The recognition and protection of well-known trademarks has always been a hot topic of concern for trademark rights holders and the public. The investigation and handling of the recognition of well-known trademarks in trademark violation cases is not only a necessary link in handling relevant trademark cases, but also an important way to carry out trademark law enforcement business guidance.
In November 2019, the State Intellectual Property Office issued the Notice on Strengthening the Investigation and Handling of Well-known Trademark Protection in Trademark Violation Cases. In accordance with the requirements of the Circular, all localities should strengthen the protection of well-known trademarks in a strict and expeditious manner. It is understood that as of the end of June 2021, the State Intellectual Property Office has received a total of 354 requests for the recognition of well-known trademarks, and approved the recognition of 79 well-known trademarks.
So, how to understand the "on-demand recognition, passive protection" of well-known trademarks? What are the requirements for registered trademarks to be protected by well-known trademarks in the administrative law enforcement process? The following case analysis, combined with specific cases, analyzes the relevant legal application and procedural issues related to the recognition of well-known trademarks, which has a certain guiding nature, so please pay attention to it.
Basic facts of the case
The No. 3723943 "" trademark is a certification trademark (geographical indication) registered by the Jiujiang Tea Industry Association (hereinafter referred to as the Jiujiang Tea Association) on the 30th class of tea goods, which was approved for registration on May 7, 2005, and was renewed, and its exclusive right is valid until May 6, 2025. On September 22, 2020, the Jiujiang Municipal Market Supervision and Administration Bureau of Jiangxi Province (hereinafter referred to as the Jiujiang Municipal Market Supervision Bureau) received a complaint from the Jiujiang Tea Association, saying that a certain biopharmaceutical company in Lushan (hereinafter referred to as a biopharmaceutical company) had used trademarks such as """ and "" that were similar to the trademarks on the products of tea extract toothpaste and tea extract tooth powder sold by Tmall and Jingdong Mall without authorization, misleading the public and harming the interests of the Jiujiang Tea Association, requesting protection of well-known trademarks and prohibiting their use. On October 15, the Jiujiang Municipal Market Supervision Bureau filed an investigation and found that a biopharmaceutical company entrusted a daily chemical technology company in Foshan City and a dental products co., LTD. in Guangzhou to produce tea extract toothpaste and tea extract tooth powder, and the packaging materials were provided by a biopharmaceutical company and were responsible for the sale of all finished products. The above-mentioned tea extract toothpaste and tea extract tooth powder containers and packaging materials prominently use the words "Lushan Yunwu Tea", and began to be sold on e-commerce platforms such as Jingdong Mall and Tmall Mall on May 21, 2020, with a small amount of offline sales. Through the collection of platform data, 4695 toothpastes involved in the case were listed and 1305 have been sold, with an average selling price of 44.9 yuan / piece; 1498 tooth powders involved in the case have been sold, 123 have been sold, the average selling price is 36 yuan / piece, and the amount involved is about 265,000 yuan. After preliminary verification and review, the Jiujiang Municipal Bureau of Market Supervision held that although tea extract toothpaste, tea extract tooth powder and tea are not similar commodities, tea leaves, as important raw materials for tea extract toothpaste and tea extract tooth powder, have a high degree of overlap and strong relevance in terms of producers, sellers and consumers, and the "" trademark has a high reputation among the relevant public, and the behavior of a biopharmaceutical company is easy to mislead the public and harm the interests of trademark registrants, and the case is in line with the Trademark Law of the People's Republic of China. (hereinafter referred to as the Third Paragraph of Article 13 of the Trademark Law). In accordance with Article 11 of the Provisions on the Recognition and Protection of Well-known Trademarks, the request for the recognition of well-known trademarks and copies of case materials shall be submitted to the Jiangxi Provincial Intellectual Property Office, and at the same time, the investigation of the case shall be suspended in accordance with the provisions of Article 43, Paragraph 1, Item (2) of the Interim Provisions on Administrative Punishment Procedures for Market Supervision and Administration. After verification and examination, the Jiangxi Provincial Intellectual Property Office found that the case complied with the regulations, and according to Article 12 of the Provisions on the Recognition and Protection of Well-known Trademarks, it was reported to the State Intellectual Property Office to identify the well-known trademark on December 31. On May 20, 2021, the State Intellectual Property Office approved the recognition of the "" trademark used on class 30 tea goods as a well-known trademark and agreed to expand its protection. After receiving the approval of the Jiangxi Provincial Intellectual Property Office, the Jiujiang Municipal Market Supervision Bureau resumed the investigation of the case in accordance with the second paragraph of Article 43 of the Interim Provisions on Administrative Punishment Procedures for Market Supervision and Management. After on-site inspection, it was found that the "Lushan Yunwu Tea" tea extract tooth powder has been sold out, the remaining inventory of "Lushan Yunwu Tea" tea extract Hao White Healthy Toothpaste is 11376 pieces, and the remaining inventory of "Lushan Yunwu Tea" Tea Extract Qingyan Gum Care Toothpaste is 