Shanghai ROSEMOUNT Instrument Co., Ltd. registered Emerson's Rosemount trademark in Chinese, and Emerson took it to court in Shanghai last year. The conclusion is that the defendant used a logo similar to the registered trademark "Rosemount" on the same commodity without the plaintiff's permission, which constituted an infringement of the plaintiff's exclusive right to use the trademark, and the defendant should bear the civil liability of stopping the infringement and compensating for the losses. The verdict is as follows:
People's Republic of China (PRC) Shanghai Higher People's Court
paper of civil judgment
(2008) Gao Hu MinsanziNo. 1 15
Appellant (defendant in the first instance) Shanghai Rosemount Instrument Co., Ltd.
Legal Representative: Ryan, chairman of the board of directors of this company.
Authorized Agent: Gu Xiaorong, lawyer of Shanghai Zhongxin Law Firm.
Authorized Agent: Mao Youming, lawyer of Shanghai Zhongxin Law Firm.
Appellee (plaintiff in the original trial) is Rosemount Company, and its domicile is 8200 Market Avenue, Chahason, Minnesota, USA (8200 Market Avenue, Chahason, Minnesota, 553 17, USA).
Authorized Agent: John Michael groves, Director of Intellectual Property of Emerson Asia Pacific.
Authorized Agent: Huang Song, lawyer of Hejun Law Firm Shanghai Branch.
Authorized Agent: Zhao Fang, lawyer of Hejun Law Firm Shanghai Branch.
The appellant, Shanghai Rosemount Instruments Co., Ltd., refused to accept the civil judgment of Shanghai No.1 Intermediate People's Court (2007) No.360 because of the dispute over infringement of trademark exclusive right, and appealed to our court. After the court accepted the case, it formed a collegiate bench according to law and held a public hearing on September 25, 2008. The appellants' entrusted agents Gu Xiaorong and Mao Youming, the appellee's entrusted agent John Michael Groves, the translator Ding Yu and his entrusted agents Huang Song and Zhao Fang attended the proceedings. The case has now been closed.
The court of first instance found through trial that the plaintiff obtained the trademark registration certificateNo. on March 30th, 1982. 1557 18 is issued by the State Administration for Industry and Commerce of the People's Republic of China approved by the Trademark Office of People's Republic of China (PRC) (hereinafter referred to as the State Trademark Office). The period of validity of the trademark registration has been extended to March 29th, 20th12nd, and the approved goods are classified as Class 9 of the International Commodity Classification, namely industrial and aviation pressure sensors and electronically controlled pressure sensors, temperature sensors and electronically controlled temperature sensors and angle of attack sensors.
On August 23rd, 1989, China Instruments published the article "Rosemount Company plans to build a wholly-owned enterprise in China"; On May 9 1990, the front page of China Instruments published the article "Rosemount Instruments is optimistic about the China market"; On April 7th, 1993, the article "Shanghai Rosemount Co., Ltd., the largest joint venture in China's instrument industry, officially signed a contract" published in China Instrument newspaper reported: "Shanghai Automation Instrument Company and Rosemount Company of the United States, based on the principle of equality and mutual benefit, have made active and friendly consultations between the two parties, and in accordance with the People's Republic of China (PRC) Law on Sino-foreign Joint Ventures and other relevant laws, It is agreed to set up a joint venture' Shanghai Rosemount Co., Ltd.' in Pudong New Area of Shanghai ... Rosemount Company of the United States was established in 1956, which is the largest automation instrument company in the United States and a world-famous instrument and control system manufacturing company ... "1996. The second issue of Petrochemical Automation (1999) was published. Thermal Automation of Thermal Power Plant (No.3 and No.4 in 2004, No.2 and No.3 in 2005), China Cement (No.6 in 2005), Modern Chemical Industry (No.8 in 2005, No.0/0/2 in 2005). The advertising headlines mainly include "Rosemount differential pressure flow better measurement scheme", "Rosemount 2088 intelligent pressure transmitter" and "Rosemount 1 15 1 pressure transmitter's legendary performance continues to improve today". The telephone number of Emerson's process management office is printed at the bottom of the leaflet. Published in Iron and Steel (No.9-1 1 in 2006, No.3-5 in 2007), China Electric Power (No.2, No.6 in 2007) and Modern Chemical Industry (2007).
