Damages in the sum of CNY 14.8 million were recently awarded against Antarctic E-commerce in a trademark infringement lawsuit (Lacoste v Antarctic E-commerce) in China.
Lacoste holds the trademark registration for the device Ҡ(the “Lacoste Crocodileâ€),covering clothes in Class 25. Cartelo initially registered the device mark Ҡ(the “Cartelo Crocodileâ€) in Classes 18 and 25 and assigned this mark to Antarctic E-commerce. In 2018, Lacoste brought a civil action against Antarctic E-commerce for using the Cartelo Crocodile mark on clothes, bags, and so on. The appeal court recently gave its final decision in this action. In 2010, the Supreme People’s Court of China had rendered its verdict that supported the co-existence of the two marks on the basis that the Cartelo Crocodile mark was used in distinct circumstances.
The trial court found that the use of the Cartelo Crocodile mark amounted to trademark infringement, and the appeal court affirmed this ruling. The courts held that, although in the 2010 case the Cartelo Crocodile mark had been allowed to co-exist with the Lacoste Crocodile mark, the Cartelo Crocodile mark in this case was used in a circumstance in which the notably distinct elements had been cut out and the similar elements had been included, which was much more likely to cause confusion than in the previous case. Therefore, the court found that there was a trademark infringement, and ordered Antarctic E-commerce to stop this infringement and to pay damages of CNY 14.8 million.
This case shows that a change of use may deprive a user of the basis for the co-existence of two trademarks. The basis for co-existence is that the co-existing marks are used in sufficiently distinguishable circumstances. If this ground no longer exists, the case would become one of trademark infringement.
