Puyi Optical sought a preliminary injunction preventing Yongzheng Optical from using a logo layout similar to its registered logo
The court found that the overall similarity of the logos and the historical association between Puyi and Yongzheng were sufficient to cause confusion
While Yongzheng Optical held a trademark registration, the mark as used was very different from the mark as registered
In May 2023 the Beijing Haidian District Court issued a preliminary injunction in a trademark infringement lawsuit, prohibiting the use of Yongzheng Optical's logo pursuant to a request by Puyi Optical. This case is interesting not only because it is a rare example of a successful application for a preliminary injunction, but also because of the novel finding of similarity between two logos.
Background
Puyi was the last emperor of the Qing Dynasty, who wore glasses. In 2001 Hong Kong company China Elegant Limited created the brand Puyi Optical, which has now become a high-end eyewear brand in China.
In 2022 Puyi Optical discovered two offline stores of Yongzheng Optical, only four kilometres from its store, which used a logo layout similar to its registered trademark. An infringement lawsuit was filed, followed by an application for a preliminary injunction in December 2022.
Decision
On 23 May 2023 the Beijing Haidian District Court granted a preliminary injunction, prohibiting Yongzheng Optical from using a logo with a layout and font similar to those of Puyi Optical's logo. Even though the word elements in the two logos had certain differences, the overall similarity of the logos and the historical association between Puyi and Yongzheng (both being Qing dynasty emperors) were sufficient to potentially confuse consumers. The court also noted that Yongzheng Optical held a trademark registration, but found that the company was likely still infringing because the actual form of use was very different from the mark as registered. Nevertheless, the use of the word element alone without the infringing logo, namely 'YongzhengOptical', was still permissible.
 Puyi Optical's registered trademark |
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Yongzheng Optical's registered trademark |
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Trademark as actually used |
Comment
Although preliminary injunctions are powerful weapons, the Chinese courts at all levels are quite cautious in issuing such injunctions in IP cases. Most applications are either denied or withdrawn, due to the difficulty in passing the multi-element balancing test:
the applicant must have a solid basis of right;
the case must be urgent and call for immediate action;
the applicant will suffer irreparable harm in the absence of immediate action;
the undue harm that may be caused to the applicant if no injunction is issued outweighs the harm that may be caused to the respondent in case of an injunction; and
granting an injunction would not harm the public interest.
A failure to prove urgency and irreparable harm that cannot be remedied through a damage award accounts for the lack of success in obtaining an injunction in most cases.
The full decision in this case is yet to be made public, so pieces are still missing to fully understand how the court came to grant a preliminary injunction. Based on relevant news release, no specific evidence was mentioned to prove the urgency of issuing the injunction before carrying out a comprehensive review. It seems that the court reached its conclusion on urgency and irreparable harm based on the fame of Puyi Optical's trademarks and apparent bad faith of Yongzheng Optical.
Another interesting point is the novel finding of similarity between the logos. The word elements in the two logos have nothing in common, except that they both correspond to the name of an emperor. The court seems to have given particular weight to the design and font used by Yongzheng Optical, which made the logos' overall appearance confusingly similar at a glance. This is a thought-provoking finding, which may encourage rights holders to take bolder actions against similar infringement - especially against infringers that substantially change the appearance of a registered trademark to mimic a famous brand.
First published on World Trademark Review Update in August 2023
