Deheng (德衡) vs. DeHeng (德恒) [i] - Story behind the Trademark Dispute
Release time：2016-02-25 09:29
Deheng (德衡) vs. DeHeng (德恒) [i]
- Story behind the Trademark Dispute
By Haijun Wang
Chief Trademark Officer
Deheng Law Group [ii]
Starting from the second half of 2015, the publicizing of Beijing DeHeng Law Office ("Beijing DeHeng") on the dispute over its trade name and the registered trademarks owned by Shandong Deheng Law Firm ("Shandong Deheng") through its WeChat public account and domestic and overseas media has aroused confusion to people in the legal profession and the general public. In believing that "facts speak louder than words", Shandong Deheng did not rush to make any response. However, upon repetitive inquiries and requests by media and clients about the dispute, it became necessary to tell the real story behind such dispute.
In December, 1993, China Legal Affairs Center – Qingdao Deheng Law Firm, predecessor of Shandong Deheng, was founded, which was changed to Qingdao Deheng Law Firm in 1995. In 1998, China Legal Affairs Center was changed to DeHeng Law Firm, which, by leverage of its resources and advantages of being in Beijing, forced Qingdao Deheng Law Firm to change its Chinese trade name from "德恒" to "德衡". The two firms did not have any dispute until February, 2013, when Beijing DeHeng filed a lawsuit against Shandong Deheng before Beijing Xicheng District People's Court for trademark infringement, which occurred to the surprise of Shandong Deheng because the two firms had negotiated for a merger back in 2008 and prior to, during or following such negotiations, Beijing DeHeng has never brought any issue relating to the trademark. Beijing DeHeng alleged in the lawsuit that the trademark of "德恒(Deheng)+Graphics" registered by Shandong Deheng on April 1, 1996 belonged to Beijing DeHeng and Shandong Deheng's use of the mark had constituted infringement. It was learned afterwards that the reason why Beijing DeHeng brought this lawsuit was because that it was until 20 years after its founding did Beijing DeHeng realized the importance of trademark rights protection and filed applications for registration of the trademarks of "德恒(Deheng)" and "Deheng", which were rejected by China Trademark Office ("CTO") due to Shandong Deheng's prior registrations. This unexpected lawsuit triggered the determination of Shandong Deheng to fight back to protect its legal rights and interests. While responding to the lawsuit, Shandong Deheng wrote to the Ministry of Justice of the PRC and Beijing Department of Justice requesting cancellation of the Chinese and English names of Beijing DeHeng. Beijing DeHeng and its subsidiary Beijing DeHeng Lvzhi Intellectual Property Agency Co., Ltd. ("Lvzhi") then filed multiple petitions before CTO for opposition to, cancellation and invalidation of a series of trademarks of Shandong Deheng. Shandong Deheng, on the one hand responded to such cases, and on the other hand initiated several lawsuits against Beijing DeHeng for trademark infringement based on the trademarks it legally owns. These two large law firms in China hence fell into a series of wars. As if it was not complicated enough, Beijing DeHeng dragged Beijing DHH Law Firm, an affiliate of Shandong Deheng under the same group, into these wars.
Up to date, a total number of 34 cases have been brought by the two firms, including 6 trademark infringement litigations for the first instance, 6 trademark infringement litigations for the second instance, 1 trademark infringement litigation for retrial, 6 trademark oppositions, 6 trademark opposition reviews, 6 administrative litigations, 3 trademark cancellations, and 1 trademark invalidation, among which, Shandong Deheng has won on all adjudicated cases for formulation of trademark rights. For the trademark infringement cases, due to Beijing DeHeng's transfer of the liabilities for preparing and using of brochures containing infringement information to its subsidiary Lvzhi, Lvzhi, instead of Beijing DeHeng, was found constitution of trademark infringement and adjudicated for an compensation of RMB50,000 to Shandong Deheng. If you intend to obtain more details about the dispute, please log on the website of Deheng Law Group at http://www.deheng.com.cn where the judgments and decisions of all the adjudicated cases are available.
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[i] The two names share the same pronunciation but are different in the second Chinese character.
[ii] Deheng Law Group is a group consisting of Shandong Deheng Law Firm and Beijing DHH Law Firm.