11592. Because the above-mentioned toothpaste "Lushan Yunwu Tea" trademark logo is difficult to separate from the goods, involving the confiscation of illegal property of greater value, the Jiujiang Municipal Market Supervision Bureau served a biopharmaceutical company with the "Notice of Administrative Punishment Hearing", informing it of the facts, reasons, basis and content of the administrative punishment to be imposed in accordance with the law, and the parties did not submit statements and defense opinions within the statutory time limit, nor did they submit an application for a hearing. On August 19, in accordance with Article 72 of the Implementing Regulations of the Trademark Law of the People's Republic of China (hereinafter referred to as the Implementing Regulations of the Trademark Law), the Jiujiang Municipal Bureau of Market Supervision issued an administrative penalty of ordering the parties to stop using the "Lushan Yunwu Tea" trademark on toothpaste and tooth powder goods, and confiscated 11,376 "Lushan Yunwu Tea" tea extract Hao White Jian Toothpaste and 11,592 "Lushan Yunwu Tea" tea extract Qing Yan Nursing Gum Toothpaste in stock, after the parties' reconsideration and the expiration of the litigation period, Destroy the seized goods involved in the case in accordance with the law, and report the results of the disposal to the State Intellectual Property Office in accordance with the regulations. In addition, the Jiujiang Municipal Market Supervision Bureau instructed the right holder to promptly notify the relevant e-commerce platform operators to take necessary measures such as deleting, blocking, disconnecting links, terminating transactions and services in accordance with the first paragraph of Article 42 of the E-commerce Law of the People's Republic of China to stop infringing their well-known trademarks. At present, Tmall Mall and Jingdong Mall have closed relevant shops, and offline merchants have all stopped selling infringing goods.
Legal analysis
Paragraph 1 of Article 13 of the Trademark Law stipulates: "When the holder of a trademark that is well known to the relevant public believes that its rights have been infringed, he may request protection for a well-known trademark in accordance with the provisions of this Law." "The provisions of this paragraph include three aspects: First, it clarifies the concept of a well-known trademark, that is, a trademark that is well known to the relevant public. According to paragraph 2 of Article 2 of the Provisions on the Recognition and Protection of Well-known Trademarks, the relevant public includes consumers related to the use of certain types of goods or services indicated by trademarks, other business operators who produce the aforementioned goods or provide services, and sellers and related personnel involved in distribution channels. The second is to embody the legislative purpose of the well-known trademark system, that is, to prevent the already well-known trademarks from being infringed by others and to safeguard the legitimate rights and interests of the right holders. The third is to clarify the principle of on-demand identification and passive protection of well-known trademarks. On-demand determination refers to the determination based on the needs of handling trademark cases. Passive protection means that at the request of the parties, it is determined that if the parties have not claimed the protection of well-known trademarks, they shall not take the initiative to protect them. It should be pointed out that according to the first paragraph of Article 60 and Article 61 of the Trademark Law, the department responsible for trademark law enforcement may take the initiative to investigate and deal with trademark infringement upon request or ex officio. In order to handle the case, it is necessary to apply for recognition and investigate and deal with it according to the request of the trademark registrant, which is in line with the principle of on-demand identification and passive protection. Paragraphs 2 and 3 of Article 13 of the Trademark Law respectively provide for the protection of well-known trademarks that have not been registered in China and those that have been registered in China. The case concerned the protection of a registered well-known trademark. Paragraph 3 of this article stipulates that "if a trademark for which registration is not applied for in the same or unrelated goods is a reproduction, imitation or translation of a well-known trademark already registered in China by another person, misleading the public, so that the interests of the registrant of the well-known trademark may be harmed, it shall not be registered and its use shall be prohibited". Accordingly, for a registered trademark to obtain the protection of a well-known trademark in the administrative law enforcement process, four elements must be met at the same time: First, the goods used by others (hereinafter referred to as the goods involved in the case) are not similar to the goods approved for use by the registered trademark. Second, the trademark used by others (hereinafter referred to as the trademark involved in the case) constitutes a reproduction, imitation and translation of the registered trademark. Replication means that both are the same. Imitation refers to the plagiarism of the registered trademark by the trademark in question, inheriting its distinctive parts or distinctive features. The distinctive part or distinctive features of a trademark refer to the parts or features on which the trademark plays a major role in identification, including specific words or their combinations and font expressions, specific graphic composition methods and expressions, and specific color combinations. Translation means that the trademark in question expresses the registered trademark in different languages, and the language and text have established a corresponding relationship with the registered trademark, and are widely known or customary to be used by the relevant public. In the case