Recently, Liaoning Higher People's Court ruled that due to the use of the trademark "Orion", Jiangsu Orion Food Science and Technology Co. Ltd. (Jiangsu Orion) infringed the trademark right of Orion Food Co. Ltd. (Orion Company) and constituted unfair competition. The court ordered Jiangsu Orion to change its name, make an apology and compensation.
On October 11, Jiangsu Orion changed its company name into "Jiangsu Kawang Food Co. Ltd.", which marked the end of the ten-year trademark dispute.
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Orion Company encountered trademark infringement
The food brand "Orion" was created by a Korean company. In 1995, the company established Orion Company in Langfang, Hebei province. From then on, the popularity and influence of the brand "Orion" were greatly promoted.
However, with the growing influence, Orion Company encountered trademark infringement. In April 2003, a natural person surnamed Xu (the actual manager of Jiangsu Orion) in Fujian province applied to the Trademark Office under the State Administration for Industry and Commerce (TMO) for the registration of the trademark "好丽友HAOLIYOU" (No. 3543859), certified to be used on nori, etc. In August, 2004, the trademark was published by the TMO. During the publication, Orion Company raised objections.
To safeguard legal rights via lawsuits
In April, 2009, TMO rejected Xu's application, holding that "Orion" had constituted a well-known trademark. Dissatisfied, Xu filed an application to the Trademark Appeal Board under the State Administration for Industry and Commerce (TRAB) for review.
During the review, Orion Company filed a lawsuit against Lian Yungang Orion (Later was known as Jiangsu Orion) in 2010. At the end of 2010, Liaoning Shenyang Intermediate People's Court ruled Jiangsu Orion constituted trademark infringement and ordered it to cease infringement and make compehension. The disgruntled Orion Company and Jiangsu Orion appealed to Liaoning Higher People's Court.
In June, 2011, TRAB approved Xu's registration of the trademark "好丽友HAOLIYOU". Disgruntled, Orion Company made another lawsuit. Beijing No. 1 Intermediate People's Court heard the case and approved the registration, holding that the two trademarks did not constitute similarity due to the different goods certified to be used on. Both Orion Company and Xu were dissatisfied with ruling, and hence continued their appeal to Beijing Higher People's Court.
Orion Company got the final victory
In May 2012, Beijing Higher People's Court ruled that the two trademarks constituted similarity on similar goods. In 2013, TRAB made another ruling, which rejected Xu's application for the registration of the trademark "好丽友HAOLIYOU".
In addition to that, Liaoning Higher People's Court ordered Liaoning Shenyang Intermediate People's Court to retry the case. After the retrial, the Shenyang court ruled that, Jiangsu Orion constituted trademark infringement as well as unfair competition, and ordered it to stop infringement. Jiangsu Orion, dissatisfied, made another appeal. However, Liaoning Higher People's Court upheld the original judgment at second instance in May, 2013.
Professor Tao Xinliang, dean of the IP Institute of Shanghai University, said both the person and the enterprise should adopt proper measures to pursue profit in market. The cost of malicious copy and plagiarism will be changing names with probably huge financial compensation like Jiangsu Orion.
SOURCE: China IP News