known trademark owner, Beijing High Court finally decided to award RMB 3 million damages to the trademark owner, which is the upper limit of the statutory damages in the China Trademark Law.
What do we learn from this case? One is that we should never hesitate to sue the trademark infringers, and the more famous our trademarks are, the better protection we can obtain from the court against infringement and counterfeit, including higher damages. Recently the central government issued the Opinions on Several Issues Concerning Enhancement of Reform and Renovation of Intellectual Property Trials, emphasizing the value of intellectual property rights and the importance of proper return awarded to the right owners. According to the Opinions, higher damages and even punitive damages should be awarded to the right owners against intellectual property infringement, in order to create a better legal environment and to reduce infringement. China has now become a preferred place for the IP right owners to initiate litigation against infringements.