Recently, the mutual litigation case around the well-known two well-known "Nanxiang" trademarks in Shanghai fell into the hammer in the first instance.
Yuyuan Nanxiang Mantou Shop and Jiading Nanxiang Food Company are both "Chinese time-honored brands", both have "Nanxiang" trademarks, but the registered categories are different, the former mainly do the 42nd class "restaurant", the latter mainly engaged in the 30th class "small dumplings, wonton" and other convenience foods, has long been peaceful coexistence.
The conflict stemmed from the latter's "cross-border" behavior, and when Jiading Nanxiang Food Company began to authorize others to open restaurants in the name of "Nanxiang", the two sides began to sue each other. In 2020, Yuyuan Nanxiang Steamed Bun sued Jiading Nanxiang Xiaolong for trademark infringement. At the same time, the latter countersued the former for unfair competition, saying that it had maliciously used all its well-known trade names and enterprise names for a long time to climb and hitchhike.
On April 22, the Shanghai Pudong New Area People's Court (hereinafter referred to as the "Pudong Court") ordered 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") and Shanghai Pudong New Area Beicai Town Runze Xiaolong Store (hereinafter referred to as "Runze Xiaolong Store") to immediately stop the trademark infringement, and Nanxiang Food Company and Nanxiang Catering Company jointly compensate Shanghai Old Town God Temple Catering (Group) Co., Ltd. (hereinafter referred to as "Old Town God Temple Company"),. Shanghai Yuyuan Nanxiang Mantou Shop Co., Ltd. (hereinafter referred to as "Nanxiang Mantou Company") suffered economic losses and reasonable expenses on rights protection totaling 2.342 million yuan, and published a statement to eliminate the impact.
On the same day, the Yangpu District People's Court of Shanghai Municipality (hereinafter referred to as the "Yangpu Court") rejected Nanxiang Food Company's claim that the conduct of Yuyuan Nanxiang Steamed Bun was an act of false publicity and unfair competition.
Similar to this case, there have been trademark lawsuits such as Luoyang Dukang Wine and Baishui Dukang Wine, Suzhou Daoxiangcun and Beijing Daoxiangcun, and a number of intellectual property experts said in an interview that due to the lack of networking of the industrial and commercial systems in various places in the early years, it was difficult to verify whether the trademark had been registered, and after different enterprises registered different classes of the same trademark, disputes were inevitable, which also led to similar long-established intellectual property cases being complex and protracted.
It can be seen that for long-established brands, how to protect trademark rights and whether trademark coexistence can be achieved has become a new issue.
<h4>Origin: The old name of the same name was originally born from the same root</h4>
Although the same is "Nanxiang", Yuyuan garden does dine-in food, Jiading does quick-frozen, and they have been safe for many years.
Both parties at the scene of the Yangpu court on April 22 agreed that Nanxiang Xiaolongbao began in 1871 and was created by Huang Mingxian, the owner of The Rihuaxuan Dim Sum Shop in Nanxiang Town, and later became the representative of the authentic Nanxiang Xiaolong in Jiading.
In 1900, another "Nanxiang Xiaolong" was opened by Huang Mingxian's family Wu Xiangsheng in the Yu Garden of the City God Temple, mainly Nanxiang Xiaolong Steamed Buns, named "Nanxiang Steamed Bun Shop", which has not been relocated or destroyed for 120 years and has been operating so far.
After 1949, through public-private partnership, many old hotels such as "Wujiaguan" were merged into "city cooperative hotels" operated by Jiading County Catering Service Company, a subsidiary of Jiading County Supply and Marketing Cooperative. In this process, the recipe and production process of Nanxiang Xiaolong was passed down from "Wujiaguan" to Jiading County Catering Service Company. Jiading County Catering Service Company registered the No. 260205 Nanxiang trademark in 1985, and then opened Shanghai Jiawei Quick-Frozen Food Factory to produce "Nanxiang Xiaolongbao", and the No. 260205 Nanxiang trademark was inherited by Shanghai Nanxiang Food Co., Ltd.
Nanxiang Food Company mainly produces "Nanxiang" brand small dumplings, Shanghai Wonton and other series of quick-frozen food, products in addition to the domestic market, but also exported to the United States, Canada, Australia, Britain, Hong Kong and other countries and regions, is the earliest production of export quick-frozen food professional enterprises in Shanghai, export history of more than 20 years. The trademark "Nanxiang" No. 260205 owned by it is designated for use in categories 30 such as "Xiaolongbao and Wonton".
Yuyuan Nanxiang Mantou Company belongs to the industry of commercial service industry, the business scope includes: catering enterprise management, industrial investment, food sales, catering services. Old Town God Temple Company is a wholly-owned subsidiary of Shanghai Yuyuan Tourism Mall Co., Ltd. and is the sole shareholder of Yuyuan Nanxiang Mantou Company. Old Town God Temple Company is the right holder of the trademark No. 772405 "Nanxiang", which was registered on November 21, 1994 and was approved for use in Class 42 "Restaurant".
According to China's Trademark Law, goods and services trademarks are divided into 45 categories, of which 1 to 34 are commodities and 35 to 45 are services, and the use of trademarks with the same name in different classes within the boundaries of their rights does not constitute infringement.
