The Paper's reporter Tan Jun
On January 18, the surging news (www.thepaper.cn) reported that "hundreds of flower lotion producers have been sued for tens of millions of dollars for infringement of the 'honeysuckle' trademark", which has attracted attention. On January 19, a Jiangsu enterprise that had also been sued by the owner of the "Honeysuckle" trademark, Shanghai Bili Cosmetics Co., Ltd. (hereinafter referred to as "Bili Company" for infringement and was awarded compensation, told The Paper that the files obtained by the lawyer from the State Intellectual Property Office showed that as early as 1995, the "Honeysuckle" trademark on the third type of cosmetics involved in the case was cancelled by the State Trademark Office. Reasons for cancellation include that the trademark directly indicates the main raw material of the goods and is "improperly registered".
Curiously, however, the trademark, which was publicly revoked, was transferred twice, and was eventually acquired by Billy Around 2010. Since 2019, Bili Company has begun to conduct honeysuckle trademark protection lawsuits in batches, and the relevant defendants have therefore filed a total of 9 applications for cancellation and invalidation of honeysuckle trademarks, but there are no results.
"There is no evidence that the 'honeysuckle' trademark was actually used commercially for 25 years, from 1993 to 2018. Bili Company issued part of the sales invoice only for trademark protection. More importantly, has the trademark rights of this trademark that has been revoked been restored or how? Zhao Zhiqing, a lawyer at Jiangsu Jianwen Law Firm, which represented a number of defendants hualushui enterprises, said.
Zhao Zhiqing introduced that according to its statistics, there are currently more than 200 cases involving litigation that can be publicly inquired, and a large number of cases have been resolved through consultation, the amount of claims is basically about 100,000, and it is estimated that there are not only hundreds of enterprises involved, but 300-500.
The trademark "Honeysuckle" was revoked in 1995
On January 19, Mr. Yin, the head of Suzhou Haidiwei Biotechnology Co., Ltd., told the surging news that the company's customer sold a bottle of Haidiwei brand honeysuckle flower dew bacteriostatic agent on Taobao, and was sued by Bilisi for infringing its "honeysuckle" trademark. However, the company's products belong to the fifth class of goods in the trademark classification, while the company's products are the third class cosmetics.
Jiangsu flower dew water manufacturers have also been sued for infringement of Bili Company's "Honeysuckle" trademark. Courtesy of respondents
"Honeysuckle itself is the name of Chinese herbal raw materials, honeysuckle flower dew belongs to the generic name, Bili has no right to prohibit others from using, and it belongs to the same nature as the green pepper trademark." Mr. Yin said, however, a few months ago, they received a infringement judgment from the Suzhou Intermediate Court, demanding compensation of 100,000 yuan for Bili Company. At present, they have appealed to the Jiangsu Higher Court, and the legal fees have also been paid.
Zhao Zhiqing, a lawyer at Jiangsu Jianwen Law Firm commissioned by Mr. Yin, told The Paper that he has now taken over 6 such "honeysuckle" infringement lawsuits. According to statistics, "at present, there are more than 200 cases involving litigation, and a large number of cases have been resolved through consultation, and the amount of claims is basically about 100,000." ”
Zhao Zhiqing found that the "honeysuckle" trademark case was different from the trademark cases such as Hu Spicy Soup, Tongguan Meat Sandwich Bun, Korla Fragrant Pear, and Green Pepper in Xiaoyao Town. "The latter has at least legal trademark rights, and 'honeysuckle' is so abnormal because it was revoked more than two decades ago."
According to the relevant judgment documents, the Shanghai Red Star Daily Chemicals Factory, an outsider in the case, registered the trademark No. 603857 "Honeysuckle" in 1992 and approved for use in the third category of goods, including cosmetics, emollients, perfumes, tamagma powders and beauty creams. On February 8, 2010, Bili Company obtained the trademark through a concession.
Honeysuckle trademark information Source: China Trademark Network
According to the information on the "Trademark Announcement" on the official website of the State Intellectual Property Office, on March 28, 1995, the 603857 Honeysuckle Trademark was "Registered Trademark Cancellation Announcement". The Surging News noted that the registered trademarks that were revoked during the same period were also trademarks registered by some companies such as "Sunflower" and "Moon Flower".
