Shanghai IP Court: International Purchase on E-Commerce Platform Constitutes Trademark Infringement

Editor’s Note: This is a summary of the article published on the INTA bulletin by Nikita Xue, partner at HongFangLaw.

For a link to the original article, please click?here

On August 20, 2014, Shanghai Customs stopped a batch of 8,424 pieces of men’s knitted T-shirts bearing the PEAK trademark, produced by Zhenyu, for exportation to Isaac Morris Ltd. in the United States. On November 3, 2014, Peak Sports brought the case to Shanghai Pudong New District People’s Court against the two defendants.

On April 21, 2017, the Shanghai IP Court determined that Isaac Morris Ltd. and Zhenyu Co. had jointly infringed the trademark rights of Peak Sports by using PEAK SEASON on their clothes. Peak Sports is the owner of the PEAK trademark (TM No. 676992), registered in China. The court ordered Isaac Morris Ltd. and Zhenyu Co. to cease using the mark immediately, and awarded Peak Sports monetary compensation of RMB 20,000 (US$ 2,900). This final judgment overruled the first instance judgment made by Shanghai Pudong New District Court (Court Docket File Number [2014] PMSZCZ1131).

During the second trial, Peak Sports supplemented further evidence, including their sponsorships, promotional activities, and news reports by the media. They also provided crucial notarization purchase evidence to prove that customers in China via the e-commerce platform, Amazon.com, could purchase the clothes featuring the PEAK trademark in the U.S. market. For this reason the court has sided in the end with Peak Sports.

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