Xinmin Evening News (reporter Song Ninghua correspondent Wang Yingge) Nanxiang Xiaolong is a landmark snack in Shanghai and is deeply loved by the public. However, what many diners do not know is that there are actually two "Chinese time-honored brands" in Shanghai that hold the "Nanxiang" trademark at the same time: one is mainly engaged in catering services, and the other is mainly engaged in quick-frozen goods. However, when the party that mainly engaged in quick-frozen food also began to authorize others to open restaurants in the name of "Nanxiang", the balance between the two coexisting for a long time and clearly distinguishing between them was broken.
Image source: Oriental IC
To this end, Shanghai Old Town God Temple Catering (Group) Co., Ltd. (hereinafter referred to as "Old Town God Temple Company") and Shanghai Yuyuan Nanxiang Mantou Shop Co., Ltd. (hereinafter referred to as "Nanxiang Mantou Company") jointly sued Shanghai Nanxiang Food Co., Ltd. (hereinafter referred to as "Nanxiang Food Company"), Shanghai Nanxiang Catering Management Co., Ltd. (hereinafter referred to as Nanxiang Catering Company), Shanghai Pudong New Area Beicai Town Runze Xiaolong Store (hereinafter referred to as Runze Xiaolong Shop) and their actual operators Xiang X to the court on the grounds of trademark infringement and unfair competition.
This afternoon, the Shanghai Pudong New Area People's Court (hereinafter referred to as the "Shanghai Pudong Court") made a first-instance judgment on the case after trial: 4 The defendants immediately stopped the trademark infringement, and Nanxiang Food Company and Nanxiang Catering Company jointly compensated the two plaintiffs for economic losses and reasonable expenses for rights protection totaling 2.342 million yuan, and at the same time published a statement to eliminate the impact.
Pictured: The scene of the trial. Photo by Cao Yunxian (same below)
Two long-established brands have a dispute over the "Nanxiang" trademark
Liangyuan told that the Old Town God Temple Company was the right holder of the service trademark "Nanxiang" No. 772405 and approved for use in Class 43 "restaurants". Old Town God Temple Company is the sole shareholder of Nanxiang Mantou Company. In 2019, through the signing of the Trademark Use Contract, Nanxiang Mantou Company obtained the authorized use license of the trademark. For a long time, the popularity of the "Nanxiang" brand has been expanding, and it has won honors such as "Chinese Time-honored Brand".
In 2019, the two plaintiffs found that Nanxiang Food Company and Nanxiang Catering Company were suspected of exceeding the scope of their trademark approval and use to carry out catering franchise business. Runze Xiaolong Store is one of the franchised stores, and Xiang X is the actual operator of the store. In the operation of the restaurant store, the defendant used the "Nanxiang" and "Nanxiang Xiaolong" logos on store signs, store decoration, posters, tableware and other items. The plaintiff argued that this infringed on its exclusive right to use its service mark and constituted unauthorized use of its service name with a certain impact. At the same time, the defendant's use of words such as "Ten Years of Tongzhi in the Founding of the Qing Dynasty" and "One Hundred Years of Nanxiang" in the promotion of merchants to join the country also constituted false propaganda. Therefore, the two plaintiffs demanded that the four defendants immediately stop the infringement, and the defendants Nanxiang Food Company and Nanxiang Catering Company published statements to eliminate the impact and compensate the plaintiffs for economic losses and reasonable expenses for rights protection of 3 million yuan.
The defendant argued that it did not agree with all of the plaintiff's claims. Nanxiang Food Company is the right holder of the trademark "Nanxiang" no. 260205, which is approved for use in class 30 "Small Dumplings, Wonton" and other goods. The trademark was awarded "China Time-honored Brand" in 2011. Nanxiang Catering Company is authorized by Nanxiang Food Company to use the "Nanxiang" trademark, and the two companies also enjoy the right to "Nanxiang". In addition, the hanging of the word "Nanxiang" in the store is intended to clearly indicate to consumers that the franchise store is a Nanxiang Town enterprise, and its external publicity content is also true and does not constitute false publicity.
Pictured: The scene of the trial
The court found that the defendant's conduct constituted trademark infringement
After trial, the Shanghai Pudong Court held that the service mark held by the plaintiff and the goods trademark held by the defendant were two different trademark classes. Usually, commodity trademarks are used to identify goods providers and are directly marked on tangible goods, while service marks are used to identify service providers, which are often attached to items such as signboards and tools of service-related places based on the intangible characteristics of services.
In this case, the defendant prominently used the "Nanxiang" and "Nanxiang Xiaolong" logos, which are identical and similar to the plaintiff's trademarks, in tangible items such as store signs and service tools for catering services, as well as in the investment solicitation of catering franchises, beyond the necessary scope of indicating the source of its own goods, and producing the effect of identifying the source of services. The defendant, knowing that the plaintiff's service mark has a relatively high reputation, still exceeded the boundaries of its rights, resulting in confusion and misidentification, constituting an infringement of the plaintiff's exclusive right to use the service mark.
At the same time, the Court held that the goodwill obtained by the service name is inseparable from the goodwill carried by the registered trademark, so the Anti-Unfair Competition Law no longer overlaps protection in the areas protected by the Trademark Law. At the same time, the trademarks that the plaintiff and the defendant enjoy rights have coexisted for a long time, and have been awarded honors such as "China Time-honored Brand", and have also contributed to the good goodwill of the "Nanxiang" brand, and the corresponding market pattern and legal order have been formed and recognized and accepted by the public. Therefore, considering the formation and development history of the two parties and the coexistence of the "Nanxiang" trademark, it is no longer appropriate to identify the defendant's behavior as unfair competition with false publicity.
In addition to stopping the infringement and publishing a statement to eliminate the impact, Nanxiang Food Company and Nanxiang Catering Company are also required to bear the liability for compensation. Regarding the determination of the amount of compensation, based on the number of franchise stores involved in the franchise project involved in the case, the consequences of infringement and other factors, the court decided that the two companies should compensate the two plaintiffs for economic losses of 2 million yuan and reasonable expenses for rights protection of 342,000 yuan.
The judge said: In the trial of cases involving long-established brands, the interests of all parties should be balanced.