On the 30th page of the textbook "Process Testing Instrument" for secondary specialized schools (1 September 1999 edition1printed for the fifth time in June 2006), there is a section devoted to "11intelligent transmitter", in which it is mentioned that "it is produced by Rosemont Company in the United States. The introduction of "intelligent differential pressure transmitter" in the national key textbook "Control Instruments and Computer Control Devices" (September 2002 1 version, the fifth printing in March 2007) is that "there are many kinds of intelligent differential pressure transmitters actually used at present, with different structures, but the overall structure is similar. Firstly, the working principles and characteristics of Honeywell ST3000 differential pressure transmitter and Rosemount 305 1C differential pressure transmitter are briefly introduced, and then the intelligent differential pressure transmitter of Zhejiang University Central Control Company 1 15 1 is introduced in detail. These transmitters all use HART communication to transmit information. " The chapter on "305 1 s pressure transmitter" in the measurement training textbook "Course of Automatic Measurement of Natural Gas" (1 version, July 2004, page 79) explains the automatic detection technology of "Rosemount 305 1s series instruments of Emerson Process Management Company ..." (/kloc In August, 2004, the chapter "Capacitive Pressure (Differential Pressure) Transmitter" in issue 1 on page 95 stated that "at present, China Xi and China Beijing have successively imported11series capacitive pressure transmitters from American Rosemount Company". The second printing (June 5 5- 10/October 5-38, 2007) of the national planning textbook "Chemical Instrument and Automation" for the 11th Five-Year Plan of general higher education has a chapter on "Intelligent Pressure Transmitter", and explains that "the working principle of Fisher-Rosemount intelligent differential pressure transmitter in the United States is briefly introduced as an example ..."
According to the Articles of Association of Shanghai Rosemount Co., Ltd. dated1March 30, 993, the English name of Shanghai Rosemount Co., Ltd. is Rosemount Shanghai Co, Ltd., and the investors are Shanghai Automation Instrument Company and Rosemount Company (USA), with the investment ratios of 40% and 60% respectively. On September 8, 2002, Shanghai Rosemount Co., Ltd. applied to change its name to Emerson Process Control Co., Ltd. and changed its name to Emerson Process Management Co., Ltd. On September 26, 2002, Shanghai Administration for Industry and Commerce approved the name change of Shanghai Rosemount Co., Ltd. to Emerson Process Control Co., Ltd. After the equity transfer, the investors of Emerson Process Control Co., Ltd. have been changed to Emerson Electric (China) Investment Co., Ltd. and Emerson Electric (Switzerland) Holding Company.
The defendant was founded on June 5438+065438+1October 1 1 in 2004, and was approved to use the name of Shanghai rosemont industrial co., ltd at the time of establishment registration. Later, on May 22, 2006, the company was pre-approved by Shanghai Administration for Industry and Commerce and renamed as Shanghai Rosemount Instrument Co., Ltd., which is now its name.
On June 1 2005, He Xiaobo, the entrusted agent of Beijing Wenhai Law Firm Shanghai Branch, logged into the website at this address, and the words "Rosemount Shanghai" and "Rosemount Shanghai" were displayed in the upper left corner of the website. Shanghai Notary Office notarized the contents of the above-mentioned webpage and issued a notarial certificate (2006) No.9149. The defendant recognized that the website involved in notarization was the website of his company.
In the fifth issue of Petrochemical Automation in 2006, there was an advertisement about pressure transmitter. The words "SHANGHAI ROSEMENT" and "Rosemount Shanghai" are printed in the upper left corner of the advertisement page, and the words "Rosemount International Group Co., Ltd. Shanghai Representative Office" are printed in the lower right corner of the advertisement text. The telephone number, website address and address are 86-2 1-57735656, Shanghai Songjiang High-tech.
