Italian Ferrero S.P.A (Ferrero) filed a lawsuit against Mengtesha (Zhangjiagang) Foodstuff Co. (Foodstuff), arguing that the latter's activities of selling and marketing their chocolate products named “Tresor Dore” (TD) using similar package and trade dress as their chocolates “Ferrero Rocher” (FR) constituted unfair competition. The Supreme People's Court (SPC) agreed with the plaintiff and granted them damages and ordered Foodstuff to cease selling the Tresor Dore chocolate products with a packaging and decoration similar to FR's.
Under art. 5(2) of Unfair Competition law (UCL), a business operator should not harm a competitor by unfairly using a famous product, or a name, package or decoration similar to that merchandise, without their …show more content…
14 TLM is the awareness of the trademark among the relevant public. The SPC ruled that under art. 1 of the Interpretation of the SPC On Some Matters About The Application Of Law In The Trial Of Civil Cases Involving Unfair Competition (the Interpretation), a well-known commodity, as stipulated under art. 5(2) UCL, is a commodity that has “a certain market popularity within the territory of China and are known by the public concerned”. The SPC remarked that the FR chocolates were famous and highly reputable products in the relevant market within the territory of China, taking into account elements such as the time of its entry into the Chinese market, the sales amount, and marketing, and whether it became famous in China before the defendant's Tresor Dore.8 The second criterion mentioned under art. 14 TLM is the duration of the trademark use. In this case, the FR chocolates were first sold in 1984 in the Chinese market, then two years later with the FR trademarked logo, and using their signature trade dress and packaging, whereas Foodstuff started using similar packaging and trade dress for their TD only in 1990.9 The third element is the duration, degree and geographical range of all the publicity operations. It has been deemed by the SPC that the extensive advertisement and promotion over a long period of time for this specific product to the relevant public in China and abroad had the effect that said public could easily associate the overall packaging with the Ferrero Rocher chocolates.10 As for the fourth criterion, the courts have to take into account records of protection provided for the trademark as a well-known trademark. As previously mentioned, Ferrero had applied for a three-dimensional trademark to the World Intellectual Property Organization in 1984. And lastly, the court may consider other factors related to the trademark's well-known status and specific
Under art. 5(2) of Unfair Competition law (UCL), a business operator should not harm a competitor by unfairly using a famous product, or a name, package or decoration similar to that merchandise, without their …show more content…
14 TLM is the awareness of the trademark among the relevant public. The SPC ruled that under art. 1 of the Interpretation of the SPC On Some Matters About The Application Of Law In The Trial Of Civil Cases Involving Unfair Competition (the Interpretation), a well-known commodity, as stipulated under art. 5(2) UCL, is a commodity that has “a certain market popularity within the territory of China and are known by the public concerned”. The SPC remarked that the FR chocolates were famous and highly reputable products in the relevant market within the territory of China, taking into account elements such as the time of its entry into the Chinese market, the sales amount, and marketing, and whether it became famous in China before the defendant's Tresor Dore.8 The second criterion mentioned under art. 14 TLM is the duration of the trademark use. In this case, the FR chocolates were first sold in 1984 in the Chinese market, then two years later with the FR trademarked logo, and using their signature trade dress and packaging, whereas Foodstuff started using similar packaging and trade dress for their TD only in 1990.9 The third element is the duration, degree and geographical range of all the publicity operations. It has been deemed by the SPC that the extensive advertisement and promotion over a long period of time for this specific product to the relevant public in China and abroad had the effect that said public could easily associate the overall packaging with the Ferrero Rocher chocolates.10 As for the fourth criterion, the courts have to take into account records of protection provided for the trademark as a well-known trademark. As previously mentioned, Ferrero had applied for a three-dimensional trademark to the World Intellectual Property Organization in 1984. And lastly, the court may consider other factors related to the trademark's well-known status and specific