David Lee Successfully Won the Lawsuit as Defendant for Infringement of “ZEGNA” Trademark Rights
On January 2019, the trademark holder of the world-renowned brand “ZEGNA” CONSITEX S.A. as the plaintiff sued Hechen Jiangyin Investment Ltd. (hereinafter “Hechen”) before the Suzhou Intermediate People’s Court for infringement of its trademark right and claimed that Hechen not only sold right-infringing merchandise but also misled customers to consider its shop as the authorized or franchised by way of illegally using “ZEGNA” and “Ermenegildo Zegna” in the decoration which seriously infringed the trademark right of CONSITEX S.A. The claims contained immediate cease of infringement, public apology on newspaper and compensation of 3,000,000 CNY.
The defendant Hechen appointed David Lee to respond. David carefully studied the facts and learned from Hechen that the merchandise is imported from authorized franchisers from Italy and other countries and is genuine rather than fake commodities. Hence, David requested the defendant to have all contract invoice, customs declaration and authorization of foreign franchisers notarized in Italy and submit them to the court. In addition, based upon his professional experience regarding the theory of exhaustion of trademark right and parallel import of the commodities, David raised a strong defense claiming that the sale of the defendant doesn’t constitute infringement. While responding to the litigation, the defendant was advised by David to cease selling goods labeled as “ZEGNA” and erased all “ZEGNA” trademark and sought to negotiate with the plaintiff.
However, none agreement was reached due to excessive difference. The Suzhou Intermediate People’s Court issued the judgment after three trials and basically agreed with David. The court held that selling the goods is not infringing the plaintiff’s rights but the signboard and the decoration will mislead the customers to consider the shop as franchised and therefore constituted an infringement of trademark right. Considering the “ZEGNA” signboard and other logo were erased timely during the litigation, the court ordered the defendant to compensate the plaintiff 300,000 CNY at its discretion and rejected other claims of the plaintiff.
The plaintiff was very unpleased to the judgement and appealed to the Jiangsu High People’s Court. On December 2021, the high court issued the final decision which sustained and upheld the original judgment. Now after three years of different trials, the dispute is finally settled.
This case is a cross-border dispute involving trademark rights which requires the counsel to be professional within the area of international trade, trademark and international procedural rules of litigation. David earned appreciation and admiration from the client with his professional and flexible experience.