On April 10, 2007, the outsider purchased five intelligent pressure transmitters (specifications and models are 3051CD22b3m4as52n1W2 and 3051TG4E2A21B3m4A respectively) from the defendant. The notary office of Jing 'an District of Shanghai conducted evidence preservation notarization on the above purchase process, and issued a notarial certificate (2007) Hu Jing Certificate No.999, in which "Rosemount Shanghai" in the upper right corner of one nameplate was also marked with "TM" logo, and "Rosemount Shanghai" was also displayed above the words "Rosemount Shanghai" on the LCD screen. In addition, "Rosemount Shanghai" and "Rosemount Shanghai" are printed on the outer packaging box and product certificate of the pressure transmitter, and the words "Rosemount Shanghai" are also printed on the upper right corner of each page of the quick installation manual attached to the packaging box.
On June 27th, 2007, Shen Yujie, the entrusted agent of Beijing Wenhai Law Firm Shanghai Branch, connected to the Internet and searched for "Shanghai Rosemount Instrument Co., Ltd." through Google. Click on the search results link, and he can enter the pages introduced by the defendant company. The address and telephone number displayed on the webpage are 88 -7 Fumin Road, Songjiang High-tech Park, Shanghai. Among them, the company profile displayed by the defendant on the instrument business website (www. 17 1835.com) has a rectangular box with the words "Rosement" (marked with "TM" on the right) and "Rosemont" written on it; The brand involved in the basic information released by the defendant on Power Tiger Network (www.dianlihu.com) is displayed as "Rosemount"; Enter a web page with the address /web/en/index.asp, and "Shanghai ROSEMENT" is displayed in the upper left corner of the web page (marked with "TM" on the right side). Shanghai Notary Office notarized the contents of relevant web pages for evidence preservation, and issued a notarial certificate (2007) Huzheng No.5272.
On June 29th, 2007, the outsider went to the defendant to buy the product 1 set with the nameplate marked "Model 305 1 Intelligent Transmitter" at the price of RMB 1.900 yuan. Shanghai Notary Office notarized the above-mentioned purchase process with evidence preservation, and issued a notarial certificate (2007) No.8848. Compared with the pressure transmitter notarized before, the words "Rosemount Shanghai" or "Rosemount Shanghai" are no longer on the nameplate, product certificate and quick installation instruction, but there are still many places printed with "Rosemount Shanghai" on the product shell and LCD instrument, and the words "Rosemount Shanghai" are above the LCD instrument.
The words "Rosemount" and "ROSEMENT" are printed on the cover of the 23rd issue in 2007, and the name, address and telephone number of the defendant company are displayed on the back cover; The promotional materials of Newborn China and 305 1, 15 1 smart pressure transmitters are printed with "Shanghai ROSEMENT" and "Shanghai Rosemont" in the upper right corner of the cover and the upper left corner of the back cover respectively. All 305 1,11intelligent pressure transmitters also have "Rosemount Shanghai" printed on the upper right corner of the inner page. In addition to the name, address and telephone number of the defendant company, the back cover of these two publicity materials also bears the words "Rosemount International Group Limited" or "Rosemount International Group".
It is also found out that on October 23, 2004, Shanghai Rosemont Industrial Co., Ltd. applied for the registration of "ROSEMENT" and "Rosemont" trademarks on the ninth category of goods, and the State Trademark Office issued the Notice of Acceptance of Registration Application on October 27, 2005, in which the initial announcement date of "ROSEMENT" trademark was May 2007.
On August 22, 2006, the plaintiff applied for registration of the trademark "Rosemount" on the ninth category of goods.
In the lawsuit of first instance, the plaintiff claimed that the pressure transmitter accused of infringement was the same commodity as the pressure sensor in the commodity approved for use by the registered trademark involved, while other products operated by the defendant in the relevant evidence materials were similar commodities, such as turbine flowmeter, scraper flowmeter, electromagnetic flowmeter and vortex flowmeter. After the trial, the plaintiff stated in writing that in this case, only the relevant infringement facts involving the pressure transmitter were advocated, but the right to file a separate lawsuit against similar goods for alleged infringement was reserved.
