"A cold pulp drives away the heat, and plum soup often remembers the distant fast." As a long-established brand with a history of more than 280 years, "Xinyuan Zhai" mainly produces sour plum soup, autumn pear paste, preserved fruit preserves, etc., of which sour plum soup is the most famous. Around the "Xinyuanjie" series of trademarks, two enterprises located in the Dongcheng District and Xicheng District of Beijing respectively have a dispute with the name of "Xinyuanzhai".
After three "Xinyuanzi" trademarks were revoked by Beijing Xinyuanzhai Beverage Co., Ltd. (hereinafter referred to as Xinyuanzhai Company), The fusuijing Xinyuanzhai Honey Fruit Store (hereinafter referred to as the Xinyuanzhai Honey Fruit Store) in Xicheng District, Beijing municipality, filed a request for invalidation of three "Xinyuanzi and Tu" trademarks of Xinyuanzhai Company, and the two sides began a dispute.
Recently, the Beijing Municipal Higher People's Court made a second-instance judgment, holding that if the long-established brand is not operated, it does not naturally enjoy the prior right, and after the three "Xinyuanzi" trademarks of Xinyuan zhai honey fruit shop were revoked or cancelled, its non-operating long-established brand name is no longer enough to prevent Xinyuanzhai Company from applying for registration of the trademark "Xinyuanzi and Tu".
What are you fighting for?
As early as 2000, Xiao Moumou, the operator of Xinyuanzhai Honey Fruit Shop, filed a lawsuit with the court on the grounds that Xinyuanzhai Company infringed its exclusive right to use the "Xinyuanyuan" trademark, and the court found that Xinyuanzhai Company used the word "Xinyuanzhai" as a trademark on the packaging of the goods it produced and sold, and highlighted the use of the name "Xinyuanzhai" in its corporate name, infringing the exclusive right of Xinyuanzhai Honey Fruit Shop to use the "Xinyuanqi" trademark. Both Xiao Moumou and Xinyuanzhai Company were not satisfied and appealed to the Beijing Municipal Higher People's Court, but failed to obtain the support of the court.
According to the facts ascertained by the Beijing Municipal Higher People's Court in the above-mentioned cases, "Xinyuan Zhai" was a well-known long-established brand in Beijing that was founded during the Qianlong period of the Qing Dynasty to mainly deal in sour plum soup drinks, and closed down in 1949. Xiao Mou, a descendant of the founder of "XinyuanZhai", opened the Xinyuanzhai Honey Fruit Shop in 1983, mainly engaged in dried and fresh fruit products. In 1988, Xiao died of illness, and his son Xiao continued to run the Xinyuan Zhai Honey Fruit Shop.
It is understood that in August 1984, Xinyuan Zhai Honey Fruit Shop submitted an application for the registration of the trademarks No. 220863, 220864 and 220865, and in February 1985, it was approved for registration and use in Class 32 goods such as sour plum soup, Class 30 goods such as autumn pear paste, and Class 29 goods such as preserves. In December 2000, Xinyuanzhai Company applied for the cancellation of the trademark No. 220863 "Xinyuanjie" on the grounds that it had stopped using it for three consecutive years. In December 2000 and May 2001, Xinyuanzhai Company applied for the cancellation of the trademarks No. 220864 and 220865 "Xinyuanzi" for the same reasons. In May 2002, the Trademark Office of the former State Administration for Industry and Commerce (hereinafter referred to as the former Trademark Office) made a decision to cancel the registration of the above three "Xinyuanjie" trademarks. At present, the trademark No. 220864 "Xinyuanzi" has been cancelled due to the cessation of use for three consecutive years, and the trademark No. 220863 and 220865 "Xinyuanyuan" has been cancelled due to failure to go through the renewal procedures in accordance with the regulations.
According to the China Trademark Network, half a month after the original Trademark Office made a decision to cancel the above three "Xinyuanzi" trademarks, Xinyuanzhai Company submitted an application for registration of the trademarks No. 3203813, 3203814 and 3203815 "Xinyuanji and Tu" (hereinafter collectively referred to as the trademarks involved in the case), and in March 2011 it was approved for registration and use on classes 30, 32 and 29 respectively.
In March 2016, Xinyuanzhai Honey Fruit Shop filed a request for invalidation of the trademark involved in the case, claiming that its operator, Xiao Moumou, was a descendant of the long-established brand "Xinyuanzhai", that Xinyuanzhai Company had been judged by the court to infringe its exclusive right to use the "Xinyuanjie" trademark, and that the application of Xinyuanzhai Company for registration of the trademark involved in the case was obviously malicious.
In April 2017, after the Trademark Review and Adjudication Board of the former State Administration for Industry and Commerce (hereinafter referred to as the former TRAB) made a ruling upholding the trademark in question, Xinyuan Zhai Honey Fruit Shop filed an administrative lawsuit with the Beijing Intellectual Property Court but failed to get support, and then appealed to the Beijing Municipal High People's Court.
After trial, the Beijing Municipal Higher People's Court held that the long-established brand needs to have a certain market popularity to be protected, and the registered trademark with a certain popularity or a certain influence must be based on continuous operation and use, and the long-established brand that Xinyuan zhai honey fruit shop does not operate is no longer enough to hinder the application of Xinyuan Zhai Company from applying for the registration of the trademark "Xinyuan Ji and Tu", and accordingly the judgment rejects the appeal of Xinyuan Zhai honey fruit shop.
Is there protection without operation?
Looking at the case, the core claim of Xinyuanzhai Honey Fruit Shop is that it has a historical relationship with the long-established "Xinyuanzhai" and enjoys the prior rights protected by law.
In this regard, the Beijing Municipal Higher People's Court pointed out in its judgment that the case did not negate Xiao Moumou, the operator of Xinyuanzhai Honey Fruit Shop, as a descendant of the long-established brand "Xinyuanzhai "Xinyuanzhai", but as far as commercial trademark rights are concerned, its core value lies in market use. If the old-fashioned heirs do not operate on their trade names, they do not automatically enjoy the prior rights. Under the framework of trademark law, the inheritance of the prior culture cannot be equated with the rights and interests of the predecessor brand name, otherwise it will violate the legal principle of rights. The prior rights claimed by Xinyuanzhai Honey Fruit Shop have nothing to do with its operation, but with the history of "Xinyuanzhai", a historical factor that can ensure its proper use of its "Xinyuanzhai" long-established brand, but after the 3 "Xinyuanjie" trademarks were revoked or cancelled, its long-established brand that did not operate was no longer enough to prevent Xinyuanzhai Company from applying for the registration of the "Xinyuanjie" related trademark.
"In the protection of old brands, how to balance the historical development process of old brands with the current reality is a relatively difficult problem to grasp. Many long-established brands have experienced problems such as subject changes and business interruptions, making it a key point to determine whether the old-fashioned brands enjoy prior rights and interests, and because of the long history, whether the right holders claiming the old-fashioned brands can still have sufficient evidence to prove that they are the heirs of the old-fashioned brands is also one of the difficulties in presenting evidence. Han Hannan, an adviser at Beijing Tengyu Law Firm, said that as a commercial mark and cultural conformity, the basic function of the old brand is to establish a corresponding relationship between the consumer and the operator behind it, and to give high recognition to the goods or services it provides. However, the goodwill formed by the old brand is not stable and unchanged, but needs to be maintained through operation, if the descendants have not used and publicized the old brand for a long time, resulting in consumers being unable to establish a corresponding relationship with the operator, the old brand has lost its basic function, and the goodwill and popularity that have been formed cannot continue to continue. (Wang Jing)