Case Summary:

In January 2001, Pigeon Company was established, and the company name has been in use ever since. Pigeon Company has made extensive publicity and promotion of the Pigeon brand and has won many honors and huge revenue.

Pigeon Company owns the Trademark No. 146035 " ", which was trademarded by Chongqing Electric Wire Factory, the predecessor of Pigeon Company. The trademark was approved for registration on April 15, 1981 and was designated for use in goods of "Wires, electric" in class 9. The trademark was transferred to Pigeon Company on April 25, 2002. From 2002 to 2014, the trademark was recognized as a famous trademark in Chongqing for multiple times by the former Chongqing Industry and Commerce Bureau. The trademark was recognized as a well-known trademark by the Trademark Office on January 15, 2010. Since then, during 2018, the trademark had been protected as a well-known trademark for multiple times in trademark opposition and invalidation procedures and administrative litigation. The Trademark " " has been recognized as a well-known trademark in multiple effective judgments and rulings from January 2008 to the present. The Trademark No. 3270081 " " was applied for by Pigeon Company, approved for registration on February 28, 2004, and designated for use in goods of "Cables, electric" etc. in class 9. The Trademark No. 16039215 " " was applied for by Pigeon Company, approved for registration on April 21, 2016, and designated for use in goods of "Wires, electric; Cables, electric" etc. in class 9.

GE HUANG Group, formerly known as Chongqing Jiqing Electric Wire and Cable Co., Ltd., was established on May 24, 2005, renamed Chongqing GE HUANG Electric Wire and Cable Co., Ltd. on April 17, 2008, and renamed Chongqing GE HUANG Electric Wire and Cable Group Co., Ltd. on May 16, 2016. LIN Yingfeng has served as the legal representative of the company since April 2008.

The Trademark No. 4524253 " " was applied for by LIN Yingfeng on March 7, 2005, approved for registration on December 7, 2007, and designated for use in goods of "Wires, electric; Cables, electric" etc. in class 9. In addition, LIN Yingfeng also applied for the trademarks "鸽王(GE WANG) and device", "鸽王(GE WANG)", and "鸽皇(GE HUANG) and device" in goods of "Wires, electric; Cables, electric" etc. in class 9 in February 2005, June 2005, and May 2011 successively. All of these trademarks were rejected or successfully opposed because they constituted similar trademarks with the Trademarks No. 146035 and No. 3270081 of Pigeon Company.

The Trademark No. 4524253 " " was applied for by LIN Yingfeng on March 7, 2005, approved for registration on December 7, 2007, and designated for use in goods of "Wires, electric; Cables, electric" etc. in class 9. In addition, LIN Yingfeng also applied for the trademarks "鸽王(GE WANG) and device", "鸽王(GE WANG)", and "鸽皇(GE HUANG) and device" in goods of "Wires, electric; Cables, electric" etc. in class 9 in February 2005, June 2005, and May 2011 successively. All of these trademarks were rejected or successfully opposed because they constituted similar trademarks with the Trademarks No. 146035 and No. 3270081 of Pigeon Company.

On April 22, 2010, the former Chongqing Quality and Technology Supervision Bureau discovered and seized electric wires and cables marked with the words of Pigeon Company in the warehouse of GE HUANG Group. Upon identification, those were counterfeit products with the name and address of Pigeon Company. Administrative penalty was imposed on GE HUANG Group. From 2012 to 2013, GE HUANG Group applied for trademarks with the words "鸽皇(GE HUANG)" in goods of classes 9, 11, 17, 42, etc., but these trademarks were all rejected for registration after opposition.

In October 2018, Pigeon Company sued GE HUANG Group for trademark infringement and unfair competition. The Chongqing Fifth Intermediate People's Court supported Pigeon Company's claims and awarded 10 million yuan in damages. GE HUANG Group was not satisfied with the judgment of the first instance and appealed to the Chongqing Higher People's Court.

Judgment of the Court:

On July 16, 2021, the Chongqing Higher People's Court made the judgment of the second instance, rejected the appeal and upheld the judgment of the first instance. In the final judgment, it was determined that the acts of GE HUANG Group constituted trademark infringement and unfair competition, and that GE HUANG Group shall cease the trademark infringement, change its company name, compensate 9.99 million yuan for the economic losses, and publish a statement of apology in the Chongqing Economic Times to eliminate the impact. The acts of Xingfu Shiguang Business Department constituted trademark infringement, and the department shall cease the trademark infringement and compensate 10,000 yuan for the losses.

Typical Significance:

This case is a civil infringement case in which invalidation procedure plays an important role. This case clarified the relation between the general statute of limitations to bring an action and damages time limit in trademark infringement cases. With the implementation of the General Provisions of the Civil Law, the statute of limitations has changed from "two years" to "three years". In this case, the time period from May 2018 to October 2018 when the lawsuit was filed complies with the three-year limitation of action. In the case that the time period does not go beyond the statute of limitations and the infringement is still continuing, the damages time limit is not subject to the "three-year" limitation. In addition, this case also involves issues such as whether infringement can be excluded if a trademark is licensed for use, whether the use prior to invalidation of the trademark is infringement, and whether the evidence submitted in the invalidation procedure is admissible in the civil case, which are also worthy of attention.