In addition, in order to prove the expenses of reasonable expenses, the plaintiff provided the court of first instance with a lawyer's fee voucher with a total amount equivalent to RMB 645 177.33, and explained that the reasonable expenses claimed in this case were RMB 322,588.67. The rest mentioned in the claim was related to caseNo. (2007) Hu (Zhi) 359, and the defendant raised an objection. The plaintiff of Emerson Electric Company was reflected in this lawyer's fee voucher. The court of first instance held that the lawyer's fees, notary fees and translation fees claimed by the plaintiff had actually occurred and could be considered together when determining the amount of compensation. However, not all the lawyer fees negotiated by the plaintiff and his lawyer should be borne by the defendant when he loses the case. The court of first instance will determine the amount that can be supported within a reasonable range according to the lawyer's fees and the specific circumstances of the case.
The court of first instance held that the trademark "Rosemount" involved in the case had been approved and registered by the State Trademark Office and had been renewed several times. It is still within the validity period. The plaintiff is the trademark registrant of the trademark, and his exclusive right to use the trademark within the approved use scope of the trademark shall be protected by the laws of China. Relevant reports and contents published in trade magazines show that the plaintiff has been optimistic about the China market since the early 1990s, and entered China with products and brands by establishing joint ventures. For a long time, whether it is the Chinese translation used by the plaintiff in China's propaganda or the Chinese logo appearing in the advertisement of Rosemount's registered trademark products, Rosemount's corresponding Chinese has always been Rosemount, and judging from the duration of the plaintiff's propaganda, Rosemount has gained a high reputation in the industry. Speaking of brands, the only transliteration that can be thought of is "Rosemount". The relevant contents mentioned in the professional textbooks and the experience of users in the industry after using the plaintiff's products can also show that "Rosemount" has been well known to the relevant public as a Chinese synonym for the famous brand "Rosemount".
When the defendant was founded, the trademark "ROSEMOUNT" involved had been registered in China for more than 20 years. The defendant should know that the trademark and its Chinese transliteration "Rosemount" are brands that the plaintiff has been promoting and using for a long time. The defendant not only marked "Shanghai ROSEMENT" (or "Shanghai ROSEMENT") and "Shanghai Rosemont" on its (intelligent) pressure transmitter products and their certificates, quick installation manuals and packages, but also highlighted the words "Shanghai Rosement" (or "Rosemont") in its brochures and related websites. Comparing "ROSEMENT" or "Rosement" with the plaintiff's registered trademark "ROSEMOUNT", it is found that they are similar in pronunciation, but there is little difference in English letters and their arrangement. They are all fictitious words with no real meaning in English dictionaries, so they belong to similar trademarks. Regarding whether the plaintiff claimed that the defendant's use of "ROSEMOUNT Shanghai" or "ROSEMOUNT Shanghai" also constituted an infringement of his trademark exclusive right, the court of first instance held that, firstly, judging from the phenomenon that the defendant sometimes marked "TM" in the upper right corner of "Rosemount Shanghai", the defendant mainly intended to use "Rosemount" as a trademark; Secondly, as mentioned above, when the defendant highlights "Rosemount Shanghai" or "Rosemount Shanghai" in his commodities and publicity materials, the relevant public will naturally associate the registered trademark of "Rosemount" or think it has some connection with it. It can be seen that "Rosemount" and "Rosemount" are similar, which
To sum up, the defendant used a logo similar to the registered trademark "ROSEMOUNT" on the same commodity without the plaintiff's permission, which constituted an infringement of the plaintiff's exclusive right to use the trademark, and the defendant should bear civil liability for stopping the infringement and compensating for the losses. In view of the fact that the losses suffered by the plaintiff or the benefits gained by the defendant due to infringement cannot be ascertained, the court of first instance comprehensively considered the popularity of the plaintiff's trademark in the industry, the degree of the defendant's subjective fault, the manifestations, nature and consequences of the infringement, and the reasonable expenses paid by the plaintiff to stop the infringement, and decided the amount of compensation that the defendant should bear as appropriate.
