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Zhong Lun Wins Another Trademark Infringement Case for Roxtec AB regarding Trademark of Color Per Se
Zhong Lun Wins Another Trademark Infringement Case for Roxtec AB regarding Trademark of Color Per Se
Zhong Lun has recently obtained a final judgement in favor of Roxtec AB, a Swedish company, before Shanghai Intellectual Property Court in its trademark infringement litigation against Shanghai Yibo Shipping Co., Ltd. This is the second time that Zhong Lun has won infringement litigation concerning trademark of color per se for Roxtec AB after gaining a victory in an infringement lawsuit over trademark of color per se in 2019.
This case faced two major challenges. One is determination of infringement upon the trademark of color per se. The other is about the application of the defense of "prior use". The defendant Yibo made a "prior use" defense under Article 59 of China’s Trademark Law on the grounds that they had used the combination of black and blue as trademark before it was registered by Roxtec, so their use of the trademark did not constitute an infringement. As the legal counsel for the plaintiff, Zhong Lun team, which was comprised of partner Jihong Chen, non-equity partner Zhonglian Wang and a number of associates, overcame numerous obstacles. For example, the evidence dates back to as early as 1990-2007, and most of the sealing modules are installed on ocean-going cargo ships, drilling platforms and other projects that are hard to access, making the evidence enormously difficult to collect and preserve. By virtue of their years of experience in trademark of color per se cases and arduous efforts of evidence digging, collecting and combing, the team submitted to the court persuasive evidence in a suitable form and a logical order. The evidence was accepted by the court and helped destroy YIBO's "prior use" defense. At the same time, the court also confirmed the distinctiveness of the trademark of color per se and held that, before the registration of the trademark, the color combination logo of the plaintiff had obtained distinctiveness on designated goods through long-term use and promotion. In particular, the logo had gained some notable traction in the industry before 2007.
By winning the case, Zhong Lun has effectively safeguarded the client’s proprietary rights to the trademark of color per se. And what’s more, the firm has helped compile concrete evidence for the trademark’s popularity before its registration, which lays a solid foundation for the client's future dealing with any infringement upon the trademark in China.
