Unlike trademark right and patent right which is generated through registration, there is no specific certificate of rights for “commodity packaging and decoration with a certain influence” in the sense of the Anti-Unfair Competition Law, and it is more difficult to protect such rights in practice. Especially the standard for determination is stricter for the commodity shape itself being considered constituting commodity decoration with a certain influence. Hopefully our successful experience could be helpful for foreign luxury or fashion brands to safeguard their rights in Chinese market.

AUDEMARS PIGUET HOLDING S.A. (hereinafter referred to as “Audemars Piguet”) is a Swiss luxury watchmakers. Its “ROYAL OAK” series of watches have been launched since 1972. The groundbreaking design (an octagonal-shaped unitary bezel featuring eight hexagonal-shaped screw heads) overturned the conventional aesthetic concept of watches in the past and became the iconic design of Audemars Piguet. The watch is loved and sought after by elites and fashionistas all over the world. Audemars Piguet’s “ROYAL OAK” trademark and its watch design have been used and widely publicized for a long time, and have gained a high reputation throughout the world, including China.

In 2019, Audemars Piguet discovered that a Shenzhen company and its responsible person had marked on the back of the watch case they produced and operated the “ROYAL ONE” logo, and used the same design as the Audemars Piguet “ROYAL OAK” watches. And they have sold the watches wantonly on Taobao, Aliexpress, Amazon, eBay, among other websites.

We represented the plaintiff Audemars Piguet in the lawsuit to the Shenzhen Intermediate People’s Court, claiming the defendant’s use of a similar logo in the back of the watch case infringed the plaintiff’s exclusive right to use the registered trademarks “ROYAL OAK” and

; meanwhile, given the plaintiff’s “ROYAL OAK” watches have a very high reputation and unique design, which is different from common watch shape and can be functioned to identify the origin of the goods, the defendant’s unauthorized use of the design that is identical with or similar to the plaintiff’s “ROYAL OAK” watch design is likely to cause confusion among the consumers, thus constituting unfair competition and violating the legitimate rights and interests of Audemars Piguet.

In September 2021, the Shenzhen Intermediate People's Court issued a judgment of the first instance (the judgment has not yet taken effect), fully supporting our claims. The judgment found that the defendant constituted trademark infringement and unfair competition, and ordered the defendant to stop the infringement and compensate the plaintiff for economic losses and reasonable rights maintenance costs totaling 1 million yuan.

One of the issues of the dispute in this case is whether the defendant’s behavior constituted unfair competition as unauthorized use of the commodity decoration of Audemars Piguet. The defendant argued that the octagonal shape used in the design of the plaintiff’s watch was a general geometric figure, and its design was a shape determined by the nature of the product itself, a shape necessary to achieve a certain technical effect, and a shape that gave the product substantial value. Therefore, it does not constitute a unique decoration. We represented Audemars Piguet and argued that the plaintiff’s watch design constitutes commodity decoration that has a certain influence in the sense of the Anti-Unfair Competition Law from various aspects including the popularity of the plaintiff’s products, the variety of watch bezel shapes and designs, the uniqueness of the plaintiff’s watch design and the degree of recognition by the public, and the design having no substantive functions, etc. The Shenzhen Intermediate People's Court finally supported our claim.

In judicial practice, there are only a handful of successful cases. Therefore, it is of great significance to Audemars Piguet for its watch design being determined by the court to constitute commodity decoration with a certain influence, which will greatly strengthen the protection of Audemars Piguet’s “ROYAL OAK” watch design after the judgment takes effect.