Following a series of trademark rights disputes such as Tongguan meat sandwich buns, Korla fragrant pears, and grilled fish with green peppercorns, the "honeysuckle" trademark has caused controversy, which has caught many enterprises with the words "honeysuckle" on their packaging a bit "caught off guard".
Recently, Mr. Wu, Secretary General of the Jiangxi Health and Disinfection Products Industry Association, told the media that more than 60 enterprises in the association were sued by the holder of the "Honeysuckle" trademark , Shanghai Bili Cosmetics Co., Ltd., for producing products such as "Honeysuckle Dew", and many enterprises were ruled by the court to lose. "Based on the amount of compensation of 200,000 to 300,000 yuan per case, the amount of compensation claimed in Jiangxi Province alone has reached 12 million."
In April 2021, the Jiangxi Health care and Disinfection Products Industry Association also issued the "Notice on the Market Early Warning of "Honeysuckle" Named Products", reminding member units that some companies have been sued by Shanghai Bili Company for infringement of products using honeysuckle naming, and there are cases of failure, and it is recommended that enterprises temporarily remove "honeysuckle products from the shelves."
According to the data of enterprise investigation, Shanghai Bili is currently involved in a total of 112 judicial cases, of which 107 cases are related to trademark disputes. Since the beginning of 2019, the number of judicial cases in Shanghai Bili has increased sharply, from 2 cases in 2018 to 23, and the number of litigation cases involved has increased year by year in the following years.
Shanghai Bili Cosmetics Co., Ltd. was established in September 1995, the business scope includes cosmetics, daily necessities, chemical products, disinfection products sales, etc., under the Bili, Luolisi, Four Seasons, Volkswagen and other brands. According to the trademark information, the company applied for the trademark "honeysuckle" in the category of daily chemicals in 1991 and completed the registration in July 1992.
According to reports, as of January 13, 2022, Bili Company has made 123 court announcements and 79 legal proceedings across the country, all of which are trademark infringement disputes. In addition, some lawyers counted 111 judgment documents of Bili Company as plaintiffs, "It is estimated that in hundreds of lawsuits, Bili Company has claimed more than 10 million yuan." ”
"Honeysuckle" trademark can not be used?
Many enterprises are puzzled by the practice of Bili Company, why can the trademark "Honeysuckle" as a common plant name be successfully registered? If the use of the "Honeysuckle" trademark will be considered infringing, will the "Honeysuckle" trademark not be used in the future?
In this regard, Bili Company publicly stated that its trademark prosecution was not indiscriminate litigation, and the purpose of the complaint was to clean up the market and protect its own brand.
Among the trademark infringement lawsuits involved in Bili Company, the more well-known is the lawsuit between Guangdong Mingchen Company and Shanghai Bili, and the dispute was caused by a flower lotion produced by Mingchen Company containing honeysuckle ingredients.
In May 2021, Guangdong Mingchen filed a civil appeal with the Jiangsu Provincial Higher People's Court, arguing that "honeysuckle" is a generic name for medicinal plants and is not distinctive as a trademark. In addition, the trademark involved in the case of Bili Company was rarely used after 1994, and the well-known and well-known goods were marked by Mingchen Company as its own well-known trademark "Tihua Zhixiu", and the "Honeysuckle" logo used was not similar to the trademark involved in the case, and would not cause confusion or misidentification among consumers.
Billy argued that honeysuckle was not the generic name of similar products, and that floral dew was the generic name. Moreover, the "honeysuckle" trademark involved in the case has been continuously publicized and operated, and has strong distinctiveness and popularity. In addition, The prominent use of honeysuckle in the three products involved in the case by Mingchen Company went beyond the scope of descriptive use, which was easy to cause confusion among consumers and constituted trademark infringement.
In this case, the court ruled that Mingchen Company constituted trademark infringement. The main reason is that the "Honeysuckle" font marked on the front of the Tihua Zhixiu is conspicuous and prominent, and the font is obviously larger than the "Tihua Zhixiu" trademark of Mingchen Company, which has exceeded the boundaries of the objective description of the goods and the legitimate use, constituting a trademark use. This product is objectively easy to cause confusion or misidentification by the relevant public.
