The Supreme People’s Court and Zhejiang High People’s Court both announced their “Typical IP Cases 2017”. The case Suofeiya Home Collection vs. Lu Xiaolin, Yin Fengrong and Nanyang Suofeiya Company regarding a dispute over trademark infringement and unfair competition handled by Mr. Wu Rangjun, a partner in the Lifang & Partners Guangzhou office, was listed in the “50 Typical Cases of the Supreme People’s Court 2017” and the “10 Top Judicial Protection Cases of Zhejiang High People’s Court 2017”.

This award-winning case involved complicated issues regarding the necessity of determining well-known trademarks, accreditation criteria, prohibitory rights crossover, the conflict of enterprise name rights, trademark dilution, the scope of exclusive use and the requirements for recognition as a well-known trademark.

Exclusive use is limited to the registered scope of a trademark. The right to prevent trademark dilution is wider than that of exclusive use but depends on whether a trademark is well-known. The right to prevent trademark dilution lies at a critical junction in the trademark system where the procedures for trademark applications and reviews may conflict with judicial practices.

Such conflicts arise when the China Trademark Office (CTMO) grant a trademark that is like a pre-existing one. In such circumstances, there is no fault on the part of the CTMO. However, a court may later decide that the trademark conflicts with the rights of the owner of a pre-existing trademark.

Preventing others from using a well-known trademark outside the scope of exclusive use is not a common issue. In this case, the defendants argued that even if “Suofeiya” was a well-known trademark, the prohibitory rights should not be extended to cover integrated ceilings.

Zhejiang High People’s Court accepted our arguments that the owner of a well-known trademark can claim against an infringer even if the prohibitory rights over a well-known trademark conflict with a pre-existing trademark. In other words, the prohibitory rights over a well-known trademark can take priority over an ordinary trademark in a different class.

This case was the first time that Suofeiya Home Collection Co., Ltd requested recognition of “Suofeiya” as a well-known trademark. Given the complexity and influence of this case as well as the technical and legal issues involved, it will be of referential value for similar cases in the future.