Zoomlion Heavy Industry Science and Technology Co., Ltd. (‘Zoomlion’), according to Wikipedia, is China’s largest, and the world’s sixth-largest, construction machinery enterprise. Zoomlion owns the trade mark registration no. 18338886 in China. This, as shown below, is a colour combination mark (hereinafter ‘the Z mark’). 

The Z mark was registered on 21 December 2016 in relation to goods in class 12 for motorised vehicles for land, air, water or railways; cranes; sprinklers; concrete mixers; and car bodies. It consists of three colours: green (Pantone 2290CP), cool grey (Pantone COOLGRAY11C) and warm grey (Pantone WARMGRAY4C). No further descriptions were provided regarding the proportion of each colour. The Z mark has been used on mechanical equipment since 15 April 2015, e.g. on the Zoomlion concrete pump trucks, the concrete transit mixer trucks and concrete mixer trucks. 

Zoomlion is established in Changsha, in the Hunan Province of China. 

On 17 May 2019, at the International Construction Machinery Exhibition (held at the Changsha International Convention and Exhibition Centre), Zoomlion spotted a concrete wet spray trolley, KNL5160TPJ, (the ‘KNL5160TPJ trolley’, see the image below) bearing a similar colour combination to the Z mark. 

The ‘KNL5160TPJ trolley’ was from Qingke Heavy Industry Co., Ltd. (QKHI), located in Shandong Province. Zoomlion sued both QKHI and Changsha International Convention and Exhibition Centre Management Co., Ltd. (CSIC) for trade mark infringement and unfair competition (Case No: Civil Judgment No 2626 [2019], First, Civil Division, 01, Hunan, of the Intermediate People’s Court of Changsha, Hunan Province). 

Trade mark infringement 

After comparisons in isolation, the Court of First Instance (CFI) found that the green, grey and black colours shown on the KNL5160TPJ trolley were ‘basically the same’ as Zoomlion’s green, warm grey and cool grey, respectively. Moreover, the KNL5160TPJ trolley was considered a similar product to Zoomlion’s concrete mixer trucks. Thereupon, the similarities found were deemed to easily cause confusion among the general public. 

Unfair competition 

The CFI considered that Zoomlion’s concrete mixer trucks, pump trucks, pumps and related decorations, i.e. the green, cold grey and warm grey colours, had gained sufficient distinction to function as a source indication due to long-term, uninterrupted use. 

Furthermore, the CFI found the three-colour decoration qualified as ‘specific decoration of commodity with certain influence’ under the Anti-Unfair Competition Law of China (AUCL), the unauthorised use of which would fall within the scope of the unfair competition acts (Article 6(1) of the AUCL). The evidence regarding reputation included large intensive exhibitions on multiple occasions, e.g. the 13th China (Beijing) International Construction Machinery, Building Materials Machinery and Mining Machinery Exhibition and Technology Exchange Conference, the American International Construction Machinery Expo and the Changsha International Construction Machinery Exhibition as well as multiple awards won by Zoomlion, including the first China Machinery Industry Science and Technology Award and inclusion in 2015’s Top 100 Chinese Machinery Industry and 2016’s Top 500 Chinese Brand Value and Top 500 Asian Brands in 2016. 

Then came the fun part: the disputes regarding the coating decoration. 

The CFI did recognise that the colours shown on the relevant products were not exactly the same in terms of positioning and proportions thereof. However, those differences were ‘too minor to cause a difference in the overall visual effect’. Thus, confusion was still easily possible amongst the general public.

The defendants argued that Zoomlion’s decoration lacked predetermined arrangements, i.e. each colour’s relative position and their position as a whole on the products. Not every colour shown on every ‘commodity with certain influence’ should qualify as the ‘specific decoration’ protected by the AUCL. In response, the CFI considered the foundation of Zoomlion’s rights. The Z mark registration was solid, so the defendant’s claims were rejected, as the Z mark registration ‘provided no such predetermination’. 

Finally, the CFI upheld Zoomlion’s claim of trade mark infringement and their request for payment for damages. Given that both the economic losses suffered by Zoomlion and the illegal gains of the defendants were difficult to prove, the CFI took the duration of the infringement, the reputation of Zoomlion’s trade mark, the malice of the infringement and its negative influence into consideration and finally set the damages as CNY 2 million CNY (approx. EUR 254,345) and the compensation for reasonable expenses as CNY 55,000 (EUR 7,000). 

Additionally, although the International Construction Machinery Exhibition took place at the Changsha International Convention and Exhibition Centre, it had not been organised by the CSIC. Therefore, the CFI found that the CSIC was not liable for contributory infringement. 

Comment

The protection of colour combination marks was incorporated into the Trade Mark Law of China in 2001 (Article 8). Usually, the registration of such signs requires evidence of acquired distinctiveness due to longstanding use. 

This Zoomlion case, again, shows the significant upper hand that proprietors of colour combination marks gain through trade mark registration, especially the feature of the registration excluding fixed contours. Further, as illustrated in section IV (II) of the Standards for Trade Mark Examination and Trial (2016, translated by IP Key), slight differences in the shades of colours or their relative positions, as in the examples shown below, may warrant trade mark similarities. 

For many IPKat readers, the review approach taken by the CFI in this case may not be as rigorous and comprehensive as the seven Sieckmann standards or later cases, e.g. T-101/15 and T-102/15Red Bull v EUIPO. However, considering Zoomlion’s specific way of using the Z mark, i.e. covering the complex structure of large eye-catching products, the valid trade mark registration and the acquired distinctiveness, the CFI’s ruling is justified in striking the balance between the protection of established commercial goodwill and, at the same time, leaving some space for new entrants. It is not yet known if the judgment has been appealed. 

One additional remark about colour combination marks: collect, keep a good record of and update evidence of use all the time. This will be helpful not only in trade mark applications but also in possible future invalidation challenges and the enforcement of trade mark rights.

Photos: 1st: Trade Mark Office of China | 2nd: Sohu News | 3rd: The Standards for Trade Mark Examination and Trial

[Originally published on The IPKat on 1 March 2021]