of imitation or translation, the trademark in question and the registered trademark constitute a similar trademark. Third, the registered trademark is well known to the relevant public in China. Fourth, the use of the trademark in question on the goods involved in the case will mislead the public, resulting in the interests of the registrant of the well-known trademark being harmed. Misleading the public, so that the interests of the registrant of the well-known trademark may be damaged enough to cause the relevant public to believe that the trademark in question has a considerable degree of connection with the well-known trademark, thereby weakening the distinctiveness of the well-known trademark, detracting the market reputation of the well-known trademark, or improperly exploiting the market reputation of the well-known trademark. To determine whether the use of the trademark involved in the case falls under the circumstances provided for in paragraph 3 of Article 13 of the Trademark Law, a comprehensive consideration shall be given to factors such as the degree of similarity between the trademark involved in the case and the trademark applied for recognition, the degree of association between the goods involved in the case and the goods identified in the application, the distinctiveness and popularity of the trademark applied for recognition, and the intention of the person involved in the case to attach. The degree of association generally refers to the degree of overlap between the goods involved in the case and the goods applied for identification in the relevant public, that is, the degree of overlap between the two in consumers, producers, operators and other groups, the higher the degree of overlap, the stronger the correlation. Distinctiveness generally refers to the distinctiveness, differentiation and recognizability of the trademark, the more novel and distinctive the trademark itself, the weaker the correlation with the goods used by it, and the higher the degree of recognition, the stronger the distinctiveness. Popularity refers to the degree to which it is known to the relevant public. The strength and breadth of protection for a well-known trademark depends on its distinctiveness and popularity, and the stronger the distinctiveness and the higher the popularity, the wider the scope of goods to be protected. Where the registered trademark has a relatively high reputation, the person involved in the case and the registered trademark rights holder are in the same industry or an industry with greater relevance, and the same or similar trademark is used without a legitimate reason, it shall be found that the person involved in the case has the intention to attach. Where the intention of the person involved in the case is obvious, the criteria for misleading the public may be reduced accordingly. In this case, the trademark in question was identical to the word of the registered trademark, and the word was the main identifying part of the certification mark (geographical indication), constituting imitation. As an important raw material for tea extract toothpaste and tea extract tooth powder, tea leaves have a high degree of overlap and strong correlation in terms of producers, sellers and consumers. According to the evidence provided by the registrant, "Lushan Yunwu Tea" was first awarded as One of the Top Ten Famous Teas in China in 1959, silver medal of the National Quality Award in 1985, and the former General Administration of Quality Supervision, Inspection and Quarantine recognized "Lushan Yunwu Tea" as a geographical indication product in 2004, and issued the national standard of "Geographical Indication Products Lushan Yunwu Tea" (GB/T 21003-2007) in June 2007; Zhejiang Sustainable Agricultural Brand Research Institute and other jointly carried out and publicly released the "China Tea Regional Public Brand Value Assessment Results", from 2017 to 2019, the brand value of "Lushan Yunwu Tea" was 19.91, 23.15 and 2.77 billion yuan, ranking 22, 19 and 19 respectively. The above-mentioned evidentiary materials are true and valid, which is sufficient to prove that the trademark of "Lushan Yunwu Tea" has been well known to the relevant public. The parties involved in the case are in the same place as the right holder, knowing that "Lushan Yunwu Tea" is a well-known trademark, but unauthorized use of a trademark similar to the registered trademark of the right holder on the goods of tea extract toothpaste and tea extract tooth powder, with obvious intention to attach it, misleading the public, resulting in the possible harm to the interests of the registrant of the well-known trademark, which is in line with the provisions of paragraph 3 of Article 13 of the Trademark Law.
Summary
This case is a typical case of using the well-known trademark system to protect geographical indications registered as collective trademarks and to prove the registration of trademarks. Geographical indications have specific quality, credibility, especially geographical indications with high visibility, usually have higher consumer attractiveness and strong market competitiveness, and are easy to become the object of infringement. At the same time, the trademark protection of geographical indications, because of the particularity of their goods, can only be registered as a collective trademark or certification mark on specific goods. The well-known trademark system is undoubtedly a powerful weapon in cracking down on the unauthorized use of trademarks similar to those in upstream and downstream products that are not similar to the goods approved for use and misleading the public. The investigation and handling of this case has protected the legitimate rights and interests of well-known trademark rights holders in a timely and efficient manner, and achieved good law enforcement results and social repercussions.
Source: State Intellectual Property Office
Editor: Ye Xiaoyi
Editor-in-charge: Liu Xinle
Audit: Smart
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