Recently, Shanghai No. 2 Intermediate People's Court rendered its first-instance decision on the trademark infringement and unfair competition case between Swarovski and Shanghai Swalro Wedding Dress Company, ordering Shanghai Swalro to cease infringement and eliminate bad effect and pay 280,000 yuan in damages and reasonable fee of 20,000 yuan.

Swarovski VS Shanghai Swalro

Swarovski was born in 1895, and the birth of this brand has made Austria a world famous crystal country. Registered in the Principality of Liechtenstein, Swarovski company was founded in 1968, and engages in manufacturing and distribution of crystal products. In the 1980s, the company registered SWAROVSKI and 施 华 洛 世 奇 trademarks in China.

Shanghai Swalro Wedding Dress Company was established in August 2004, which specializes in various kinds of dresses. Swarovski held that the Shanghai company used 施华洛, 施華洛, SWALRO labels in its wedding dress, promotional materials, website, company decoration, and also established a home page with a domine name of www.swalroweb.com. Such action has not only infringed trademark exclusive right of 施华洛世奇, but also constitutes an act of unfair competition when the company used "Swalro crystal wedding dress" and "Swalro wedding dress, together with Swarovski crystal, to lead a luxury fashion in wedding dress" in promotional materials, which brought great loss to Swarovski Company's reputation and business. 

The court held that since Swarovski Company entered in China in the 1990s, it has made extensive advertising by using SWAROVSKI and 施华洛世奇, and occupied sizable market share in China. It ranks the top in sales volume among other products of its kind, and enjoys good reputation among the consumers. In 2009, SWAROVSKI and 施 华 洛 世 奇 trademarks were identified as well-known trademarks by Beijing Higher People's Court.

The court also held that SWAROVSKI crystal entered the Chinese market early, and as a wedding dress manufacturer, Shanghai Swalro shall be aware of the visibility and influence of SWAROVSKI. Swalro Company, however, still registered the similarity 施华洛 as its company name, and massively used 施华洛, 施華洛 and SWALRO in business activities. Besides, it also used its website for commercial publicity. Although there are differences between simplified and traditional Chinese characters, it is difficult for public to discriminate the source of the products or makes them think that there would be some certain relationship between the two trademarks. So this may have an effect on the market share of SWAROVSKI. The court held that Shanghai Swalro's usage of 施华洛, 施華洛 and SWALRO infringed SWAROVSKI trademark, and such expression of "Swalro crystal wedding dress" and "Swalro wedding dress, together with Swarovski crystal, to lead a luxury fashion in wedding dress" constituted unfair competition. Therefore, Shanghai Swalro shall assume civil liability of stopping infringement, making compensation and eliminating ill effects.

Swarovski safeguards trademark right

CIP News reporter notices that Swarovski Company has registered 67 trademarks, including SWAROVSKI, 施华洛世奇, 施华洛世奇 and SWAROVSKI. Shanghai Swalro registered No. 4633889 SWALRO trademark and No. 4633890 施 华 洛 trademark, both registered in Class 25 wedding dress goods. At present, the No. 4633890 施 华 洛 trademark has been invalid.

In fact, Swarovski is not a stranger in such cases. In 2008, the company filed a trademark infringement lawsuit similar to this one in Beijing. Beijing No. 2 Intermediate People's Court then rendered its first-instance rule on the defendant Beijing Swanrov Wedding Photo Company not allowed to use 施崋洛, 施华洛 , SWAROV in its services (include its website), not allowed to register a domain name with SWAROV, not allowed to use SWAROVSKI to advertise its crystal wedding dress, not allowed to use a company name similar to 施华洛 and pay 210,000 yuan to Swarovski. "The court's decision has safeguarded the trademark right of 施华洛世奇," said a relevant IPR expert. In this case, the defendant is a wedding dress manufacturer, which will be somewhat different from subjects in other SWAROVSKI infringement cases. Moreover, the company constituted unfair competition by not only using a company name similar to SWAROVSKI, but also using the words of "Swalro crystal wedding dress" and "Swalro wedding dress, together with Swarovski crystal, to lead a luxury fashion in wedding dress," "As a wedding dress brand, Swarovski company has launched a series of actions to safeguard its right, which defended its brand reputation and purified the market. For many companies, there is something to learn from such experience," said

the expert. (by Zhang Di/Diao Xiaolin)

(Source: CHINA REPORT INTELLECTUAL PROPERTY)