[Case No.]

(2016) Yue 03 Min Chu No. 2951

(2019) Guangdong Min Zhong No. 3026

[Case Brief]

COMPAGNIE GENERALE DES ETABLISSEMENTS MICHELIN (hereinafter referred to as “Michelin company”) is a world-renowned tire manufacturer and has been ranked among the world's top 500 companies for many years. Michelin company owns two registered trademarks "MICHELIN" and “米其林”in class 12 on the goods “tires” with the registration No. 136402 and No. 519749. The two marks are now in the period of validity. Later, Michelin company registered the trademark "MICHELIN" in class 16 on the goods “printed matter” with the registration No. 781371, which is also within the validity period. Subsequently, Michelin company published and distributed colorful booklets "米其林(MICHELIN) Guide" and "米芝莲 (MICHELIN) Guide", recommending Michelin-starred restaurants. Through a long time use, the three trademarks have a high reputation in the market, which is known to the relevant public and have formed goodwill.

Michelin company found that Shenzhen MIZHILIAN(" 米 芝 莲 " in Chinese) Catering Management Co., Ltd (hereinafter referred to as "MIZHILIAN company") and its branches used "米芝 莲" as the enterprise name and use "MICHELIN" and "米芝莲" as commercial logos in catering services. Michelin company considered that the behavior of MIZHILIAN company allegedly constituted trademark infringement and unfair competition, and requested the court to recognize the involved three trademarks as well -known trademarks, and requested that the defendant stopped the acts of infringing the trademarks, eliminated the influence, and claimed for 500,000 RMB for economic loss.

Regarding Michelin company's request to recognize the three trademarks as well-known trademarks, the Intermediate People's Court of Shenzhen, Guangdong Province did not fully support it. The Court hold that the intention of MIZHILIAN company using the infringing mark was to take advantage of the good reputation of "米其林(MICHELIN) Guide" and "米 芝 莲 (MICHELIN) Guide" in recommending restaurants, in order to obtain high economic benefits. The recognition of well-known for the registered trademark "MICHELIN" on “printed matters” in Class 16 is sufficient to stop the infringement in catering services in class 43, thus the recognition of the two marks in class 12 as well-known trademark is not necessary.

After the judgment of the first instance was made, MIZHILIAN company filed an appeal and withdrew it later. Then the judgment of the first instance has now come into effect.

<Main points of the judgment>

In trademark infringement and unfair competition disputes, when the plaintiff requests to identify more than two registered trademarks as well-known trademarks in order to stop the infringement, the Court shall determine which registered trademark(s) need to be recognized as well-known trademark(s) based on the defendant's subjective intention of committing the infringement behavior.