Beijing Dongfeng Lubricant Company (below referred to as “plaintiff”) brought a lawsuit against Exxon (Zhejiang) Co., Ltd (the subsidiary of ExxonMobil Corporation) (below referred to as “defendant”) due to infringement of ”Dongfeng” trademark. Beijing High Court made a finial decision on this case that the defendant had infringed the exclusive trademark right of the plaintiff and should bear civil liability for infringement.  

 

In June, 2002, the plaintiff found that without permission, a combination of “ESSO” and Dongfeng & double swallows were used as a trademark on lubricating oil manufactured by the defendant. The plaintiff thereupon sent a warning letter to request the defendant to cease his infringing act. Without any response, the plaintiff brought a lawsuit to the court.

After hearing, Beijing 2^nd Intermediate Court held that the word “Dongfeng” used by the defendant is similar to the mark registered by the plaintiff. The defendant has infringed the plaintiff’s trademark right due to using similar mark in connection with similar goods and shall bear corresponding civil liability. Therefore, the defendant is ordered to cease making accused products, make public apology and compensation of RMB150,000 (approx.US$19700).

                                                      
The Exxon (Zhejiang) Co., Ltd refused to accept the court’s decision and appealed to Beijing High Court. The appellant claimed that it had been granted by Dong Feng Shi Yan Motor Lubricating Oil Co., Ltd a license to use the combined trademark of Dongfeng & double swallows, before being entrusted to produce lubricating oil. The appellant have fulfilled reasonable attention obligation and shall not bear the liability of infringement.

 

Beijing High Court held that Dongfeng Shi Yan Company does not have the exclusive right of “Dongfeng” trademark in class 4, and therefore its licensing shall be considered an invalid civil behavior. Besides, the accused products were marked with the name of appellant and its trademarks “埃索”& “ESSO”, both representing the appellant. Such behavior showed in public that the producer of accused products was Exxon (Zhejiang) Co., Ltd. Therefore, the applicant shall bear the civil liability of infringement.