On December 23, the journalist learned from the Beijing Intellectual Property Court that the court recently concluded an infringement case, in which five companies including Beijing Jingbaidu Catering Management Co., Ltd. were prosecuted by Baidu Online Network Technology (Beijing) Co., Ltd. (hereinafter referred to as "BIDU")due to the extensive use of logos such as “Baidu” “Baidu Barbecue” and “Baidu Sugar”, requesting them to stop the infringement and publicly publish a statement to stop the influence.

The Beijing Intellectual Property Court held that the ill will of the five defendants’ infringing on BIDU’s exclusive right to use registered trademarks and attaching BIDU’s business reputation, the infringements lasted for a long time and had constituted unfair competition, damaging BIDU’s legitimate interests, which applied to three times the punitive damages. Five companies were judged to stop the infringement, eliminate ill effects, and compensate BIDU over 2.3 million yuan for economic losses and reasonable expenditures.

The Beijing Intellectual Property Court believed that BIDU used "Baidu" as its core registered trademark in the process of its business operations, making it achieve a high level of popularity and market recognition among the relevant public through long-term and extensive continuous use and promotion.

Therefore, when the above-mentioned five companies incorporated and the alleged infringement actions occurred, the trademarks involved registered and used by BIDU had become the reputed trademark well-known to the relevant public in China. The alleged actions of the five companies have disrupted the direct and close connection between the "Baidu" trademark and Internet search engine services, and weakened the distinctiveness of the "Baidu" trademark, belonging to the condition “enough to make the relevant public believe that the accused trademark has a considerable degree of connection with the well-known trademark, and weaken the distinctiveness of the well-known trademark” and “improper use of the market reputation for the well-known trademark ”, which stipulated in Article 9, paragraph 2 of the Supreme People's Court on Trial of Civil Dispute Cases Involving the Protection of Well-Known Trademarks. Therefore, the alleged actions of the above-mentioned five companies infringed on the exclusive right to use the registered trademark of BIDU ' s trademark involved in the case.

The court also held that, by using "Jingbaidu", which is similar to "Baidu", as corporate brand names, the above-mentioned five companies had the subjective intention of playing up to reputation of BIDU's "Baidu" trademark and hitchhiking, objectively causing the relevant public to misunderstand that there is an association between these five companies and BIDU as well, leading to their misunderstanding of the investment or business entities of the five companies and confusion about the source of services. In addition, the five companies have also clearly stated recognizing that the current company name they use constitutes unfair competition, and agreed to change, therefore, BIDU's claim that the five companies’ using the words "Baidu" in their company names constitutes unfair competition has factual and legal basis, it should be supported.

As the alleged actions of the above five companies infringed on BIDU's exclusive right to use registered trademarks and constituted unfair competition, damaged BIDU's legitimate interests, and had an adverse impact on its business reputation, the five companies shall take civil liabilities of stopping the infringement, eliminating the impact, and compensating for losses.

Court: the subjective malice is obvious, the infringement is serious, and the punishment is increased.

For determining the amount of compensation, the Beijing Intellectual Property Court held that the five companies had obvious subjective malice in infringing on BIDU’s registered trademark rights and attaching BIDU’s goodwill, and the infringement lasted for a long time. Objectively, they were also conducted infringements by opening multiple stores, not only weakening the distinctiveness of BIDU’s “Baidu” trademark, but also improperly taking advantage of Baidu’s market reputation with large profit and severe infringement. Therefore, in accordance with relevant provisions of Civil Code, Trademark Law and Anti-Unfair Competition Law, punitive damages should be applied to this case to increase the punishment for malicious infringements.

In terms of the evidence provided by the five companies such as financial account books and tax returns, it was determined that the average annual operating profit of the five companies during the infringement period was more than 300,000 yuan, accompanying with the infringement for more than five years. Meanwhile, in consideration of factors including the distinctiveness and popularity of BIDU’s trademark involved, the infringement plots of the five companies, the profit from infringement and the damage caused to BIDU appropriately determining 35% as the contribution rate of BIDU’s trademarks to the five companies’ infringement profits, which applied to 3 times punitive damages. In the end, the Beijing Intellectual Property Court ruled that the five companies should compensate BIDU more than 2.3 million yuan in total for economic losses and reasonable expenses.

From IPRdaily

December 26th, 2021