When it comes to tofu, everyone is familiar with it. In Xiangyang, "Taiping Tofu" is not only popular all over the streets and alleys of Xiangyang with its exquisite skills and unique flavor, but also attracts many foreign tourists, and has become a beautiful business card of Xiangyang. When "Taiping Tofu" encounters a trademark infringement dispute, how can the brand value be continued? The Xiangyang Intermediate People's Court gave the answer with a judicial suggestion.
"Taiping Tofu" was caught in an infringement dispute
Taipingdian Town, Fancheng District, Xiangyang City is the hometown of tofu, all villages and groups make tofu, Taipingdian tofu texture is delicate, refreshing and delicious, many outsiders make a special trip to Xiangyang to eat Taipingdian tofu.
In such a hot background, it is not uncommon for merchants in Xiangyang to sell "Taiping Tofu". However, one supermarket got into a lawsuit because of this.
It all started three years ago.
In November 2021, the Xiangyang branch of a supermarket (hereinafter referred to as "a supermarket in Xiangyang") signed a contract with a Fudou Products Co., Ltd. in Xiangyang City, stipulating that a Fudou Products Company in Xiangyang City would provide soy products for sale in each store of the supermarket. Subsequently, a Fudou Products Company in Xiangyang City signed a purchase and sale contract with a spring tofu products Co., Ltd. in Xiangyang Taipingdian, and agreed that a spring tofu products Co., Ltd. in Xiangyang Taipingdian would provide it with soy products.
After the contract was signed, the stores of a supermarket in Xiangyang put the tofu on the shelves and sold it under the name "Taiping Tofu".
It didn't take long for this situation to be known to another tofu product company, Hubei Xiang Food Co., Ltd. (hereinafter referred to as "Xiang Company"), and expressed dissatisfaction.
"'Taiping' is our company's registered trademark, our tofu quality is good, the output is large, after long-term publicity and use, 'Taiping' trademark and 'tofu' and other products enjoy a high reputation in Xiangyang city and surrounding areas. The person in charge of a company in Xiang said that the tofu labeled "Taiping" sold in the stores of a supermarket in Xiangyang was not produced by their company, nor was it authorized by them, and it was a sale of goods counterfeiting its registered trademark, and it should bear infringement liability in accordance with the law.
Subsequently, Xiang's company sued a supermarket in Xiangyang and its stores, requesting that the defendant's stores in Xiangyang immediately stop selling goods that infringed its exclusive right to use the registered trademark "Taiping", and compensate it for economic losses of 100,000 yuan, as well as notary fees and attorney's fees incurred to stop the infringement.
What's right and what's wrong?
"I asked them to use the 'Taiping Tofu' used on the billboards and price tags of a supermarket in Xiangyang. ”
During the trial, Deng Mou, the legal representative of a spring tofu products Co., Ltd. in Taipingdian, Xiangyang City, testified in court that their family had been operating a tofu business since their grandparents, with a history of 100 years, and was a small workshop before, and the company was registered and established after 2008. His mother, Zhang, was awarded the "Top Ten People Who Moved Xiangyang in 2015" for using traditional craftsmanship to make "Taiping Tofu" on a large scale.
Deng said that because the merchants who make tofu in Taipingdian Town, Xiangyang City, are called "Taiping Tofu" when they supply them, the tofu they supply to the stores of a supermarket in Xiangyang has always been called "Taiping Tofu".
"Taipingdian Town, Fancheng District, has experienced the change of place names of Taiping Commune and Taiping Town, and the hard-working Taipingdian people have always had the tradition of making tofu from ancient times to the present. The Agricultural Office of the People's Government of Taipingdian Town, Fancheng District, Xiangyang City issued a statement: "Taiping tofu, bean skin, bean tendon and other soy products are famous characteristic agricultural products in Taipingdian Town, and the production and development are as long as the history of the town. ”
On April 11, 2022, the Xiangyang Municipal Human Resources and Social Security Bureau released a new guidance catalogue of 162 vocational training needs, adding the production of "Taiping Tofu" as a "new format" type of work.
