Ma Xiannian Yan Hao/Wen
According to the Tianyancha App, recently, the enterprise status of today's fritter breakfast shop in Jinshui District, Zhengzhou City has changed from existence to cancellation. The breakfast restaurant was established in June 2020 for individual industrial and commercial households. Previously, today's fritters breakfast restaurant has caused controversy because of the store name, decoration style, logo pattern and promotional slogan similar to "today's headlines". According to the risk information, Beijing Douyin Information Service Co., Ltd. (formerly Beijing ByteDance Technology Co., Ltd.) had sued the breakfast restaurant, As well as Henan Today Youtiao Restaurant Management Co., Ltd. and Henan Barbecuer Food Co., Ltd. for trademark infringement disputes.
I. Brief introduction of the case
The plaintiff, Beijing ByteDance Technology Co., Ltd. (hereinafter referred to as "ByteDance Company"), is the registrant of the "Today Toutiao" trademark, and the defendants, Henan Today Fritters Catering Management Co., Ltd. (hereinafter referred to as "Today Fritters Company"), Zhengzhou Jinshui District Today Fritters Breakfast Shop (hereinafter referred to as "Today Fritters Breakfast Shop"), and Henan Barbecuer Food Co., Ltd. (hereinafter referred to as "Griller Company") are the registrants and users of the "Today Fritters" trademark. The plaintiff argued that the "Today Fritters" used by the three defendants on the breakfast snack infringed the exclusive right to use the registered trademark of "Today Toutiao" and constituted unfair competition. Therefore, the lawsuit was filed with the Guangzhou Intellectual Property Court to order the three defendants to stop trademark infringement and unfair competition, eliminate the impact, and claim 2 million yuan.
The three defendants are all small and micro enterprises, and their act of imitating the "Today's Headlines" trademark and using "Today's Fritters" as a business name, trademark, etc. may cause passers-by to laugh. However, from a legal point of view, the three defendants were all suspected of relying on the "Today's Headlines" trademark in terms of trademark design, enterprise name name, store signboard, food bag packaging and decoration, menu style, etc., and whether the act of imitation constituted trademark infringement or unfair competition became the focus of the trial of the case.
Although the verdict of the trial has not yet been released, it has attracted widespread attention from all walks of life. Due to the complexity of legal issues, the author takes this case as an example to analyze and interpret it from the perspective of general trademark infringement. This article is a general trademark infringement article.
2. Criteria for determining trademark infringement
Paragraph 2 of Article 57 of the Trademark Law of the People's Republic of China stipulates that "without the permission of the trademark registrant, the use of a trademark similar to its registered trademark on the same kind of goods, or the use of a trademark identical to or similar to its registered trademark on similar goods, which is likely to lead to confusion" is an act of infringement of the exclusive right to use a registered trademark.
According to the provisions of this article, in judicial practice, it is generally determined from the following five aspects to determine whether the use of a trademark infringes the exclusive right to use a registered trademark of another person:
First, whether the registered trademark is protected in accordance with the law in the mainland. Article 39 of the Trademark Law stipulates that the validity period of a registered trademark is ten years. Before and after the expiration of the validity period, the trademark registrant may go through the renewal procedures in accordance with the provisions, and the validity period of each renewal of registration is ten years. If the renewal procedure is not completed at the expiration of the period, the registered trademark shall be cancelled. This means that if a registered trademark has been cancelled, the use of the trademark by others does not constitute infringement. In addition, if the registered trademark is declared invalid during the validity period of the registered trademark, the use of the trademark by others will not constitute infringement of the registered trademark at any time, because the registered trademark that has been declared invalid is invalid from the beginning.
Second, whether the trademark is used for commercial purposes in production and business activities. Strictly speaking, a trademark is a symbol formed by the trademark owner choosing to combine elements such as words, graphics, numbers, letters and so on according to a certain law, rule or aesthetic sense. Whether or not such a symbol has a clear meaning in itself, if the actor does not use it for commercial purposes in business activities, the value shown by the symbol is not trademark value, but merely an ordinary symbol. Taking Microsoft's well-known trademark "Windows" as an example, if a company uses the word "windows" in a billboard in order to guide visitors to the window in a commercial activity, does this act infringe On Microsoft's trademark exclusive right? The answer is clearly no.
