There are frequent disputes over why "Green Pepper" was subjected to "magic litigation" for the exclusive right to use generic names and trademarks

Source: Workers Daily

Following the storm of trademark litigation and rights protection of "Huoyao Town Peppery Soup" and "Tongguan Meat Sandwich Bun", the second-instance trial of the "Green Pepper" trademark rights protection case fell into a hammer and then led to deep thinking——

There are frequent disputes over the exclusive right to use generic names and trademarks

Reporter Li Na

On January 13, the Sichuan Chengdu "Green Pepper" trademark rights protection case was settled in the Sichuan Provincial High People's Court, and the judgment was changed not to constitute trademark infringement. The word "qing" forced to be erased by the Wenjiang Wu'a Po Green Pepper Hot Pot Fish Shop is back.

Four months ago, Shanghai Wancuitang Restaurant Management Company filed a trademark infringement lawsuit on the grounds that Wu'a Po Hotpo Restaurant used its "Green Pepper" trademark without permission in the store's "Green Pepper Fish Hot Pot".

Following the suspension of the trademark litigation rights protection of "Xiaoyao Town Pepper Soup" and "Tongguan Meat Sandwich Bun", the "Green Pepper" trademark rights protection case clarified the dispute in the public court, but how to avoid frequent disputes over the exclusive right to use generic names and trademarks still needs to be deeply considered.

"Green Pepper" Suffers "Magic Lawsuit"

The reporter of "Workers Daily" learned from the trial of the Sichuan Provincial High Court that Wancuitang Company is three trademark rights holders related to "green peppercorns". Relevant information shows that the earliest trademark protection litigation carried out by Wancuitang Company began in 2017.

Zuo Zhengfei, chairman of Shanghai Wancuitang, responded that in the past, rights protection was mainly aimed at businesses that maliciously imitated store names, decorations and even cheated franchise fees. In 2020, Zhengshang Law and (Beijing) Intellectual Property Service Co., Ltd. found themselves and proposed to help protect their rights for free, and the income from rights protection was returned to Zhengshang Law and ownership. All the lawsuits involving "Green Peppercorns" were initiated by a third party, Zhengshang Law & (Beijing) Intellectual Property Service Co., Ltd., and were not the intention of Shanghai Wancuitang. It is reported that Zhengshang Law and Technology has previously been included in the list of abnormal operations by the Beijing Chaoyang District Market Supervision and Administration Bureau, and according to the "Tianyan Check", its business scope includes legal advice, excluding lawyer practice activities.

After Wancuitang withdrew its lawsuit, some restaurants in Sichuan are still worried about similar incidents in the future. The Sichuan Hot Pot Association decided to file an invalidation lawsuit against the "green pepper" trademark in conjunction with the merchants. After losing the first instance, Wenjiang Wu'a Po Green Pepper Hot Pot Fish Shop appealed against the verdict. The owner, Zou Liyong, wanted to seek justice for his "green pepper" shop, because there were many merchants involved in the lawsuit in Sichuan, and he set up a WeChat group called "Trademark Infringement Group", which was full of small shops like his family, and the operators knew very little about trademark rights and interests.

Disputes over the exclusive right to use generic names and trademarks are frequent

At about the same time in the "Green Pepper" case, more than 50 shopkeepers of "Xiaoyao Town Hu Spicy Soup" were sued for the signboard containing the registered trademark "Xiaoyao Town" of "Xihua County Xiaoyao Town Hu Spicy Soup Association", and the "Tongguan Meat Sandwich Steamed Bun Association" sued the meat sandwich steamed bun merchant with the word "Tongguan" in court. In the end, the two disputes ended with an official suspension and an apology from the prosecution.

According to the provisions of the Trademark Law, the holder of the exclusive right to use the registered trademark shall not have the right to prohibit others from using the generic name, graphic, model of the goods contained in the registered trademark, or directly indicating the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods, or the geographical names contained therein.

"For registered trademarks containing generic names, there is still a lack of systematic concepts, which is one of the reasons why the handling of generic names issues is very controversial in judicial practice." Feng Xiaoqing, a researcher at the SPC's Research Center for judicial protection of intellectual property rights and vice president of the China Intellectual Property Law Research Association, said.

The court of first instance in the "Green Peppercorns" case held that wu'a po hot pot shop claimed that the alleged infringement of the logo "green peppercorns" belonged to the generic name, but the wu'a po hot pot shop failed to prove that "green peppercorns" was the statutory or conventional generic name of the service category of "restaurants", and sentenced the defendant Wenjiang Wu'a Po green peppercorn fish hot pot shop to compensate the plaintiff, Shanghai Wancuitang Catering Management Co., Ltd., for economic losses of 25,000 yuan and reasonable expenses of 5,000 yuan.

The Sichuan Provincial Higher People's Court held in the second instance that due to the natural connection between catering services and dish spices, the boundary between the service trademark logo and the specialties with the words "green pepper" is delicate and confusing, which greatly reduces the distinctiveness of its registered trademark and determines that the scope of its protection should not be too wide, otherwise it will hinder the legitimate use of other market entities and affect the market order of fair competition. Therefore, the use of the word "green pepper" by Wenjiang Wu'a Po Green Pepper Fish Hot Pot Restaurant is an objective description of the specialty fish hot pot containing green peppercorn seasoning in the specialty fish hot pot provided by wenjiang, and is not a trademark use, and its use does not constitute infringement.

Clarifying the boundaries of rights is key

"Simple moral intuition tends to go further to the essence of things than various reasoning techniques." Deng Hongguang, a professor at the School of Civil and Commercial Law of Southwest University of Political Science and Law, believes that the Sichuan Higher People's Court rejected all the litigation claims of the trademark owner in the second instance of the "Green Pepper" trademark case, and balanced the lawful protection of trademark rights with the legitimate use of specific words by other business operators.

"The right to register a trademark and the exclusive right to use a registered trademark are two concepts, and the two cannot be confused. If the trademark registration right cannot be used, it is necessary to apply for unlimited rights protection through the exclusive right to use the registered trademark. Zhao Mei, director of the Trademark Supervision Department of the Sichuan Provincial Market Supervision Bureau, reminded, "In the 'green pepper' case, many of the enterprises involved in the case are small catering enterprises, and I hope that everyone will enhance our awareness of the protection of trademark rights through this case." ”

On October 29, 2021, the Opinions of the Supreme People's Court on Strengthening intellectual property adjudication in the New Era to Provide Powerful Judicial Services and Guarantees for the Construction of an Intellectual Property Power was released. It is pointed out that it is necessary to strengthen the regulation of acts such as false litigation and malicious litigation of intellectual property rights, prevent the abuse of intellectual property rights, and promote the construction of a creditworthiness system for intellectual property litigation.

Some lawyers interviewed who are concerned about the "green pepper" case said that for trademark disputes similar to those suspected of "abusive litigation", they cannot wait for a joint investigation and handling. Trademark administrative authorities, judicial organs, etc. should promptly clarify the boundaries of registered trademark rights through institutional construction and plug possible loopholes. Judicial organs should strengthen information communication and conduct necessary substantive reviews before filing a case, so as to avoid the waste of judicial resources after entering the litigation stage. While protecting the legitimate rights and interests of trademark rights holders, the abuse of trademark rights should be effectively regulated, so that the value of trademarks can be truly maximized.