Author: David Lee, Jason Ji

This case a trademark rights infringement dispute. The plaintiff Johnson & Johnson enjoys prior trademark rights upon the "美林 (MOTRIN in Chinese; MEI LIN)" trademark and has been widely using and promoting it on "ibuprofen" medicines for many years.

Johnson & Johnson accused Andier Company, Jinhua Company, Yinhua Company and Jinkuihua Company of trademark infringement for their use of the trademark "东升美林 (DONG SHENG MEI LIN in Chinese)" on the products of children's fever patches, cough patches, protein powder , etc.The four defendants are required to stop infringement, compensate for losses, and eliminate adverse effects.

In this case, Chang Tsi & Partners, as the entrusted agency of the plaintiff Johnson & Johnson, carefully analyzed the case, comprehensively collected and sorted the evidence materials, and provided professional legal services.

After the trial, the court decided that the four defendants infringed upon Johnson & Johnson's trademark rights, stop the infringement and compensate CNY1.2 million for the losses.

1. Background of the case

The plaintiff Johnson & Johnson has obtained trademark registrations for its "美林 (MOTRIN in Chinese; MEI LIN)" trademark under Reg. Nos. 1290226, 8107805 and 10328833 in class 5 covering the goods analgesic preparations, pharmaceutical preparations, medicines used for human purpose and vitamin preparations. The "美林 (MOTRIN in Chinese; MEI LIN)" trademark has been used by Johnson & Johnson for its ibuprofen product and has obtained high reputation in China. The ibuprofen product is mainly used to treat the symptoms of fever and pain caused by a cold.

The defendant Andier Company used the " 东升美林(DONG SHENG MEI LIN)" trademark on its promotional materials, business activities and product packaging. Andier Company's products include children cough relief patch, children fever patch, diarrhea patch for children, vegetable solid drink, vitamin E, protein powder. Other defendants, including Jinhua Company, Yinhua Company and Jinkuihua Company, are the producers of products sold by Andier Company.

The plaintiff sued the four defendants before Guangzhou Baiyun District People's Court and demanded that the four defendants shall stop trademark infringement, compensate for the loss of RMB 3 million and eliminate the influence.

After trial, the court decided that the accused infringing products "children cough relief patch, children fever patch, diarrhea patch for children, vegetable solid drink, vitamin E, protein powder" and the goods "analgesics, medical preparations, human medicines and vitamin preparation" in Class 5 are identical in terms of function, usages, manufacturers, channels of distribution, and targeted customers. Thus the two parties' goods are similar goods. The two parties' trademarks are similar in overall appearance.

The court ordered the four defendants to immediately stop the infringement and compensate for the loss of RMB 1.2 million.

2. Difficult points of the case

First, the defendants have registered the trademark "东升美林 (DONG SHENG MEI LIN in Chinese)" in Classes 5 and 10. Whether these registrations could support the defendant's actual use

The defendants registered the trademark "东升美林 (DONG SHENG MEI LIN in Chinese)" on the goods "food for babies; adhesive plasters; dental abrasives" in Class 5 and the goods "medical apparatus and instruments; vaginal syringes; E.N.T. department appliance; dental apparatus and instruments; ultrasonic instruments for medical use; breast pumps; condoms; suture materials." The first obstacle for the plaintiff to lodge the lawsuit is that the plaintiff shall prove that the defendant's registrations could not support their actual use.

Second, the plaintiff's "美林 (MOTRIN in Chinese; MEI LIN)" trademark has not been recognized as a well-known trademark, how to obtain cross-class protection

The designated goods of the "美林 (MOTRIN in Chinese; MEI LIN)" trademark are in Class 5. But the goods "children fever patch" of the defendants belongs to Class 10. The "美林 (MOTRIN in Chinese; MEI LIN)" trademark has not been recognized as a well-known trademark. In order to obtain cross-class protection, the attorneys shall provide extremely persuasive evidence to prove that the two parties' goods are identical in terms of function, usages, manufacturers, channels of distribution, and targeted customers. The relevant public generally thinks that there are specific links between two parties' products. Thus the two parties' goods shall be deemed as similar goods.

Third, the defendant's " 东升美林 (DONG SHENG MEI LIN)" trademark has certain difference from the plaintiff's "美林 (MOTRIN in Chinese; MEI LIN)" trademark, how to identify the two marks are similar marks

In the court hearing, the defendants argued that the Chinese characters "东升(DONG SHENG)" stands in the front of "美林(MEI LIN in Chinese)" and have very strong distinctiveness. The defendant's trademark could be distinguished from the plaintiff's "美林 (MOTRIN in Chinese; MEI LIN)" trademark. Furthermore, the product packaging bear the producer and distributor. No confusion or misrecognition will be caused.

3. Litigation strategy

Based on the above core disputes, Chang & Tsi made the following litigation strategy.

First, the defendant's registered trademark is "东升美林 (DONG SHENG MEI LIN in Chinese)" could not support their actual use.

There are two reasons. One reason is that the size of the four characters in the defendant's registration are identical. But in actual use, they prominently used the characters 美林 (MEI LIN in Chinese) and changed the distinctive feature of their registered trademark. Another reason is that the designated goods of their registrations do not cover the goods "children cough relief patch, children fever patch, diarrhea patch for children, vegetable solid drink, vitamin E, protein powder". The actual use of the defendants exceeds the approved goods of their trademark registrations.

Second, the defendant's products "children fever patch" is similar to the Plaintiff's goods in Class 5

The general recognition of the relevant public shall be considered in deciding whether the goods are similar goods. "Classification of Similar Goods and Services" is only for reference. The defendant's "children fever patch" and the plaintiff's goods share the same function of bringing down a fever and relieving pain. The two parties' goods are both sold via medical stores to the patients who have fever or pain. The two parties' goods are identical in terms of function, usages, manufacturers, channels of distribution, and targeted customers and shall be deemed as similar goods.

Third, The defendant's used mark  is similar to the plaintiff's registered trademark "美林 (MOTRIN in Chinese; MEI LIN)"

The defendant's actually used trademark “东升美林”  wholly incorporate the plaintiff' registered trademark. Though the defendants includes the characters "东升(DONG SHENG in Chinese)" ahead of "美林 (MOTRIN in Chinese)", the size of "东升(DONG SHENG in Chinese)" is very small while that of "美林 (MOTRIN in Chinese)" is very large. The defendant's prominently used the plaintiff's "美林 (MOTRIN in Chinese; MEI LIN)" trademark. The two parties' trademarks are highly similar in respect of overall appearance, pronunciation and meaning and shall be deemed as similar marks.

4. Typical meaning of the case:

First, Johnson & Johnson is the world famous comprehensive medical and health care company. Its "美林 (MOTRIN in Chinese; MEI LIN)" ibuprofen medicine has high reputation in the global market. This case fully presents the resolution of Johnson & Johnson in protecting its IP rights and attacking malicious infringement.

Second, though the plaintiff's mark is not recognized as well-known trademark, the restriction of Classification of Similar Goods and Services is broken and cross-class protection is granted. This case reflects the professional service ability of Chang Tsi in handling complex and difficult IP disputes.

Third, in the background that both the State Council and the Supreme People's Court repeatedly demand to increase the IP infringement compensation, the compensation in this case shows that Guangzhou Baiyun District People's Court accurately understand judicial policy and apply the laws, conforms to the historical background of strengthening IP protection. This judgment will further enhance the foreign companies' confidence to increase investment, conduct business and pursue IP protection in China.