Days ago, a Chinese OEM garment factory Shanghai Mawei’s 2,700 suits of male winter clothes, contracted for a Mexican based company, were detained by Beijing Customs, on grounds of infringing Lauren Company’s registered trademark POLO. Lauren Company then brought the case to Shanghai Xuhui District People’s Court and was awarded 8,000 yuan in damages.

In 1986, Lauren Company filed the No. 278874 Polo Sport figure as trademark and was certified on Class 25 products of garments in 1987. Two years later, in 1989, Lauren Company filed the No. 527802 character of POLO as trademark and was approved one year later. The two marks are within the validity period.

Lauren Company claimed that as the trademark holders of POLO character and the figure, and the law should protect them. On the garments exported to Mexico have been printed the HPCPOLO character and figure by Shanghai Mawei. The two marks are similar in spelling and could easily cause confusion among the customers, so that similarity and trademark infringement were constituted. Lauren Company requested the court ordering Shanghai Mawei to cease infringement and seek compensation of 35,0000 yuan. 

Shanghai Mawei argued that the garments detained by Beijing Customs were purchase orders for a Mexican company; the latter has provided necessary trademark certificates and authorization certification. Shanghai Mawei has completed its obligations. At the same time, the two marks were not similar. Under the worst circumstances, even though the two marks were regarded as similarity, the garments were sold in Mexico, not in Chinese markets, they would not cause confusion among the Chinese customers and would not cause damages to Lauren Company. So, no infringement was constituted.

The court held that the HPCPOLO character and Polo Sport figure on Shanghai Mawei’s clothes should be deemed as commercial usage and were similar with Lauren Company’s POLO character trademark and Polo Sport figure trademark. The trademarks in question would cause confusion among the public, and have infringed Lauren Company’s rights. Meanwhile, according to the paper provided by the Mexican company, the two marks in question should be used separately and not as a whole, Shanghai Mawei failed to notice this and failed to take responsibility of examination. Based on the actual damage，amount of infringing garments and other reasons, the court made the decision above.

(China IP News)