Hogan Lovells defends Caterpillar’s IP rights in China

Hogan Lovells defends Caterpillar’s IP rights in China

Press releases | 11 February 2021

Beijing, 11 February 2021 – Hogan Lovells IPMT practice and Hogan Lovells Fidelity lawyers secured two important trademark victories for Caterpillar before China's highest court, the Supreme People's Court (SPC).

The two cases concern Caterpillar's trademark invalidation and opposition procedures against the  trademark and its backup application, both owned by a local large-scale agricultural equipment manufacturer.

The cases were initiated by Caterpillar after the infringer filed its  logo for Caterpillar's core goods of interest, i.e. construction machinery, and filed its backup application for agricultural goods. Caterpillar argued that these logo marks were confusingly similar to Caterpillar's famous   logo, and should be quashed. Unfortunately, the China National IP Administration's (CNIPA) decisions and, subsequently, the courts of appeals considered the marks dissimilar. Therefore, Caterpillar's invalidation and opposition procedures were rejected. Caterpillar then filed a request for retrial of both procedures with the SPC.

In its final retrial decisions, the SPC held that Caterpillar's logo enjoys a strong reputation. The logo is recognized widely for construction machinery in China. The SPC ruled that the infringer's logos are confusingly similar to Caterpillar's famous logo and that their use may mislead and confuse the public as to the origin of the infringer's goods. The SPC also found that the infringer had filed its trademarks in bad faith. On the one hand, the infringer's logos clearly imitate Caterpillar's famous logo. On the other, both the infringer's and Caterpillar's joint venture companies are located in the same city and the infringer was doubtlessly aware of Caterpillar's reputable trademark. The Supreme Court overruled all earlier judgments and remanded the cases to CNIPA to issue a new decision, quashing both of the infringer's KAT logos.

This is a significant outcome for intellectual property rights in China, especially considering the long-standing use of the infringing logos by the infringer and its large-scale of operations, and the SPC's judgment is encouraging. This decision sends a clear message to the market that Caterpillar takes the protection of its intellectual property very seriously, and will go to great lengths to defend its IP rights. The case also highlights Hogan Lovells' capability to successfully litigate complex IP disputes before the highest Chinese courts, in cooperation with our associated firm Hogan Lovells Fidelity.

The Hogan Lovells team advising and representing Caterpillar in this case included Helen Xia (Partner, Beijing), Jonathan Liang (Counsel, Hogan Lovells Fidelity), and Crystal Li (Associate, Hogan Lovells Fidelity).