A Chinese intellectual property court has handed a favorable ruling to Christian Louboutin in connection with the brand’s new cosmetics collection. The Paris-based brand, which is known primarily for its red-soled footwear (which resulted in no shortage of litigation), filed suit against Guangzhou Wentan Trading Co., Ltd., alleging that the Chinese manufacturer has infringed its design patent protected lipstick cases by making and selling lipstick products identical or similar to the design patent-protected designs of Louboutin.
In one of the case’s primary rulings, the Guangzhou IP Court ordered Guangzhou Wentan Trading Co., Ltd. to immediately cease making, selling, offering for sale nine models of Louboutin lipstick, which Louboutin alleges infringe its design patents, for the duration of the litigation.
Guangzhou IP Court considered the following issues in connection with the preliminary injunction motion, asking: (1) Is the patent valid? Is the patent strong (stable); (2) Does the respondents’ act constitute infringement; (3) If the preliminary injunction is not issued, will it cause irreparable damage to the claimant; (4) If the preliminary injunction is issued, will damage caused to the respondent smaller or equal to the damage to the claimant if preliminary injunction is not issued; (5) Will the preliminary injunction be harmful to public interest; and (6) Is the bond provided by the claimant valid and appropriate?
In connection with the aforementioned, the court held that: (1) Validity and stability of patent are the basis of petition of preliminary injunction. The patent is currently valid and it is relatively stable; (2) In the examination of petition for preliminary injunction, it is necessary to access the likelihood of infringement. It is decided that 9 models of the lipstick product falls within the scope of protection of the patent; (3) When assessing the irreparable damage to the claimant, the court should take into consideration damage to the reputation of the claimant, infringer’s ability to pay for the damage, the possibility of calculating the damages etc. In this case, the respondent fails to prove that it manages to sufficiently pay for the damage based on its property status. Not issuing preliminary injunction will cause permanent loss of market share and shorten the life cycle of the patented product. Therefore, there exists urgency of stopping the infringement and it will cause irreparable damage if preliminary injunction is not issued; (4) Evaluation of both sides’ interest should be considered. In this case, damage caused to claimant if preliminary injunction is not issued is apparently greater than the loss caused to the respondent if preliminary injunction is issued; (5) In terms of public interest, since the product in this case is a cosmetic product, preliminary injunction will not be harmful to public interest; and (6) When filing the petition of the preliminary injunction, the claimant should provide bond for damage caused to the respondent if the preliminary injunction is issued wrongfully. Considering the argument of both sides on the among of bond, high likelihood of obtaining favorable judgment, low possibility of issuing wrongful injunction and the fact that three patents related to one product, the amount of bond is decided.
This is a particularly significant ruling as it represents the first preliminary injunction issued by the Guangzhou IP Court in a patent infringement case since its inception in 2014. The Guangzhou IP Court was established in December 2014 as one of the three IP Courts in China (Guangzhou, Beijing and Shanghai). These three specialized courts make up China's first batch of pilot IP courts, and have jurisdiction over all first-instance IP civil or administrative cases relating to patents, civil cases involving recognition of well-known trademarks within Guangdong province with the exception of Shenzhen (i.e. courts of Shenzhen retain jurisdiction over IP-related cases), and other IP civil or administrative cases of the first instance which should otherwise be heard by intermediate courts in Guangzhou.