So far, the two "Nanxiang" trademarks representing Nanxiang Xiaolong Steamed Buns have been used by two companies within the scope of the law, and from the 1980s to around 2014, the two companies have developed in their respective fields of catering service industry and quick-frozen food industry.
<h4>Conflict: Commercial expansion leads to a lawsuit</h4>
The seeds of conflict between the two sides began in 2014. In this year, Nanxiang Food Company established Nanxiang Catering Company, which opened and authorized Nanxiang Restaurants in Downtown Shanghai through direct operation and franchise, and these stores used "Nanxiang" as the name of the restaurant, and used the word "Nanxiang" in signboards, store decorations, posters, menus, tableware, etc.
In 2020, Yuyuan Nanxiang Mantou Company and Old Town God Temple Company believed that the above-mentioned use had constituted an infringement of their "Nanxiang" trademark rights, and filed a lawsuit with the Pudong Court, requesting Nanxiang Food Company, Nanxiang Catering Company, Runze Xiaolongdian and their actual controllers to immediately stop the infringement, publish a statement, eliminate the impact and compensate for economic losses and reasonable expenses for rights protection of 3 million yuan.
Later, Nanxiang Food Company and Nanxiang Catering Company also filed a lawsuit with the Yangpu court, holding that the "Nanxiang" trademark held by them belonged to the "Chinese time-honored brand", and the "Nanxiang Xiaolong" products produced by them had won many awards and were well known. Yuyuan Nanxiang Mantou Company has long maliciously used all the well-known commodity names and enterprise names of Nanxiang Food Company to climb and hitchhike.
Accordingly, the lawsuit requested Shanghai Yuyuan Nanxiang Mantou Shop Co., Ltd., Shanghai Yuyuan Nanxiang Mantou Shop Co., Ltd. Yuyuan Garden Store, Shanghai Yuyuan Tourism Mall (Group) Co., Ltd., and Shanghai Yuyuan Tourism Mall (Group) Co., Ltd. Nanxiang Mantou Shop to immediately stop the unfair competition behavior of infringing on the use of product names and enterprise names, and issued statements in Shanghai Wen Wei Po, Xinmin Evening News and other media to eliminate the impact, and also requested a judgment to compensate him for economic losses and reasonable expenses totaling 3 million yuan.
In addition, Nanxiang Food Company and Nanxiang Catering Company also believe that Yuyuan Nanxiang Mantou Company clearly stated to consumers in each store that "in 2014, Nanxiang Xiaolong's production technology was designated as a national intangible cultural heritage" and "Tianxia One Cage", etc., carried out false publicity, deceived consumers, and sued them to immediately stop false publicity.
On September 9 and September 10, 2020, the two cases were heard separately, and both parties expressed their disagreement to accept mediation.
On April 22, 2021, the first trial of the two cases fell hammer. The claims and rights of the Old City God Temple Restaurant were upheld by the Pudong Court, and Jiading Nanxiang awarded 2.342 million yuan in damages; the Yangpu Court rejected all of Nanxiang Food Company's litigation claims.
<h4>Behind: How do long-established trademarks of the same name coexist? </h4>
Similar conflict of rights over long-established trademarks is not a single case, can related trademarks find a way to coexist?
Around the "Du Kang" trademark, Henan Luoyang Du Kang Holding Co., Ltd. and Shaanxi Du Kang Liquor Co., Ltd. have been entangled for more than 20 years, and have continuously fought intensive lawsuits in Tianjin, Henan and other places, each with a victory or defeat. Under the continuous consumption, the pattern of China's liquor market has changed, consumer demand has accelerated to concentrate on famous wine and brand enterprises, and it is difficult to see the traces of two "Dukang liquors" in the mainstream market.
In the trademark dispute between Beijing Daoxiangcun and Suzhou Daoxiangcun, which was pronounced on December 27, 2019, the Beijing Intellectual Property Court stated that the relevant trademarks can coexist when they have been registered for a long time, have established a high market reputation and formed their own relevant public groups, and the relevant public has been objectively able to distinguish the relevant trademarks.
So in the aforementioned "Nanxiang" case, why not allow the trademark to coexist in the catering industry?
Chen Shaoling, associate professor of the School of Intellectual Property of East China University of Political Science and Law, explained to reporters that the use of trademark rights by the subjects involved in the Daoxiangcun case has not formed a division of rights in history, so it is relatively easy to coexist. However, when the two parties to the "Nanxiang case" registered their trademarks earlier, they had already delimited their respective rights boundaries in the process of long-term use in the later stage, one providing fast food goods and the other providing catering services, so it was relatively difficult to coexist across the boundary.
Mr. Qiao Wanli, a senior partner at Zhejiang Zeda Law Firm and deputy director of the Intellectual Property Professional Committee of the Hangzhou Lawyers Association, believes that the basis for the coexistence of trademarks is that both parties are good faith. Before Changing the way the trademark is used and expanding the scope and scope of use, Nanxiang Food Company should inquire whether there may be a conflict with the registered trademark. If this reasonable duty of care is not fulfilled, and confusion is likely to arise, it shall bear corresponding legal liability.
"The Pudong court's judgment respects the historical inheritance and the background of the times, respects the market pattern that has been formed by history, and fully protects the old brands while also drawing a clear boundary between their respective rights." Joe Wanli said.
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