The investigation showed that Xiang obtained " " through transfer in 2018
"Registered Trademark. After comparison, the word "Taiping" in the "Taiping Tofu" sold in a supermarket in Xiangyang is the same as the word part "Taiping" in the above-mentioned registered trademark of Xiang, and both are used on tofu products, and the two constitute similar trademarks.
So, does the behavior of a supermarket in Xiangyang constitute trademark infringement?
"Since July 1948, Taipingdian Town has undergone many name changes, mostly with 'Taiping' as the prefix, although it was finally named 'Taipingdian', but the local people have been accustomed to call the town 'Taiping', that is, 'Taiping' has become a place name, with public characteristics. The presiding judge said, "A supermarket in Xiangyang claimed that the 'Taiping Tofu' sold in its store was an expression of 'place name + commodity name', which was in line with the actual situation and was a fair use." Xiang has no right to prohibit others from using the name 'Taiping'. ”
It is understood that "Taiping Tofu" has a long historical heritage, sales volume is large and wide, the sale of tofu are named "Taiping Tofu", the brand is the collective labor results created by local workers through hard work, has become a certain influence and reputation of Xiangyang District of special agricultural products.
"Before Xiang applied for a registered trademark, the 'Taiping Tofu' brand had been used by soybean product processors in Taipingdian Town for many years and had formed a certain influence. The presiding judge said that Xiang was a soybean product processing and sales enterprise with a business address in Taipingdian Town, and that it should have known the historical inheritance of the "Taiping Tofu" brand, so it had no right to prohibit merchants engaged in soybean product processing in Taipingdian Town from using the "Taiping Tofu" brand properly.
Therefore, the conduct of a supermarket in Xiangyang does not constitute trademark infringement. After careful investigation and trial, the court rejected the litigation claim of Xiang Food Company in accordance with the law.
Judicial advice escorts the development of the industry
"Because the trial of this series of cases involves the protection of the exclusive right to use the registered trademark of 'Taiping' and the conflict of rights for the proper use of the name 'Taiping' in the logo of 'Taiping Tofu', if the case is adjudicated, the contradictions and disputes cannot be fundamentally resolved, which will have an adverse impact on Taipingdian Town to build a brand of special agricultural products and promote industrial development. The judge of the Intellectual Property Division of the Xiangyang Intermediate People's Court said.
After the judgment came into effect, in order to strengthen the protection of the intellectual property rights of the geographical indication of "Taiping Tofu" and promote the development of related industries, the Xiangyang Intermediate People's Court decided to give risk warnings in terms of the mediation and resolution of trademark interest disputes, industry management norms, and the development of characteristic industries in response to this series of trademark infringement disputes, and put forward judicial suggestions to coordinate all parties to do a good job in the "second half of the article" after the case was concluded.
Before sending the judicial recommendation, the Xiangyang Intermediate People's Court, the Xiangyang Municipal Administration for Market Regulation, and the Fancheng District Market Supervision and Administration Bureau visited Taipingdian Town twice to conduct on-site investigations, and fully listened to the demands of the parties and the opinions of local governments, industry associations, trademark associations and other parties.
After doing a series of work, the Xiangyang Intermediate People's Court put forward three countermeasures and suggestions: first, to seek the best solution to resolve disputes, to promote the right holder to shake hands with the "Taiping Tofu" production and sales enterprises, and to help apply for geographical indication certification trademarks; secondly, to guide relevant associations to strengthen industry self-discipline and standardized management, unify quality standards, and maintain the brand value of "Taiping Tofu"; finally, focus on the development of the "Taiping Tofu" special agricultural products industry, and ensure that enterprises with development potential become bigger and stronger.
After the judicial suggestion was issued, the Taipingdian town government took a number of effective measures to promote the establishment of the Taiping Tofu Industry Association, organized relevant departments to investigate the production enterprises, and actively applied for the "Taiping Tofu" geographical indication certification trademark, and the local market supervision department also quickly formulated the quality system standards of the Taiping tofu industry.
Through the joint efforts of many parties, the brand value of "Taiping Tofu" has been effectively continued, and the Xiangyang bean products industry has also ushered in a stronger momentum of development.
Source: Hubei High Court
Editor: Sharon