On 24 April, the Supreme People’s Court released the “Model Cases of IP Criminal Protection by the Supreme People's Court” The Supreme Court published a total of nine typical cases, among which two cases handled by Lusheng Law Firm were selected, including: the case concerning counterfeiting the “LEGO” service trademark handled on behalf of the LEGO Group, and the case concerning counterfeiting registered trademarks by Lu Moufa and others handled on behalf of NBC Universal.
01
Case Handled on Behalf of the LEGO Group Concerning Counterfeiting the “LEGO” Service Trademark
Brief Facts of the Case
Typical Significance
The Amendment (XI) to the Criminal Law of the People’s Republic of China revised Article 213 of the Criminal Law to bring acts of counterfeiting registered service trademarks within the scope of criminal regulation, thereby strengthening the criminal protection of registered trademarks. In this case, the educational and training services provided by the defendant entity were determined to be the same type of services as those designated for use under the right holder’s registered service trademark, and the training fees collected by the defendant entity were used 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, in light of 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 serve as the threshold for establishing the crime of counterfeiting a registered service trademark, and further clarifies that service fees collected by the perpetrator and the like constitute illegal gains.
This case has also been 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 (Dispute Resolution and Investigation Cases) of 2022 by Business Law, one of the National Typical Intellectual Property Cases of the People’s Courts for 2021, one of the Top Ten Cases on Judicial Protection of Intellectual Property Rights by Shanghai Courts in 2021, and one of the Typical Cases on the Protection of Intellectual Property Rights by Procuratorial Organs to Safeguard Innovation-Driven Development (announced in 2022) selected by the Supreme People’s Procuratorate.
———— 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 Handled on Behalf of NBC Universal Concerning the Manufacture and Sale of Counterfeit Universal Studios Licensed Products
Brief Facts of the Case
From November 2019 to August 2022, without the permission of the registered trademark right holder, the defendants, including Lu Moufa, 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 aforesaid trademark logos for sale, with an amount of illegal business operations exceeding RMB 11.25 million. The public security authorities seized 25,730 pieces of goods bearing counterfeit registered trademarks and 72,550 items including hangtags, neck labels and washing labels at the premises operated by Lu Moufa.
The People’s Procuratorate of Tongzhou District, Beijing, charged the defendants, including Lu Moufa, 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 addition of elements lacking distinctive features after “UNIVERSAL STUDIOS” in the alleged infringing logos did not affect the manifestation of the distinctive features of the registered trademarks, and therefore such logos constituted “identical trademarks.” As Lu Moufa and others, without the permission of the registered trademark owner, used trademarks identical to the registered trademarks on the same kind of goods, they all constituted the crime of counterfeiting registered trademarks and were sentenced accordingly. Lusheng Law Firm represented NBC Universal in assisting the procuratorate and the court by 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 provides clear criteria for determining identical trademarks. In this case, the alleged infringing logos added elements lacking distinctive features, which did not affect the manifestation of the distinctive features of the registered trademarks, and therefore should be determined as trademarks identical to the registered trademarks, thereby highlighting the concept of strict protection of intellectual property rights.
This case has also been selected as: one of the Top Ten Criminal Cases on Intellectual Property Protection for 2023–2024 by the Quality Brands Protection Committee (QBPC), the Best Cooperation Case (Offline Cooperation) of the 4th AACA (Alibaba Anti-Counterfeiting Alliance) Zhi Ying Awards, and one of the Ten Typical Cases Released by Public Security Organs on Strengthening Criminal Protection of Intellectual Property Rights to Support Comprehensive Innovation.
———— Case-handling Team ————
WANG Shan
Director of the Shanghai Office, Co-head of Dispute Resolution Practice
cwang@lushenglawyers.com
CHENG Chen
Paralegal
echeng@lushenglawyers.com