Accordingly, the court of first instance based on Article 51, Item (1) and Item (5) of People's Republic of China (PRC) Trademark Law, Item (1) and Item (2) of Article 56, Item (1), Item (1) of Article 1, Item (2) of Article 9 and Item (1) of Article 16 of the Supreme People's Court's Interpretation on Several Issues Concerning the Application of Laws in the Trial of Trademark Civil Disputes. Defendant Shanghai Rosemount Instruments Co., Ltd. shall immediately stop infringing the exclusive right to use Rosemount's registered trademark (trademark registration certificateNo. 1557 18), which shall be enjoyed by plaintiff Rosemount from the effective date of the judgment; 2. The defendant Shanghai Rosemount Instrument Co., Ltd. shall compensate the plaintiff Rosemount Company for economic losses of RMB 300,000.00 Yuan within 10 days from the effective date of this judgment; Third, the plaintiff Rosemount Company's remaining claims are not supported. In this case, the acceptance fee for the first instance is 65,438 yuan+02,826 yuan, which is 4,074 yuan for the plaintiff Rosemount Company and 8,752 yuan for the defendant Shanghai Rosemount Instrument Co., Ltd. (2007) The case of banning characters in Shanghai No.2 Middle School, that is, Rosemount Company ordered Shanghai Rosemount Instrument Co., Ltd. to stop infringing the exclusive right to use registered trademarks before suing on September 18, 2007, and the acceptance fee for the case.
After the verdict, the defendant Shanghai Rosemount Instrument Co., Ltd. refused to accept it and appealed to our court, demanding that the original judgment be revoked and the appellee's application for first instance be rejected. The main reasons for the appeal are as follows: 1. The facts prosecuted by the appellee in the first instance of this case are the same as those of case No.359 of Zi Chu (2007), which belongs to repeated prosecution, and the original judgment violated the principle of "one thing is not dealt with again". Second, "Rosemount" and "Rosemount" are obviously different. The appellee has never held the registered trademark of Rosemount, so the appellant has the right to use its legally registered business name. 3. "ROSEMENT" and "Rosemont" have applied for trademark registration, which has been accepted by the Trademark Office and is in the objection period. The appellee shall apply to the administrative organ for handling, and the court will not handle it. Four. The appellee of the first instance appealed against "ROSEMENT" and "ROSEMOUNT", but the judgment of the first instance was to stop infringing the trademark right of "Rosemount". Five, the original judgment lacks cross-examination opinions and cross-examination process, and there is no evidence to identify it.
The appellee Rosemount Company argued that the facts identified in the original judgment and the applicable law were correct, and the appellant's appeal grounds could not be established. The main reasons for the defense are as follows: 1. The appellee sued the appellant for trademark infringement and unfair competition in the first instance, so there was no repeated prosecution. Two, "ROSEMOUNT" and "Rosemount" have the same pronunciation and meaning, which constitutes an approximation, so the appellant's significant use on the same commodity constitutes trademark infringement. 3. "Rosemount" is the trademark that the appellant applied for registration. Its trademark application is not a reason for infringement defense, and it cannot affect or damage prior rights. Cybersquatting is an infringement. Four, the approval of the enterprise name is not the authorization of intellectual property rights.
In the second trial, neither party submitted new evidence to our court.
It was found through trial that the facts ascertained by the court of first instance were true.
We believe that the appellee is the right holder of the registered trademark of Rosemount, and his exclusive right to use the registered trademark is protected by law. The appellee has used and publicized its trademark for many years, and the registered trademark "Rosemount" and its Chinese transliteration "Rosemount" are well known to the relevant public. When the appellant was established, as an enterprise dealing in similar products, it should know the above-mentioned trademark of the appellee and its Chinese transliteration, but it still highlighted the words "Rosement/ROSEMENT" and "ROSEMOUNT Shanghai" similar to the registered trademark on the goods approved for use by the registered trademark of the appellee, which subjectively misled the relevant public and infringed on the appellee's exclusive right to use the registered trademark.
The appellant believes that the facts prosecuted by the appellee in the first instance of this case are the same as those of case No.359 (Hu (Zhi) in 2007), which belongs to repeated prosecution, and the original judgment violates the principle of "one thing shall not be dealt with again". We believe that this case is a trademark infringement lawsuit filed by the appellee because the appellee used a logo similar to its registered trademark "Rosemount" on the same kind of goods, and (Zhichuzi) No.359 in 2007 is an unfair competition lawsuit filed by the appellee for claiming that the appellee maliciously registered and used the appellee's trade name, falsely propagating and counterfeiting the appellee's unique name and decoration of well-known goods. So this case is not a repeated lawsuit, it is original. The appellant's reasons for appeal lack factual and legal basis, and our court will not support them.