However, The Paper noted that the inquiry into the above-mentioned "trademark announcement" is generally unknown due to the need to provide an accurate publication period number. The general public generally conducts comprehensive trademark searches based on the trademark 603857 number or the three words "honeysuckle". In the comprehensive search, the trademark process of the "Honeysuckle" trademark number did not reflect the information that the trademark had been revoked.
The honeysuckle trademark displayed in the national intellectual property global "Trademark Announcement" was revoked
In the current trademark process, there is no trace of the cancellation of the honeysuckle trademark
In November 2021, lawyer Zhao Zhiqing applied to the Jiangsu Higher People's Court for evidence collection, and then retrieved the relevant files of the "Honeysuckle" trademark from the State Intellectual Property Office. Among them, a "Ruling on Improper Registration of the "Honeysuckle" Trademark" issued by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce shows that the 603857-sized honeysuckle trademark of Shanghai Red Star Daily Chemicals Factory was revoked and required to return the "Registered Trademark Certificate".
The above-mentioned ruling said, "After review, I will believe that honeysuckle is a common Chinese herbal medicine, which has heat-clearing and anti-inflammatory effects, and is used in cosmetics, perfumes and other commodities, which is easy for consumers to think that such products contain honeysuckle ingredients and have medicinal effects." If such cosmetics do contain honeysuckle, the applied trademark directly indicates the main raw material of the goods, violating Article 8 of the Trademark Law, according to which 'honeysuckle' as a trademark of cosmetic goods is already improperly registered. ”
The date of the ruling was 27 January 1994.
Archives of the State Intellectual Property Office: The "Honeysuckle" trademark was revoked in 1994
5 unsuccessful applications for withdrawal and 4 invalidations
The Paper noted that the above-mentioned "Honeysuckle" trademark cancellation file also attached an application for the cancellation of the trademark that year. The applicant was Chongqing Daily Chemical Factory, and the application time was March 16, 1993.
The reason for the application was, "Honeysuckle, as a traditional Chinese medicine, is the generic name of the product, and it is added to flower dew water and is the main raw material." The applicant's basis was Article 8 of the Trademark Law at that time: "Trademarks shall not use the following words and graphics: 5. The generic name and graphics of the goods; 6. Directly indicate the quality of the goods, the main raw materials, functions, uses, weights, quantities and other characteristics." ”
The trademark "honeysuckle" has been revoked as the main raw material of flower dew water The interviewee provided a picture
However, after the above-mentioned revocation ruling was issued and published, the "Honeysuckle" trademark underwent two transfers without the relevant documents for the restoration of trademark rights. More than 20 years later, the "trademark rights holder" set off a storm of lawsuits against national flower dew enterprises.
"In the case that no. 603857 'Honeysuckle' has been ruled to be revoked, the plaintiff should make necessary explanations and evidence on whether and how the trademark right is restored, otherwise, its so-called rights will not have legitimacy and it will not have any rights in the trademark involved in the case." Similarly, the court's decision should not conflict with the Trademark Review and Adjudication Board's ruling in the case where the trademark has been revoked. In the appeal letter handed to the Jiangsu High Court, Zhao Zhiqing wrote.
Zhao Zhiqing introduced that when he first took over the first "honeysuckle" trademark case, there was only one court case in Wenzhou in the country, which was the plaintiff Bili Company winning the lawsuit, and the subsequent cases that appeared one after another were all judgments that the plaintiff won.
Ma Shihui, a lawyer at Shanghai Chuangyuan Law Firm who represented the same kind of case, said his team filed an application for invalidation of the honeysuckle trademark with the State Intellectual Property Office. Since 2019, when Bili Company launched an infringement lawsuit, the relevant parties in the lawsuit have never stopped questioning the "Honeysuckle" trademark itself.
According to the statistics of Ma Shihui's team, from April 2019 to October 2021, there were 5 applications for cancellation of the "honeysuckle" trademark, of which 3 applications were applied for the reason that the trademark was "not used for three consecutive years" (commonly known as "withdrawing three"), and 2 applications on the grounds that the trademark belonged to a "common name", and these applications were basically rejected.
According to Ma Shihui's lawyer team, the honeysuckle trademark has been revoked and invalidated 9 times in the past three years
"From 1993 to 2018, Bili's honeysuckle trademark was actually blank for more than two decades, there was no evidence to prove its use, it opened several tickets for the symbolic protection of rights, and there was no such commodity on the market." Zhao Zhiqing said.
