Case Brief:

The "BAMBOO SALT" brand series toothpaste produced and sold in China by LG Household & Health Care Co., Ltd. (hereinafter referred to as "LG") and its subsidiary in China, LG Household & Health Care Trading (Shanghai) Co., Ltd. (hereinafter referred to as "Lejin") was once recognized as "a well-known trademark" in the relevant trademark management cases of the China Trademark Office.

The decoration of the "竹盐（清新茶香）(BAMBOO SALT (Fresh Tea Flavor))" toothpaste claimed by LG in the case has a green tone, with the bamboo forest as the background on the left, small characters "LG 生活健康(LG Household & Health Care)" and "竹盐BAMBOO SALT", and the characters "清新源(Fresh Source)" in the vertical long red band; in the middle part, with the bamboo forest as the background, tea leaves as green background and bamboo tubes containing bamboo salt in a circular pattern, and characters "清新茶香牙膏(Fresh Tea Flavor Toothpaste)" arranged horizontally; on the right, there are a bamboo knot pattern having bamboo leaves in a dark green background and small characters "清韵茶香(Fresh Tea Flavor)".

LG found through investigation that the defendant, a certain company in Guangdong (hereinafter referred to as "the defendant") used the logo "竹盐素(BAMBOO SALT ELEMENT)" similar to the "BAMBOO SALT" series trademark of LG and Lejin (hereinafter referred to as "the plaintiff") on the "BAMBOO SALT ELEMENT" toothpaste produced, sold and promoted by the defendant, and the decoration of the products of the defendant was highly similar to the decoration of "BAMBOO SALT (Fresh Tea Flavor)" toothpaste of the plaintiff.

LG found through investigation that the defendant, a certain company in Guangdong (hereinafter referred to as "the defendant") used the logo "竹盐素(BAMBOO SALT ELEMENT)" similar to the "BAMBOO SALT" series trademark of LG and Lejin (hereinafter referred to as "the plaintiff") on the "BAMBOO SALT ELEMENT" toothpaste produced, sold and promoted by the defendant, and the decoration of the products of the defendant was highly similar to the decoration of "BAMBOO SALT (Fresh Tea Flavor)" toothpaste of the plaintiff.

Case Trial Process:

The Foshan Chancheng District People's Court as the court of the first instance, held that the logo "BAMBOO SALT ELEMENT" prominently used on packaging of the accused infringing product constituted the "trademark use" specified in Article 48 of the Trademark Law.

The accused logo "BAMBOO SALT ELEMENT" has completely included the registered trademark "BAMBOO SALT" of LG. According to the evidence on record, the trademark "BAMBOO SALT" of LG has gained relatively high reputation and market reputation in toothpaste products, and the accused infringing product is also a daily necessity. Especially in the case that the color and location of the toothpaste package used by the accused infringing logo is similar to the way in which the plaintiff uses its registered trademark "BAMBOO SALT", the relevant public is very likely to make a misunderstanding. Therefore, the above two logos are confusingly similar, and the action under litigation of the defendant constitutes an infringement of an exclusive right of seven registered trademarks of the plaintiff.

As for the part of unfair competition, the court of the first instance held that although the trade dress of the "BAMBOO SALT (Fresh Tea Flavor)" toothpaste presented a uniqueness unrelated to the functional effect of the commodity, in the case that the registered trademarks involved in the decoration of the product have been protected based on the Trademark Law, the evidence on record is insufficient to prove that the overall design of the product involved in the case has established a relatively stable correspondence with the commodity thereof through actual use of the plaintiff, thus playing the role of identifying the source of the commodity, so the above design does not constitute a trade dress with certain influence.

After the adjudication of the first instance was made, both the plaintiff and the defendant filed an appeal to Foshan Intermediate People's Court of Guangdong Province.

During the second instance, registration of seven trademarks of the plaintiff was upheld by the China National Intellectual Property Administration after the defendant filed a request for invalidation.

Upon trial, the court of the second instance held that the seven trademarks have been approved and registered and are still valid up to now. The first instance judgment was correct in determining that the use of the other party for the "BAMBOO SALT ELEMENT" logo constitutes trademark infringement.

As for the unfair competition, the court of the second instance held that the trade dress involved in the case was related to a design concept with "bamboo" as the core, and the main colors and decorative patterns of the decoration were all related to "竹(bamboo)". The trademark "BAMBOO SALT" is an integral part of the decoration and is closely combined with the green background, bamboo forest, bamboo patterns and other elements in the decoration. The "BAMBOO SALT" series trademark has a relatively high reputation, and the generated spillover effect can enable the relevant public to use the trade dress including the trademark "BAMBOO SALT" as a whole to identify the source of the commodity. Therefore, the trade dress including the trademark "BAMBOO SALT" should be recognized as a mark with certain market reputation and distinguishing characteristics to distinguish the source of the commodity, which pertains to the trade dress with certain influence protected by the Anti-Unfair Competition Law.

The design used by the defendant on the "BAMBOO SALT ELEMENT" toothpaste produced and sold by the defendant is also based on green, with the characters "BAMBOO SALT ELEMENT" on the left side and the bamboo forest as the background, and the bamboo pattern on the right side. The overall composition, color and text layout are similar to the trade dress of "BAMBOO SALT (Fresh Tea Flavor)" toothpaste of the plaintiff in visual effect. According to the provision of Article 6.1 of the Anti-Unfair Competition Law, using without authorization others' trade dress with certain influence of the defendant constitutes unfair competition. Therefore, the court of the second instance corrected the determination of unfair competition in the judgment of first instance according to law.

On this basis, the second instance issued the judgment to uphold the judgment of the first instance on trademark infringement and changed the judgment on the failure of the first instance to determine that the other party constituted unfair competition. At the same time, the amount of compensation was further increased over the first instance.

Thus, LG and Lejin won the lawsuit in rights protection in China.

In addition, after the judgment of the second instance came into effect, the defendant took the initiative to contact the plaintiff regarding the execution of the judgment, including the payment of compensation. This also saves the plaintiff from applying for enforcement procedures, which can be said to achieve the purpose of efficient rights protection.

Case Significance:

From a technical point of view, although the attorney did not accept the fact that the first instance failed to determine constitution of unfair competition, if the defendant had not appealed, the plaintiff might choose not to appeal based on multiple considerations, and the plaintiff would not have won the complete rights protection in the second instance.