Third, whether the trademark used is identical or similar to the registered trademark. The essential function of a trademark is that the operator uses the symbol to distinguish the goods or services it provides from other operators, so that consumers can choose the goods or services that they are satisfied with. It is precisely on the basis of this consideration that the Trademark Law grants the exclusive right to the holder of an ordinary trademark, prohibiting others from using a trademark that is identical or similar to the registered trademark in a indicative manner in the same kind of goods or services without its permission, and may cause confusion. How can I tell if two trademarks are identical or similar? The criteria for judging are as follows:
Fourth, whether the goods used in the trademark are identical or similar to the goods approved for use by the registered trademark. Because judging whether a trademark is infringing is not only to consider whether the constituent elements, wholeness, and sound meaning of the trademark used are the same or similar, but also to consider whether the goods used by the two trademarks are the same or similar. It can be roughly divided into the following situations: (1) the trademark is the same, and the goods using the trademark are the same; (2) the trademark is identical or similar, and the goods using the trademark are similar; (3) The trademarks are not identical or similar, and the goods using the trademark are not identical or similar. However, if a registered trademark is recognized as a well-known trademark, it mainly examines the content involved in the third judgment criterion, and this judgment criterion is in the position of secondary examination. For example, "Nikon" is a well-known trademark, and although the production and sale of "Nikon" brand electric vehicles by an electric vehicle production company is not the same or similar goods, the court ultimately held that the use of the "Nikon" trademark by the electric vehicle production company constituted infringement.
Fifth, whether the goods using the trademark are easily confused with the goods with the registered trademark. To apply this judgment criterion to determine whether the defendant's use of the trademark constitutes infringement, it is necessary to distinguish between the following two situations: (1) the trademark used is the same, and the goods used in the trademark are the same. In this case, it can be directly determined that the act constitutes infringement. (2) Where the trademark is identical or similar and the goods used in the trademark are similar, further examination is needed to determine whether it is easy to cause confusion, and it can be determined to constitute infringement if it is judged to be easy to cause confusion.
3. Analysis of infringement determination
According to the above judgment criteria, the author regards the "Today's Toutiao" trademark as an ordinary registered trademark, and makes the following analysis of whether "Today's Fritters" constitutes infringement:
First, the "Today's Toutiao" trademark is currently within the validity period and meets the first judgment criterion.
Second, today's fritters company uses "today fritters" for commercial purposes in its business activities, which meets the second criterion.
Third, the "Today Youtiao" trademark of Youtiao Company and the "Today Today Headline" trademark of ByteDance are similar in terms of constituent elements and overall pattern. However, if there is no special notice, the two trademarks are put together for ordinary consumers to identify, and there is almost no possibility of misidentification. Therefore, the third criterion is not met.
Fourth, Today's Fritters Company uses the "Today Fritters" trademark on breakfast snacks, and ByteDance uses the "Today's Headlines" trademark on its recommended engine products, and the above goods are not of the same or similar category, so they do not meet the fourth criterion.
Fifth, through the third criterion, it can be seen that the two trademarks have almost no possibility of causing confusion and do not meet the fifth criterion. Similarly, there are "Zhongtong" and "Shentong", "PetroChina" and "Sinopec", etc., because consumers can accurately and clearly distinguish, so the above trademarks can coexist peacefully without confusion.
IV. Conclusion
Through the above analysis, the author believes that the use of the "Today Fritters" trademark by three companies, including Today's Fritters, has not infringed the exclusive right to use the registered trademark of ByteDance's "Today's Toutiao" (regardless of the research and judgment of well-known trademarks). Of course, this conclusion is only analyzed from the perspective of general trademark infringement, does the behavior of the three companies of Fritters today constitute other illegal acts such as well-known trademark infringement, unfair competition and so on? Further argumentative analysis is needed.
About the Author
Ma Xiannian, Executive Director and Senior Partner of Shandong Deheng Law Firm, Outstanding Lawyer of Qingdao City, Member of Intellectual Property Committee of Shandong Lawyers Association and Member of Intellectual Property Committee of Qingdao Lawyers Association, has been committed to intellectual property, company and commercial business for many years, and has provided legal services for dozens of large state-owned enterprises, government units and private enterprises, and has successfully represented nearly 1,000 litigation or non-litigation cases.
Yan Hao is a lawyer in the Intellectual Property Department of Shandong Deheng Law Firm.