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First Time | 3D Trademark of LEGO Group Received Judicial Protection in Mainland China

IPR Daily

2022-01-07 11:59:55

LEGO JURIS A/C (hereinafter referred to as "LEGO Group") has achieved a great victory in court, where its 3D trademark received judicial protection in Mainland China for the first time. 


Represented by Harvesting Law Firm, this special case is against 4 defendants namely, Guangzhou Baiyunhu Robot Backpack, Zhongnuo Leather Co., Ltd, Zhongnuo Trade Co., Ltd, and SHEN Xiaoyu (hereinafter referred to as "4 Defendants"). The Court of First Instance ruled that the marks on the infringing products infringed LEGO Group's trademark rights, which is unconventional.( a three-dimensional trademark included).


[Case Brief]

-LEGO Group- 


The registration of LEGO Group’s trademark No. 4912052 and No. 10461954 (3D) were granted by China National Intellectual Property Administration (hereinafter referred to as "CNIPA") in class 18 on May 14, 2009 and December 14, 2013 respectively. (Class 18 includes travel bags, suitcases, wallets, handbags, backpacks, sports bags, etc.)


1641526531402612.png


-4 Defendants-


In 2017, Zhongnuo Trade Co., Ltd applied for registration of trademark ‘Nuode Robot’ in class 18, to which LEGO Group raised an objection. The CNIPA therefore rejected such an application because it is similar to LEGO Group’s trademark. In 2018, Zhongnuo once again applied for two design patents and one copyright registration for the same robot image.


未命名1641526359.png

Nuode Robot image


-Infringement -


In 2020, the four defendants sold backpacks, wallets and stationery boxes that infringed LEGO Group's registered trademarks on different Taobao online shops, namely "LEGO backpacks", "LEGO backpacks LEGO" and "I love LEGO backpacks". In the front, the shoulder straps, the labels, the zipper, and many other places of these backpacks, infringing marks have been used .


微信图片_20220107113846.png

The stationary box that used the infringing marks


未命名1641526749.png

The infringing marks in the front of the backpack


– The Court Decision –

The acts of producing and selling of backpacks, stationery boxes and wallets with the Robot image and the "1641526946516575.png" logo, have infringed LEGO Group's trademark rights. Therefore, 4 defendants have constituted joint infringement, and they shall be liable for compensation.


[Highlitghts]


Under the Trademark Law of PRC "Any words, design, letters of an alphabet, numbers, three-dimensional symbol, combinations of colour and sounds, as well as combinations of the above elements, may be applied for registration as trademarks." The “three-dimensional symbol", i.e. 3D trademarks, is a trademark presenting in a three-dimensional way. As special trademarks, 3D trademarks often have stronger visual impact than normal 2D trademarks which can better serve the goal of differentiate the source of goods or services. 


The LEGO Group, one of the world's largest toy manufacturers, has been using the image of minifigures for more than 40 years, which has become one of the most iconic symbol of the LEGO Group. Minifigures have been used in almost every building block set ever since birth and have appeared in LEGO Group’s shop decoration, advertising brochures, promotion videos, cartoons and many others. 


This case is the first time where LEGO Group has received judicial protection for its 3D trademark in mainland China, which is unconventional and of great importance to the protection of LEGO Group's intellectual property rights. 


Apart from this, the court held that four defendants have constituted joint infringement for producing and selling the infringing products. These below 3 elements have been taken into consideration: (1) the design of these backpacks was the same as the design patent applied by the defendant; (2) the image used at the front of these backpacks was similar to the work registered by the defendant's for copyright; (3) the defendants’ introduction in its online store ( they described themselves as bags manufacturers). 


This is also of significance impact as the reference for the court in judging the infringers' manufacturing behavior.


Source: IPRdaily

Author: Catherine Law & Rebecca Qin from Harvesting Law Firm

Editor: IPRdaily-Rene

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