There were also four applications for trademark invalidation filed against "Honeysuckle". Among them, an application for invalidation clearly mentioned that "honeysuckle" is usually used as the raw material for the goods approved for the application of the disputed trademark, and the disputed trademark is designated to be used in goods such as "cosmetics and perfumes", which only directly indicates the characteristics of the raw materials of the designated use of the goods, etc., and it is generally not easy for consumers to identify them as trademarks, and the overall trademark lacks the distinctiveness that a trademark should be, and according to relevant regulations, it should be invalidated.
However, as a result of these invalid applications, Ma Shihui's team has not been able to inquire into public information so far.
The views of several IP experts are consistent with the above-mentioned 1994 decision on trademark cancellation.
You Yunting, a lawyer at Shanghai Dabang Law Firm, believes that according to the provisions of the Trademark Law, the trademark applied for registration should have distinctive characteristics to facilitate identification, honeysuckle, as the name of the Chinese herbal medicine well known to the people, is the raw material in the flower dew water, this name is registered as a trademark, the distinctiveness is relatively weak, and the defendant manufacturer can apply to the TRAB for invalidation.
In Zhao Zhiqing's view, "honeysuckle" is not a problem of weak significance, but "no significance". "A trademark name used to indicate the raw materials of goods can only produce trademark distinctiveness after long-term and extensive use. Because only by establishing a relatively stable correspondence with the trademark, so that consumers can think of their products as soon as they see honeysuckle, can they reflect the distinguishing role of the trademark. Conversely, if there is no long-term, stable use, why should consumers think that the honeysuckle trademark is yours? ”
The plaintiff's five applications for other honeysuckle trademarks were rejected
The lawyers representing the defendants in the Honeysuckle Trademark case said that in addition to the "traceless restoration" after the cancellation of the "Honeysuckle" trademark in 1995, the logic of the court's judgment is also debatable.
The 603857 honeysuckle trademark transferred by Bili Company was only registered in the third category of goods (cosmetics, emollients, perfumes, taqueurs, beauty creams), and was not registered under the name of "flower lotion". At present, "flower dew water" is classified as cosmetics, and Bili Company's lawsuit against the national flower dew water manufacturer has also won many lawsuits, but it is still relentlessly applying for registration of trademarks such as "honeysuckle and figure" and "Bili honeysuckle" on the third category of goods.
The Paper noted that in one of the registration applications, Bili Company said that "'honeysuckle' can not only express the meaning of the plant name, but also can represent other meanings such as 'flowers made of gold and silver'", so it applied for the registration of the trademark. In this regard, the reply of the National TRAB is that "the 'honeysuckle' trademark usually refers to the name of the plant, which has the effect of clearing heat and detoxification, and the application trademark uses only the characteristics of directly indicating the raw materials of the goods on the specified goods, and lacks the distinctive characteristics of the trademark and cannot be registered as a trademark."
According to the statistics of publicly available information, lawyer Zhao Zhiqing found that the State Intellectual Property Office responded to the registration documents of the "Honeysuckle" trademark of Bili Company in total, including four notices of refusal of the "Bili Honeysuckle" trademark No. 9334638, no. 13555913, 16279909 and 24540010, and the decision on the rejection and review of the "honeysuckle" trademark no. 39922281.
The above five documents all found that the use of "honeysuckle" as a trademark in cosmetics and other goods is not legal, which is consistent with the ruling of the National Chamber of Commerce and Industry in 1994.
However, the judgments of several courts held that the ruling of the "Honeysuckle" trademark rejected by the TRAB on several occasions did not affect the rights of the existing trademark of Bili Company.
"The court only based on one reason, 'Honeysuckle' is a registered trademark, and the subsequent ruling that its application for registration was rejected does not affect the effect of the previous trademark after registration." Zhao Zhiqing said.
"According to the principle of uniformity of the applicable standards of law, since the State Intellectual Property Office stipulates that the plaintiff may not use 'honeysuckle' as a trademark on cosmetics and other related goods, how can the court allow the plaintiff to sue for rights protection on the grounds of 'trademark right' and make a huge claim?" Zhao Zhiqing said.
Editor-in-Charge: Cui Xuan Photo Editor: Shi Jiahui
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