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This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 6

First Instance Court No. 8 (First Circuit of Panama Province) [2024]: Gong Cha Global Limited v Weidong Cui, Case No. 53586-2023

Date of judgment: March 13, 2024

Issuing authority: First Instance Court No. 8 (First Circuit of Panama Province)

Level of the issuing authority: First Instance

Type of Procedure: Judicial (Civin( �/span>

Subject matter: Trademarks; Enforcement of IP and Related Laws

Plaintiff: Gong Cha Global Limited

Defendant: Weidong Cui

Keywords: Trademarks, Infringement, Injunctive relief, Permanent injunctions

Basic facts: Gong Cha Global Limited, a company based in England and Wales, initiated legal proceedings against Wending Cui for the unauthorized use of its trademarks “GONG CHA” and “GONGCHA” in Panama. These trademarks were used internationally by Gong Cha Global Limited to sell tea, soft drinks, and non-alcoholic beverages, and to provide café and restaurant services. Weidong Cui, however, was using these trademarks to market and sell similar products and services in Panama without permission.

Weidong Cui argued that it had the authorization to use the trademarks, as the company held the registration of the trade name “GONG CHA” with the Ministry of Commerce and Industries in Panama.

In response, Gong Cha Global Limited demanded that Cui stop using the trademarks, destroy all products bearing these trademarks, and cancel the registration of the trade name “GONG CHA” in Panama.

After granting preliminary measures to cease the use of both trademarks across commercial signage, digital, and print media, the Court proceeded to its final judgment.

Held: In its final judgment, The Court ordered the cancellation of Weidong Cui’s registration of the trade name “GONG CHA,” the destruction of all products in his possession featuring the trademarks in question, and the issuance of injunctive relief to cease all activities infringing the intellectual property rights of Gong Cha Global Limited.

Relevant holdings in relation to permanent injunctions: The Court ordered that Weidong Cui immediately and definitively cease all infringing activities, including:

·       The use of the “GONG CHA” and “GONGCHA” trademarks and their graphic elements for marketing and offering products such as tea, soft drinks, and non-alcoholic beverages, as well as for providing services such as cafés, restaurants, and tea rooms.

·         The use of the “GONGCHA” trademark in electronic media, including on social media accounts.

·         The use of the trademarks “GONG CHA” or “GONGCHA,” or any nominative elements associated with them, on signage, billboards, business cards, menus, promotional materials, and any form of digital or internet-based advertising.

Additionally, the Court suspended Weidong Cui’s right to trade or operate for a period of three months.

Relevant legislation:

·         Law No. 35 of May 10, 1996, on Industrial Property

·         Paris Convention for the Protection of Industrial Property