The appellant thinks that "Rosemount" is obviously different from "Rosemount". The appellee has never held the registered trademark of Rosemount, so the appellant has the right to use its legally registered business name. Our court believes that although there are differences in appearance between "Rosemount" and "Rosemount", as a Chinese transliteration of "Rosemount", the pronunciation of "Rosemount" and "Rosemount" is similar. At the same time, both of them are fictional words with the same meaning, so they constitute approximate trademarks. Although the word "Rosemount" is not registered as a trademark, the appellee regards it as the only transliteration of the registered trademark of "Rosemount", which has been used for a long time on the goods whose registered trademark of "Rosemount" has been approved for use, so it has enjoyed popularity among the relevant public and formed a corresponding relationship with the registered trademark of "Rosemount". The appellee's use of the word "Rosemount" on the goods approved for use with the appellee's registered trademark "Rosemount" is likely to mislead the relevant public about the source of its goods, and its behavior violates the appellee's exclusive right to use the registered trademark "Rosemount" and should bear corresponding civil tort liability. Regarding the reasons why the appellant thinks that its trademark "Rosemount" has been registered with the Industrial and Commercial Bureau, our court believes that the appellant should stop using the trademark "Rosemount" in caseNo. 2006/2007. 1 14 (2008) has been confirmed by the people's court to constitute unfair competition against the appellee. The appellant thinks that he has the right to use the legally registered enterprise name "Rosemount", which is not supported by our court.
The appellant believes that "ROSEMENT" and "Rosemont" have applied for trademark registration, and the Trademark Office has accepted it, which is in an objection period. The appellee shall apply to the administrative organ for handling, and the court will not handle it. We believe that the trademark administrative objection procedure is not the legal pre-procedure of judicial proceedings. Therefore, there is nothing wrong with the court of first instance accepting the case and making a judgment. The appellant thinks that the court should not handle the appeal grounds of this case, and this court does not support it.
The appellant believes that the appellee appealed "ROSEMENT" and "ROSEMOUNT" in the first instance, but the judgment of the first instance was to stop infringing the trademark right of "Rosemount". In our court's opinion, the appellee brought a lawsuit against the appellee for using the "ROSEMENT" and "ROSEMOUNT" logos to infringe his exclusive right to use the registered trademark of Rosemount. The original judgment found that the infringement was established, and it was not improper for the appellee to stop infringing the exclusive right to use the registered trademark of Rosemount. The appellant's grounds for appeal are not supported by this court.
The appellant believes that the original judgment lacks cross-examination opinions and cross-examination process, and there is no evidence to confirm it. In our opinion, according to the Supreme People's Court's requirements for the production of judgment documents, the judgment documents do not require that the cross-examination opinions and specific cross-examination process of both parties must be recorded, and the evidence on which the facts were found in the original judgment has been listed one by one in the judgment, so our court does not support the appellant's appeal reasons.
To sum up, the appellant's appeal request and reasons have no factual and legal basis and should be rejected. Accordingly, in accordance with the provisions of Article 153, paragraph 1 (1) and Article 158 of the Civil Procedure Law of People's Republic of China (PRC), the judgment is as follows:
Reject the appeal and uphold the original judgment.
The acceptance fee for the second instance of this case is 5800 yuan, which shall be borne by the appellant Shanghai Rosemount Instrument Co., Ltd..
This is the final judgment.
Presiding judge Zhang Xiaodu
Acting Judge Li Lan
Acting Judge Wang Jing
Press release issued on 24 October 2008/KLOC-0.
Bookkeeper Dong Erhui
), imitating the appearance of Rosemount 1 15 1 and 305 1 pressure transmitter products at the same time, in an attempt to confuse China market users with Emerson Process Management Co., Ltd.
() The logo of the brand pressure transmitter has seriously violated the legal reputation of Emerson Process Management Co., Ltd. ... Emerson Process Management Co., Ltd. hereby solemnly declares that it reserves the right to sue the relevant personnel or institutions that have infringed the legal rights and reputation of Rosemount, and reminds consumers to pay attention to identifying the product name and trademark when purchasing products. When you buy such counterfeit products, please report to the local administrative department for industry and commerce or contact Emerson Process Management Co., Ltd. in time.