The Jiangsu Higher People's Court held that if a market entity has honeysuckle raw materials in the ingredients of the flower dew water produced, it may use the word "honeysuckle" on the flower dew water product for the purpose of describing the specific raw material composition of the product, but may not use the above words trademarked. In the end, the court ordered Mingchen Company to compensate Bili Company for economic losses and reasonable expenses totaling 150,000 yuan.
In fact, according to the first paragraph of Article 59 of the Trademark Law, the holder of the exclusive right to use the registered trademark shall not have the right to prohibit the proper use of the goods contained in the registered trademark, or the generic name, graphic or 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.
Therefore, the enterprises subject to litigation often cite the above provisions as an important defense against their proper use of the name "honeysuckle". However, in all the jurisprudence so far, except for one case, all others have been ruled out of the case.
Wu Meng, director of Beijing Jinshi Law Firm, said that when it comes to the word "honeysuckle", the "proper use" in the first paragraph of article 59 of the Trademark Law is to use the word when it is necessary to express this flavor of medicinal materials, and to avoid misleading people as a trademark in the way of use. Obviously, most of the defendants' products have the potential to cause confusion in the market.
Why doesn't "green pepper" constitute infringement?
Coincidentally, at the end of 2021, due to the restaurant's signboard containing the three words "green peppercorns", a number of enterprises were sued by Shanghai Wancuitang Catering Management Co., Ltd., and the specialties of the Sichuan-Chongqing region involved in the case name "Green Peppercorns" were also common names.
However, unlike the "Honeysuckle" judgment, on January 13, the court ruled that the plaintiff lost the lawsuit and confirmed that the "Green Pepper" shop sign was not a trademark use.
The Sichuan Provincial Supreme People's Court pointed out that the plaintiff, Shanghai Wancuitang Catering Management Co., Ltd., registered the application for "green peppercorns" on the 43rd type of service, which can be considered to have a certain degree of significance and can play a role in distinguishing the source of services. However, due to the natural connection between catering services and dish spices, the boundary between the service trademark logo and the specialty dishes with the word green pepper is delicate and confusing, which greatly reduces the distinctiveness of its registered trademarks, and it is almost difficult to identify the source of services through trademarks. Its weak and distinctive characteristics determine 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.
Lu Yuanhui, a lawyer at Sichuan Discovery Law Firm, believes that the reason why the "Green Pepper" trademark of Shanghai Wancuitang can be successfully registered is that the mainland's trademark law does not prohibit the cross-class registration of generic names. If the word "green pepper" is applied for registration on the 30th class trademark, that is, the goods of the spices and other categories, it may not be registered because it belongs to the generic name. However, in this case, the Shanghai company obtained a number of valid trademarks in the language of class 43 "green pepper" at the State Intellectual Property Office, which ranged from fast food restaurants, restaurants, restaurants, company canteen catering and other services. Therefore, if other enterprises use the word green pepper in this scope, it is easy to mislead the public, which may constitute infringement.
"Specific to this case, the court should make a comprehensive judgment based on the actual use of the right trademark, the scope of use, customer coverage, brand influence, etc." For example, if the scope and popularity of this trademark are actually used in Shanghai, it should not be easily determined that the small restaurants in a small county vegetable market in Sichuan are misleading to the public. ”
Therefore, the two trademark disputes between "green pepper" and "honeysuckle" seem to be very similar, but the infringement of registered trademarks still requires specific analysis of specific issues.
The people's court newspaper pointed out that trademarks are not a tool used to race around and extort profits, and the trademark law protects the trademark logo itself that is solidified by the act of registration. The Trademark Law protects the function of trademarks in identifying and distinguishing the sources of goods and services, and maintains the goodwill accumulated by honest business operators in the process of using trademarks.
(Titanium media APP editor Zhai Biyue synthesized from Securities Times, Interface News, Shangguan, etc.)