On 24 April, the Supreme People’s Court released the “Typical Cases on Criminal Protection of Intellectual Property Rights”. In total, the Supreme Court published nine typical cases, among which two were cases represented by Lusheng Law Firm, including: the case concerning the counterfeiting of the “LEGO” service mark represented for the LEGO Group, and the case concerning the counterfeiting of registered trademarks by Lu Moufa and others represented for NBC Universal.
01
Case Representing the LEGO Group in Handling the Counterfeiting of the “LEGO” Service Mark
Brief Facts of the Case
Typical Significance
The Criminal Law Amendment (XI) of the People’s Republic of China revised Article 213 of the Criminal Law, bringing acts of counterfeiting registered service marks within the scope of criminal regulation and strengthening the criminal protection of registered trademarks. In this case, the court determined that the education and training services provided by the defendant entity were the same type of services as those designated for use under the right holder’s registered service mark, and used the training fees collected by the defendant entity as the basis for establishing criminal liability, which is consistent with the provisions of the Criminal Law. The Interpretation of the Supreme People’s Court and the Supreme People’s Procuratorate on Several Issues Concerning the Application of Law in the Handling of Criminal Cases Involving Infringement of Intellectual Property Rights, taking into account the characteristics of the service industry and other practical circumstances, further clarifies the criteria for determining “the same type of service”, provides that the amount of illegal gains shall be the threshold for establishing the crime of counterfeiting registered service marks, and further clarifies that service fees collected by the perpetrator and similar income constitute illegal gains.
This case was also selected as: one of the Top Ten Typical Cases of Crimes Involving Infringement of Intellectual Property Rights by the Third Intermediate People’s Court of Shanghai and the Third Branch of the Shanghai People’s Procuratorate; one of the Outstanding Transactions (Disputes and Investigations) of Commercial Law in 2022; one of the National Typical Intellectual Property Cases of People’s Courts in 2021; one of the Top Ten Cases of Judicial Protection of Intellectual Property Rights by Shanghai Courts in 2021; and one of the Typical Cases of Procuratorial Organs Protecting Intellectual Property Rights and Serving and Safeguarding Innovation-Driven Development selected by the Supreme People’s Procuratorate (published in 2022).
———— Case-handling Team ————
Wang Shan
Director of the Shanghai Office, Co-head of Dispute Resolution Practice
cwang@lushenglawyers.com
Hou Juanjuan
Head of Guangzhou Litigation Team
ahou@lushenglawyers.com
Feng Guimei
Senior Lawyer
hfeng@lushenglawyers.com
02
Case Representing NBC Universal in Handling the Manufacture and Sale of Counterfeit Universal Studios Licensed Products
Brief Facts of the Case
Between November 2019 and August 2022, the defendant Lu Moufa and others, without the permission of the registered trademark right holder, commissioned others to produce trademark logos such as “HARRY POTTER” and “UNIVERSAL STUDIOS”, and, by means of self-processing, sewing and labeling, manufactured and produced Universal Studios Harry Potter products such as wizard robes, scarves and ties bearing the above trademark logos, which they then sold, with the amount of illegal business operations exceeding RMB 11.25 million. The public security authorities seized 25,730 items of goods bearing counterfeit registered trademarks and 72,550 hangtags, neck labels, wash labels and other items at the premises operated by Lu Moufa.
The People’s Procuratorate of Tongzhou District, Beijing, charged the defendants Lu Moufa and others with the crime of counterfeiting registered trademarks and instituted a public prosecution before the People’s Court of Tongzhou District, Beijing. Upon trial, the People’s Court of Tongzhou District, Beijing held that the registered trademark right holder had registered trademarks such as “HARRY POTTER” and “UNIVERSAL STUDIOS”, and that the allegedly infringing logo added elements after “UNIVERSAL STUDIOS” that lacked distinctive features, which did not affect the manifestation of the distinctive features of the registered trademark and therefore constituted an “identical trademark”. Lu Moufa and others, without the permission of the registered trademark owner, used a trademark identical to its registered trademark on the same kind of goods, all of which constituted the crime of counterfeiting registered trademarks and were sentenced accordingly. Lusheng Law Firm represented NBC Universal in assisting the procuratorate and the court, providing professional legal advice and promoting the progress of this case.
Typical Significance
In order to further combat crimes of counterfeiting registered trademarks and to unify and clarify the criteria for determining “identical trademarks”, the Interpretation of the Supreme People’s Court and the Supreme People’s Procuratorate on Several Issues Concerning the Application of Law in the Handling of Criminal Cases Involving Infringement of Intellectual Property Rights has clarified the criteria for determining identical trademarks. In this case, the allegedly infringing logo added elements that lacked distinctive features, which did not affect the manifestation of the distinctive features of the registered trademark, and therefore should be determined as a trademark identical to the registered trademark, highlighting the concept of strict protection of intellectual property rights.
This case was also selected as: one of the Top Ten Criminal Cases on Intellectual Property Protection for 2023–2024 by the Quality Brand Protection Committee (QBPC); the Best Cooperation Case (Offline Cooperation) Award of the 4th AACA (Alibaba Anti-Counterfeiting Alliance) Zhi Ying Awards; and one of the Ten Typical Cases released by public security authorities on strengthening criminal protection of intellectual property rights to support comprehensive innovation.
