In September 2020, the Jiangsu Province Changzhou High-tech Industrial Development Zone People’s Court (the Court) issued a first-instance criminal judgment against an individual Cao (the Defendant) for counterfeiting the registered trademarks of Public Joint Stock Oil Company Bashneft (Bashneft Oil Company). The Court held that the Defendant committed the crime of counterfeiting registered trademarks, and thus shall be punished with a imprisonment of 3 years with a probation period of 3 years and 6 months and a fine, and shall be prohibited from engaging in the production and sales of lubricating oil and other related businesses during the probation period. The judgment has come into effect. Zhong Lun Law Firm provided legal services to Bashneft Oil Company throughout the case.

Bashneft Oil Company is a subsidiary of Rosneft Oil Company, Russia’s largest state-owned oil company and a leader in the Russian oil industry. Bashneft Oil Company owns the famous brand of lubricants - bashneft. The Defendant counterfeited the registered trademark of Bashneft on lubricating oil and other products, pre-emptively applied for the Chinese trademark “巴什/BASHI" which is corresponding to Bashneft, registered a domain name containing bashneft, and registered a company whose name contains “巴什". The Defendant also falsely advertised that their products were originated from Russia and were associated with Bashneft Oil Company. After Changzhou City Xinbei District Administration for Market Regulation and the Changzhou City Public Security Bureau Xinbei Branch discovered the Defendant’s activities, they took enforcement against the Defendant according to the law. Due to the large case value, the Changzhou City Xinbei District People’s Procuratorate prosecuted the case to the Court, who examined the case and rendered the above judgment.

In the process of handling this case, in order to protect the client’s rights and interests to the maximum extent possible, Zhong Lun lawyers actively followed up and cooperated with the Administration for Market Regulation and the Public Security Bureau in the investigation and examination of the case, and negotiated with the Defendant about the settlement. In the end, the Defendant reached a settlement agreement with Bashneft Oil Company, agreed to compensate Bashneft Oil Company for its economic losses, transfer the Defendant’s trademarks “巴什/BASHI" and the domain name containing “Bashneft" to Bashneft Oil Company, change the company name containing “巴什", and cease other false advertising activities. The main conditions of the settlement agreement have been fulfilled. Through the settlement, Bashneft Oil Company was able to resolve the Defendant’s trademark squatting, trademark infringement, domain name squatting and unfair competition activities through one case, and the industry ban ordered in the judgment effectively avoided the Defendant’s repeated infringement in the future, thereby maximized the protection of Bashneft Oil Company’s rights and interests.

This case is of great significance in the protection of Bashneft brand in China. It is an active and comprehensive protection of Bashneft Oil Company’s trademark rights. At the same time, this case once again highlights the firm attitude of the administrative authorities, the people’s procuratorates and the people’s courts in increasing the protection of intellectual property rights and maintaining a business environment based on the rule of law.

This case was handled by Zhong Lun team led by Jimmy Huang and Hope Yang, and the team members include the associate Brenda Jin and others.