April 26 marks the 24th World Intellectual Property Day. The Tianxin District People's Court in Changsha, Hunan Province has concluded a typical case of "rubbing off famous brands", and the court has severely punished repeated infringements and protected intellectual property rights by actively applying the punitive damages system.
A few days ago, the judge undertaking the case was interviewed by a reporter from Huashang Daily Gale News, explaining in detail the punitive damages for malicious infringement, so that the infringer would pay a higher price.
The product for which the plaintiff has trademark rights
>>> first defendant
Promise not to infringe on trademark rights again and compensate 26,500 yuan
"Yanzhiwu" is a classic product of Xiamen Yanzhiwu Bird's Nest Industry Co., Ltd. (hereinafter referred to as Xiamen Yanzhiwu Company), as a well-known brand enterprise specializing in bird's nest in China, the company is the owner of trademarks such as "Yanzhiwu" and "Wanzhiwu". At the end of 2023, "Yanzhiwu" will officially land on the Hong Kong Stock Exchange as the "first share of bird's nest", and the company has suffered trademark infringement many times.
In 2020, Changzhou Kinder Health Food Factory was sued by Xiamen Yanzhiwu Company to the Yangpu District Court of Shanghai for the production and sale of the "Bird's Nest Rock Sugar Bowl Bird's Nest" product, and the two parties reached a mediation agreement and agreed that the food factory promised not to produce and sell any more goods infringing the plaintiff's trademark rights in the future, and compensated the plaintiff for losses of 26,500 yuan.
The packaging box of the allegedly infringing product
In 2023, after the performance of the case, Xiamen Yanzhiwu Company found that the defendant seller was selling the allegedly infringing goods of the same model as the Shanghai case in Changsha, showing that the production date was January 1, 2023, and the defendant still used the "bird's nest" and "bowl swallow" logos in the promotion on its website.
>>> was prosecuted a second time
He was sentenced to pay 150,000 yuan for economic losses and reasonable rights protection expenses
Xiamen Yanzhiwu Company believed that the defendant had subjective malicious intent and serious circumstances, and filed a lawsuit with the Tianxin District Court of Changsha City in August 2023.
A few days ago, Peng Dingyun, the presiding judge of the Tianxin District Court, confirmed to a reporter from Huashang Daily Gale News that in December 2023, the defendant and its distributors were ordered to immediately stop infringing on the plaintiff's exclusive right to use the registered trademark of No. 3311493 and No. 14676896 "Yanzhiwu", No. 11241517 and No. 16738916, and ordered the defendant to compensate the plaintiff for economic losses and reasonable rights protection costs totaling 150,000 yuan. After the judgment, the defendant appealed, and on February 21, 2024, the Changsha Intermediate People's Court upheld the original judgment in the second instance.
According to the court's judgment, the court held that the defendant had established a sales channel for rapid sales in Changsha, and the "Yanzhiwu" logo and the plaintiff's "Yanzhiwu" trademark were only one word difference between "house" and "wo", but the pronunciation of the two was highly similar, and the two constituted trademark similarity, which could easily cause confusion among the relevant public. The defendant's "Wanyan" logo is the same as the plaintiff's "Wanyan" trademark. The defendant's use of the mark constituted an infringement of the plaintiff's trademark rights and was a repeated infringement.
The court held that the defendant's conduct met the conditions for the subjective intent and aggravating circumstances of the application of punitive damages. After investigation, the defendant made a profit from the sale of the infringing products involved in the case within more than 2 years after the last mediation, which should be significantly higher than the amount of 26,500 yuan in the last mediation, so the amount of the previous infringement mediation between the two parties can be used as the base for punitive damages for re-infringement.
According to the provisions of the Trademark Law, if the infringement of the exclusive right to use a trademark is maliciously infringed, and the circumstances are serious, the infringer may be liable for punitive damages of not less than 1 time but not more than 5 times. The court upheld the plaintiff's 4 times punitive demand, and the defendant had to bear the compensation base in addition to the amount of punitive damages, as well as compensation for reasonable rights protection costs, so the total amount of compensation was 150,000 yuan.
The product inside the defendant's box
>>> the infringer's defense
The own goods are not imitated, and the appeal is made after the judgment of the first instance
On April 25, a reporter from Huashang Daily Gale News contacted Changzhou Jianda Health Food Factory, and the factory staff replied that it did not constitute infringement.
