Sulwhasoo vs. Sulansoo Trademark Case

Sulwhasoo vs. Sulansoo Trademark Case
Confusing similarity of “XUE LIAN XIU” and “XUE HUA XIU” on cosmetics products was determined by the first instance court

Plaintiff’s Attorneys:
Karen Hao, Eric Su from HongFangLaw

Source Materials:
First instance judgment: (2016) H0115MC No. 86694 Civil Judgment

Concerned Parties:
Plaintiff: AMOREPACIFIC CORPORATION
First Defendant: Shanghai Wei Er Ya Cosmetics Co., Ltd.
Second Defendant: Shanghai Wei Er Ya Daily Chemicals Factory

被告商标/Defendant’s Trademark	原告商标/Plaintiff’s Trademark

被告产品/Defendant’s Products	原告产品/Plaintiff’s Products

Case Overview:
The plaintiff AMOREPACIFIC CORPORATION owns trademark rights to “Sulwhasoo” and its Chinese equivalent “雪花秀” (“XUE HUA XIU”) registered in Class 3. The trademarks have acquired quite a reputation in the cosmetics market after being constantly and broadly promoted and used in Mainland China. On the other hand, the defendants are respectively the distributor and manufacturer of the Sulansoo/雪莲秀 ( “XUE LIAN XIU”) cosmetics, on which both English and Chinese trademarks in question are used.

Pursuant to Article 57.2 of the Trademark Law, “Using a trademark that is similar to a registered trademark on the same goods, or using a trademark that is identical with or similar to the registered trademark on similar goods without the licensing of the registrant of the registered trademark, which is likely to cause confusion” is deemed as an infringement of the exclusive right to use a registered trademark. In this provision, “likely to cause confusion” requires only the possibility of misleading the consuming public over the goods’ origin or their relevance with a plaintiff’s products on which a registered trademark is used.

In this case, HongFangLaw supported the plaintiff AMOREPACIFIC CORPORATION in winning over the first instance court. Recognizing the visibility of “XUE HUAXIU” on cosmetic products, court has determined that the similar goods manufactured and sold by the defendants are likely to confuse the relevant public as they bear the signs similar to the plaintiff’s registered trademarks. It is a case worth studying.

Court’s Opinions:

• Regarding the similarity between the Defendant’s “XUELIAN XIU” and the Plaintiff’s “XUE HUA XIU”. The signs are identical in word composition except the middle Chinese characters “莲” (“LIAN”) and “花” (“HUA”), but they are also similar, sharing the element “艹” (related to flora) on the top of a paralleling bottom part with the same font. In addition, the defendant’s sign also follows suit when the plaintiff stylizes “XUE HUA” and “XIU” in different ways to section the three-character trademark. After comparing the signs separately and together, the first instance court delivered the above conclusions and thus found Defendant’s “XUE LIAN XIU” and Plaintiff’s “XUE HUA XIU” signs similar without much difference.
• Regarding the possibility of confusion of Defendant’s and Plaintiff’s products. While the products do differ in how much they are priced and where they are sold, it is still possible for consumers to relate the Defendant’s commodities in some way to the Plaintiff’s when seeing similar signs, considering the popularity of the latter. Such utilization of the Plaintiff’s fame would contribute to an unfair advantage for the Defendant’s offerings over products of their like. It is plain that the coexistence of Defendant’s and Plaintiff’s products causes confusion among the consuming public.
• On the above grounds, the first instance court held that the Defendant’s use of signs similar to the Plaintiff’s registered trademarks on the same or similar goods is an intentional act to capitalize on the Plaintiff’s famous trademarks and is likely to confuse the relevant public. Hence, the Defendant’s conduct constitutes infringement of exclusive trademark rights.

HFL Comments:

• Factors to be considered when judging trademark similarity are: the fame of the cited trademark and the defendant’s other attempts of imitation (e.g. slogan, packages etc.) in addition to the similarity per se. Such aspects weigh significantly when court deals with trademark infringement and looks at whether the disputed and the cited trademarks are similar in the meaning of the Trademark Law. Moreover, according to our experiences in practice, products or services on which the trademark in question is used also matter. It is because the likelihood of confusion varies as consumers pay different attention to different products. For example, goods affecting life and health or costing a larger sum such as real estates or automobiles, or printed with bigger signs generally attract more attention. Therefore, even if the signs themselves are similar, they are still allowed to coexist when their target consumers tend to be more cautious as in the case of car brandsand. Another opposite example can be seen when dealing with watch brands, because the logo printing area in the watch dial itself is relatively small, minor differences are imperceptible to the normal public and are likely to cause confusion and misidentification.
• Factors to be considered when judging the likelihood of confusion are: the registered trademark’s distinctiveness and reputation, the intention of the defendant, the extent of attention given by the consuming public, evidence of actual confusion along with other relevant factors and their influence on each other.
• Regarding the damages from intellectual property infringement: where the plaintiff fails to establish his losses or the defendant’s profits. Article 16.2 of the Supreme People’s Court’s Interpretation on Several Issues Concerning the Application of Law in Trial of Civil Trademark Dispute Cases applies: “When a people’s court is determining the measure of damages, it should make an overall determination having considered factors such as the nature, the period and the consequences of the infringement, the reputation of the trademark, the amount of trademark licensing royalties, the types, periods and scope of trademark licenses for the mark, the reasonable expenses incurred in stopping the infringement etc.” For this reason, rights holders should consider gathering evidence in a number of ways and note as many of the features of the product concerned as possible, for example, the full list of products and production operations of the defendants, including any kind of infringement episodes, duration of those, implication of the product (such as harm done to the public), the price of the product, and many other kinds of categories and variety of factors. The plaintiffs has the duty of the full burden of proof at trial, in order to facilitate the court, having conclusive evidence will support a higher amount of compensation at the time of the verdict.

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