Koda Compensates to Kodak for Trademark Infringement

Recently the Changsha Intermediate People's Court made the first instance judgment on the trademark infringement case between Eastman Kodak Company and Zhuhai Koda Computer System Engineering Co. Ltd. The court ruled that Koda should stop using the infringing mark "Koda" on its products and compensate RMB 300,000 yuan to Eastman Kodak Company.

Eastman Kodak Company, established in 1880, was engaged in manufacture of traditional and digital image products and optical components. Kodak film is well-known throughout the world with its orange packaging. Since 1982, Kodak Company has registered in China the word mark "Kodak" and other marks with the word "Kodak" as a main part, covering several classes of goods.

In September 2006, Kodak Company bought from a distributor two "Koda" inkjet cartridges, a pack of "Koda-Photo" A4 digital photo printing paper and two packs of "Koda-Photo" A6 digital photo printing paper. The representations of "KodaTM" and "Koda－PhotoTM" were marked on the orange packaging of the above goods. Investigation by Kodak Company indicated that Koda was the manufacturer of the goods. Therefore, Kodak Company instituted a proceeding before the Changsha Intermediate People's Court.

Koda filed an application for registration of the mark "Koda" in October 2002 and an application for registration of "Koda-Photo" in May 2003. The two applications were accepted by the Trademark Office of the State Administration for Industry and Commerce. Koda argued that it marks was different from the mark "Kodak" in the number of letters, and that it used the letters "TM" to indicate the state of the marks.

The court held that the good reputation of Kodak Company had endowed the word "Kodak" with a special meaning. However, the word "Koda" did not have a specific meaning. It was obvious that Koda intentionally utilize the reputation of Kodak Company and create it mark by simply removing a letter from "Kodak." Koda's marks may lead the public to confuse the goods of the two companies that were not related to each other. According to the court, Koda had infringed Kodak's exclusive right to use the registered trademark.

Therefore, the court ordered that Koda and the distributor should immediately stop manufacturing and selling the infringing inkjet cartridges and digital photo printing paper, and that Koda should compensate RMB 300,000 yuan to Kodak Company. The distributor was ordered to bear the liability of joint compensation with an amount of no more than RMB 5,000 yuan.