"We are our own goods, and we have a written agreement in Shanghai, not that I risk them, and we don't know that they have a 'Yanzhiwu', they registered one. Ours is either imitating theirs, or it looks a bit infringing. ”
The staff admitted that he had paid 26,500 yuan to the other party, saying that the two were a bit similar, but in fact the words were different. The staff said that the health food factory also has distributors in Changsha, "I don't know the details of the lawsuit in Changsha, and I appealed after the first-instance judgment." ”
>>> had no choice but to lose the lawsuit
"The size of the box is not the same, and the warehouse worker made a mistake"
Subsequently, a person in charge of the factory contacted the reporter and said that he had obtained the judgment and had paid part of the compensation, but the factory was not satisfied with the judgment, "There is no way to lose this lawsuit, and I am still asking in Changsha to see if I can continue to appeal." ”
"The size of our box, and the physical objects inside, are different from theirs. After the matter in Shanghai was dealt with, I stopped producing it, but a few boxes were put in the warehouse, and the workers made a mistake when they did it, and as a result, the court sentenced more than 100,000 yuan at once, and I appealed, and I said where is the basis for the judgment of more than 100,000 yuan? I don't know what happened, and I still have to ask them. ”
According to the aforesaid judgment, the defendant had argued that its logos "Bird's Nest" and "Bowl Swallow" were not the same as the plaintiff's trademarks "Swallow's House" and "Bowl Swallow". The defendant had stopped production and sales after the mediation of the previous lawsuit, because the defendant's factory was small, and the existing packaging was stacked together with the previous packaging box, and the workers mistakenly took two packaging boxes and mixed them with other products and wholesaled them to Changsha.
"We have our trademark, we have our factory name, we have our formula, we have our physical object, I don't use their trademark, our font size is different from theirs. ”
The person in charge said that all the licenses for legal operation are available, and if there are no such complete procedures, it is a counterfeit and shoddy product. Regarding the relevant trademark registration procedures and whether to appeal, the person in charge said that he would reply to the reporter after consulting and discussing.
>>> case handlers interpret the law
It is not possible to use the same or similar trademark marks registered by others
"The defendant filed a lawsuit, but the original judgment was upheld in the second instance, and the defendant has not taken the initiative to pay the amount of compensation. ”
A few days ago, Peng Dingyun, the judge in charge of the case of Tianxin District Court, told a reporter from Huashang Daily Gale News that this is a case involving intellectual property protection that he handled, "The defendant is a food factory with complete licenses, and this is the first case of re-infringement after mediation, similar to the case of re-infringement after mediation." ”
Regarding the food factory's so-called "worker pulling the wrong box", Peng Dingyun said that the court found that the defendant was a false statement. The defendant's products not only used infringing marks on the packaging boxes, but also printed individual packaging labels with infringing marks on all 10 bottled products inside, thus proving that the defendant's allegation that the workers took the wrong two previous packaging boxes was false.
As for the factory's claim that it has its own trademark, Peng Dingyun believes that it is a confusing concept, "They do not have the two registered trademarks 'Bird's Nest' and 'Bowl Swallow' marked on their goods. In addition, the formula is not relevant to this case, and we are hearing whether the trademark is infringing. ”
Peng Dingyun said that the defendant food factory had applied for the trademark "Baishun", but was unsuccessful. "Regardless of whether he has any other trademarks, if someone else has registered trademarks of 'Yanzhiwu' and 'Wanyan', he cannot use the same or similar trademark logos as these two trademarks, in other words, he has 1,000 trademarks, that is, he cannot use the trademark in question. ”
>>> is malicious infringement
Punitive damages increase the cost of infringement and protect intellectual property rights
"This is the case with the infringer in this case, even if the defendant goes to court and reaches mediation with the trademark owner of 'Yanzhiwu', he cannot stop the infringement. ”
Peng Dingyun pointed out that most of the infringements in the field of intellectual property rights reflect a lack of integrity. In practice, some infringers, when the rights holder protects their rights and pursues their responsibilities, will have the awareness of avoiding the limelight first and the strategy of responding to the lawsuit first, so they will also actively settle with the right holder or participate in court mediation. Once the case is handled, it will cleverly fill in the omissions in the infringement procedure and choose the opportunity to repeat the infringement. How to punish such malicious infringement that violates the principle of good faith is a difficult problem that rights holders and judges need to deal with together.
For malicious infringement, the law provides for punitive damages, which aim to increase the cost of infringement and strengthen the protection of intellectual property rights. However, in the application of punitive damages, in addition to providing evidence to prove the subjective intent of the infringer and the seriousness of the circumstances, the determination of the base amount of punitive damages shall also be determined by the amount of its own losses, the amount of the infringer's illegal gains, or the benefits obtained as a result of the infringement. Therefore, in the practice of rights protection of rights holders, due to the high standard of proof, there are not too many punitive damages claims. ”
This case is based on the mediation amount in the previous lawsuit between the right holder and the infringer, which solves the problem of difficulty in determining the compensation base in punitive damages.
Peng Dingyun said: "Of course, when determining this rule, we also fully consider factors such as the specific circumstances, sales channels and time spans of repeated infringement and previous infringement, as well as the fact that there is no significant difference between them. The application of this rule and method is convenient for solving the problem of difficulty in determining the base amount of punitive damages in judicial practice, strengthening the practicality of the application of punitive damages, and also conducive to the precise protection of intellectual property rights by rights holders, and more conducive to deterring malicious infringers. ”
Peng Dingyun specially reminded that the warning of this case for all parties is that when conducting litigation, whether it is mediation or statement, the principle of good faith must be followed, and wantonly violating the promise or false statement in the litigation will obviously increase the judge's judgment and cognition of the subjective malice of the infringer, and the profit from the concession of the other party in the mediation activity will be very likely to be erased in the next lawsuit and pay a higher compensation price.
Huashang Daily Gale News reporter Li Hua edited by Dong Lin
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