Michelin Won A RMB 10 Million Verdict Against "Mizhilian In Chinese" For Trademark Infringement And Unfair Competition

Compagnie Generale Des Etablissements Michelin ("Michelin") sued Shanghai Mizhilian Catering Management Co. ("Mizhilian") for trademark infringement and unfair competition. The court found that Michelin's trademark "MICHELIN" with reg. no. 136402 and trademark "Michelin in Chinese " with reg. no. 519749 in Class 12 did not constitute identical or similar goods with the catering services used by the disputed mark. Therefore, it is necessary to determine whether Michelin's cited marks constitute well-known marks. Michelin submitted evidence such as trademark registration certificates, business revenue and profit, enterprise ranking, promotion and advertisement expenses, honors received, news reports and previous protection of well-known mark in support of its well-known status. These can prove that the cited marks have been widely known among the relevant public in mainland China for tires in Class 12 and were also well-known to the public. The cited marks are well-known marks on the goods of tires. Regarding the relationship between "MICHELIN" and "Mizhilian in Chinese," "Mizhilian in Chinese" is the Cantonese equivalent of "MICHELIN." Although one of the Chinese translations of "MICHELIN" is "Miqilin in Chinese," it can be ascertained from online media and reports submitted by Michelin that Michelin's use of the "Mizhilian in Chinese" logo has been promoted for a long time and has been broadly distributed, and its influence and power was not limited to Hong Kong and Macau but also mainland China. There is an inseparable correspondence between "Mizhilian in Chinese," "Michelin in Chinese," and "MICHELIN." The products used by Michelin's two marks are tires, inner tubes, etc. Considering that Michelin has always been committed to providing travelers with comprehensive information, including travel, restaurants, etc., Michelin's "Michelin Restaurant and Hotel Guide" evaluates restaurants. The rating is gradually accepted and respected by the public, and its influence is growing. Although Michelin did not directly provide catering services, Mizhilian's use of "Mizhilian in Chinese" on drinks and snacks, which fell into to the same catering class as Michelin's catering rating service. The two were closely related. Consumers could easily associate "Mizhilian in Chinese" logo on drinks and snacks incorrectly with the catering rating services provided under the said Michelin's well-known marks. Mizhilian has damaged the reputation of Michelin's well-known marks and diluted its distinctiveness, constituting trademark infringement. At the same time, Mizhilian's registration and use of the "shmizhilian.com" domain name and promotion of the "Mizhilian in Chinese" brand on the domain name constituted an infringement of Michelin's "MICHELIN" mark with reg. no. 13640, and such use should be stopped. Mizhilian's use of "Mizhilian in Chinese" as its corporate name constituted unfair competition. Regarding damages, the court calculated the profit from infringement based on the amount of franchise fees collected by Mizhilian and ultimately supported Michelin's claim for damages of RMB10 million (USD1.4 million).

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