In recent years, trademarks have become more and more valued by enterprises, and trademark disputes have occurred frequently. In 2018, Hubei Zhou black duck enterprise development co., ltd., a leading enterprise in the domestic food industry, objected to the Zhou Dahei trademark of Shaanxi Shuangya Grain and Oil Industry and Trade Co., Ltd. in Yangxian County, and sued the court on the grounds of similar trademark infringement.
Zhou Dahei did product display
Since then, after three years, from the Beijing Intellectual Property Office to the State Intellectual Property Office to the Beijing Supreme People's Court, "Zhou Dahei" has faced objections, has not compromised, and has argued on the basis of reason. Finally, at the end of July 2021, the Supreme People's Court issued a judgment: the administrative judgment of the Beijing Intellectual Property Office was revoked, and the State Intellectual Property Office re-ruled against Zhou Hei Duck's request for invalidation of the Zhou Dahei trademark, and the Zhoudahei trademark litigation dispute finally came to an end. This also means that Hanzhong private enterprises have won this "trademark defense war" against domestic food industry tycoons.
We should not see "black" and fight: "Zhou Dahei" and "Zhou Black Duck" dispute
As a native of Yangxian County, the founder of the "Zhou Dahei" brand black rice is called Zhou Yagang, "Zhou" is a surname, and "Dahei" is his milk name. In 2014, "Zhou Dahei" was registered as a trademark and gradually gained popularity.
However, just when the brand of Zhou Dahei was further "shouted", it was filed by Hubei Zhou Black Duck Enterprise Development Co., Ltd., on the grounds of similar infringement of the trademarks of "Zhou Dahei" and "Zhou Black Duck", and faced with the dilemma that the trademark was ruled invalid by the State Intellectual Property Office, they began a three-year road of rights protection and defense.
Original Judgment: "Zhou DaHei" involved similar trademarks on the same or similar goods as "Zhou Black Duck" and was invalidated
The reporter learned from the "Shaanxi Shuangya Grain and Oil Industry and Trade Co., Ltd. and the State Intellectual Property Office Second-Instance Administrative Judgment":
On December 24, 2019, "Zhou Dahei and Tu" was ruled that the disputed trademark should be invalidated because the application for registration of the trademark constituted the circumstances stipulated in Articles 30 and 31 of the Trademark Law of the People's Republic of China amended in 2013.
The Beijing Intellectual Property Court held that the Trademark Law of the People's Republic of China (hereinafter referred to as the 2019 Trademark Law), as amended in 2019, had come into effect on November 1 of the same year, that the disputed trademark was a trademark approved for registration during the implementation of the 2013 Trademark Law, that the State Intellectual Property Office had rendered an invalidation ruling after the implementation of the Trademark Law in 2019, and that the goods approved for use in the disputed trademark and the goods used in the first and second approvals of the cited trademarks constituted the same or similar goods. The distinctive identification part of the disputed trademark "Zhou Dahei" and the distinctive identification part of the citation trademarks I and II are similar in terms of word composition, call, etc. If the above trademarks are used on the same or similar goods at the same time, the relevant public pays general attention to it, and it is easy to think that the goods it identifies originate from the same subject, or that there is a correlation between the suppliers of the goods, thus causing confusion and misunderstanding. At the same time, the evidence in the case is not sufficient to prove that the disputed trademark has been used, which has enabled the relevant public to distinguish it from the cited trademarks one and two.
Therefore, the disputed trademark and the cited trademarks I and II respectively constitute similar trademarks used on the same or similar goods as referred to in Articles 30 and 31 of the 2013 Trademark Law. In accordance with Article 69 of the Administrative Litigation Law of the People's Republic of China, the Beijing Intellectual Property Court ruled that the litigation claims of Shuangya Company were rejected.
Twist: There are certain differences in text and graphics, etc., and the invalid ruling is revoked
Subsequently, Shaanxi Shuangya Grain and Oil Industry and Trade Co., Ltd. (hereinafter referred to as Shuangya Company) appealed to the Beijing Municipal Higher People's Court against the administrative judgment of the Beijing Intellectual Property Court in a case of administrative dispute over the declaration of invalidation of trademark rights. Request the revocation of the original judgment and the ruling complained of, and order the State Intellectual Property Office to make a new ruling. The grounds of appeal were:
First, the disputed trademark has a unique creative concept and design source, Shuangya Company's application for the disputed trademark has a legitimate reason, and the disputed trademark has formed a stable market order and consumer group after its long-term and large-scale publicity and use, and has been rated as a "famous trademark in Shaanxi Province", and the coexistence with the cited trademarks I and II will not cause consumers to confuse and misunderstand the source of the goods. 2. There are obvious differences between the disputed trademark and the cited trademarks I and II in terms of the constituent elements of the trademark, the overall appearance, and the way of calling, and the two do not constitute similar trademarks. 3. The State Intellectual Property Office has made a decision not to use the cited trademarks I and II for three consecutive years, and requested the court to suspend the trial. 4. Zhou Black Duck Company's application for invalidation of the disputed trademark was in bad faith. 5. The industry engaged in by Shuangya Company is different from that engaged in by Zhou Black Duck Company, and the disputed trademark shall be maintained for registration.
Trademark similarity refers to the composition and color of the glyphs, pronunciations, meanings or graphics of the trademark, or the overall structure of the combination of its various elements, or the similarity of its three-dimensional shape and color combination, which is likely to cause the relevant public to misunderstand the source of goods or services or believe that there is a specific connection between its sources.
The disputed trademark consists of "Zhou Dahei" and figures. The cited trademarks I and II consist of "Zhou Black Duck ZHOU HEIYA" and figures. There are certain differences between the text part of the disputed trademark and the text part of the cited trademarks I and II in terms of call and text composition, and the graphic part of the disputed trademark and the graphic part of the cited trademark i and II are quite different, and they do not constitute similar signs respectively. If the disputed trademark and the cited trademark I and II coexist on the same or similar goods, in the state of comparison object isolation, the relevant public can distinguish the source of the goods with general attention, and the disputed trademark and the citing trademark I and II respectively do not constitute similar trademarks used on the same or similar goods.
The judgment of the Beijing Supreme People's Court found that the facts and the applicable law were wrong and should be corrected. Some of the grounds of appeal of Shuangya Company are valid and sufficient to lead to the revision of the original judgment and the judgment of the respondent, and its appeal request is supported. The State Intellectual Property Office shall make a new ruling on the basis of the determination of this court. In accordance with the second and third paragraphs of the first paragraph of Article 89 of the Administrative Procedure Law of the People's Republic of China, the judgment revoked the ruling of the Beijing Intellectual Property Court and the State Intellectual Property Office on the request for invalidation of the "Zhou DaHei and Tu" trademark. In the end, "Zhou Dahei" won the lawsuit!
Huashang Daily reporter Jia Lingwei Editor Jiang Lei
(JL)