Intellectual property represents a core strategic resource driving innovation and serves as a critical safeguard for maintaining fair market competition. Recently, Huang Runsheng, Lawyer of Landing Law Offices (Wenzhou Office), and Han Mengmeng, Lawyer of Landing Law Offices (Hangzhou Office) successfully represented the “Miffy” brand in a trademark protection case in China. The case not only resulted in the application of punitive damages, but also secured full support for the claimant’s RMB 10 million compensation claim, providing comprehensive and maximum protection of the client’s legitimate rights and interests.

Case Overview

Miffy, a classic cartoon character created in 1955 by Dutch artist Dick Bruna, is widely recognized by relevant consumers and the general public. The plaintiff, Mercis B.V., as the commercial developer and rights management entity of Dick Bruna’s works, has registered a series of “Miffy” word and figurative trademarks in multiple classes.

In 2022, the plaintiff’s authorized distributor discovered that a Guangdong-based company (the defendant) had used marks similar to “Miffy” on products including diapers and subsequently initiated legal proceedings before the People’s Court, obtaining a favorable judgment.

However, after the judgment became effective, a number of entities led by He, the legal representative of the Guangdong-based company, and his spouse Xu, not only continued to maliciously apply for registration of numerous trademarks similar to “Miffy”, but also significantly expanded their infringing activities. Through online stores operated on major e-commerce platforms, including Tmall, JD.com, Douyin, and Pinduoduo, as well as offline distribution channels, the defendants engaged in large-scale production and sale of counterfeit “Miffy” branded products, including diapers and sanitary pads.

First-Instance Judgment

The court ordered that:

·The seven defendants shall immediately cease infringing the plaintiff Mercis B.V.’s exclusive trademark rights;

·The seven defendants shall immediately cease unfair competition acts involving false advertising and discontinue the use of enterprise names containing the term “Miffy”;

·Defendants He, Xu, and the Guangdong-based company shall publish a statement in a non-advertising section of the China Market Regulation News to eliminate the adverse impact caused by their infringement;

·The seven defendants shall jointly compensate the plaintiff for economic losses and reasonable expenses totaling RMB 10 million.

Key Highlights of the Case Representation

1. Accurate and Reasonable Determination of Damages Through the Combined Application of Punitive Damages and Statutory Damages

Based on the specific circumstances of the case, the legal team made full use of the lawyer investigation order mechanism to obtain and analyze the defendants’ sales data relating to the infringing products. The team distinguished the sales data into identifiable portions and unidentifiable portions.

For the identifiable portion, the legal team argued that damages should be calculated based on the defendants’ profits derived from infringement and that punitive damages should be applied. For the unidentifiable portion, the team sought compensation under statutory damages provisions. This approach effectively increased the cost of infringement, strengthened judicial deterrence, and sent a clear warning to potential infringers.

2. Overcoming Administrative Precondition Barriers Arising from Trademark Rights Conflicts Through Effective Use of Evidence

In this case, the defendants had maliciously registered a large number of trademarks related to “Miffy”, some of which remained valid, creating potential conflicts between registered trademark rights and the plaintiff’s claims.

The legal team effectively utilized the evidence available in the case file and relied on relevant precedents to argue that the defendants’ alleged infringement was based on prior actual use of the trademark, while the defendants’ trademark registrations were obtained subsequently. The team successfully established that the People’s Court could directly accept the civil action and conduct a comprehensive review of all alleged infringement activities occurring both before and after the trademark registrations.

This approach enabled the court to overcome the administrative precondition barrier arising from trademark rights conflicts and allowed all alleged infringement activities of the defendants to be evaluated and regulated within a single civil proceeding.

Lawyers’ Profiles

Huang Runsheng

Senior Partner and Director

Landing Law Offices (Wenzhou Office)

Practice Area:

Intellectual Property

Contact:

13566190606

Han Mengmeng

Partner

Landing Law Offices (Hangzhou Office)

Practice Area:

Intellectual Property

Contact:

18867158253