China's time-honored brand has a long history and profound heritage, and has formed a good reputation and brand value with products, skills or services passed down from generation to generation. Once a long-established trademark that is well known and recognized by the public is infringed by competitors in the same industry, it is easy to mislead consumers and also brings influence and damage to the original long-established brand. When "Shanghai Guanshengyuan" collides with "Xindu Guanshengyuan", do you think that two enterprises of a mother and compatriot are facing each other in court?
Brief introduction of the case
The plaintiff, Shanghai Guanshengyuan Food Co., Ltd., argued that:
As a competitor in the same industry, the defendant registered "Guanshengyuan" as its own enterprise name under the premise that the plaintiff's "Guanshengyuan" brand name and trademark already had a very high influence, which was likely to cause confusion and misidentification among the relevant public, obvious bad faith, violation of the principle of good faith, and constitute unfair competition;
At the same time, the defendant's prominent use of the words "Xindu Guanshengyuan" and "Xindu Guanshengyuan Production" on its products, official websites and WeChat public accounts also constituted trademark infringement.
Therefore, a litigation request was filed with the court:
Order the defendant to stop infringing the exclusive right to use his registered trademark;
Stop using and canceling the www.xdgsy.com.cn of the website domain name;
Stop the unfair competition of using "Guanshengyuan" as the name of the enterprise, and change the name of the enterprise within a time limit;
Compensate for economic losses and reasonable expenses of 5 million yuan.
The defendant, Chengdu Xindu District Guanshengyuan Food Co., Ltd., argued:
First, it does not constitute trademark infringement. The defendant did not use Guanshengyuan as a trademark, and the products were marked with its own trademarks "New Crown" and "Jubilee Place". The "Guanshengyuan" on the outer packaging of the products produced is also different from the plaintiff's trademark. The conspicuous position on the outer packaging of the product is marked with its own trademark and manufacturer, and the strict obligation to inform is fulfilled, and the general public can distinguish the product brand and the producer, which is not easy to cause confusion. For the public, the letter "gsy" in the domain name of the defendant's official website does not have an inevitable correspondence with the "gsy" in the trademark of "Guanshengyuan".
Second, it does not constitute unfair competition. The origin of "Guanshengyuan" in the defendant's enterprise name is a joint venture with Chongqing Guanshengyuan, which has been used to this day and is not intended to be attached. The two trademarks under the defendant's name, "Xinguan" and "Jubilee Fang", have created a certain degree of popularity in Sichuan and even in the southwest region, of which the "Xinguan" trademark has been rated as a famous trademark in Chengdu, and in the case of smooth brand development, the defendant enterprise does not need to be famous.
In summary, I do not agree with all of the plaintiff's claims.
The main points of discussion in this case are:
1. Whether the defendant's act of registering "Guanshengyuan" as a business name as a business name and using it in a complete and standardized manner constitutes unfair competition against the plaintiff.
The court held that the defendant's acquisition of the "Guanshengyuan" brand name had its own historical origin and background of the times, the enterprise had a succession relationship with Xindu County Guanshengyuan Food Associate Factory, and its registration and use of the "Guanshengyuan" brand name was earlier than the time when Shanghai Guanshengyuan Company obtained the "Guanshengyuan" brand name, and also before the "Guanshengyuan" trademark was recognized as a well-known trademark and a Chinese time-honored brand. At the same time, it is not uncommon for a traditional time-honored brand to form a coexistence of multiple time-honored business entities under the same lineage due to historical reasons, in this case, each business entity is not malicious, and the right to form a brand name has its legitimacy. The defendant has been operating in the local area for many years, has a certain scale and production capacity, and if the enterprise name is used in a complete and standardized manner, it will not cause confusion and misidentification among the relevant public, so it will not constitute unfair competition.
2. Whether the defendant's use of the words "Guanshengyuan", "Xindu Guanshengyuan", "Produced by Xindu Guanshengyuan" and the registration and use of the "xdgsy.com.cn" domain name constituted an infringement of the plaintiff's exclusive right to use the registered trademark.
The court held that the defendant should have known that the plaintiff's "Guanshengyuan" trademark had a relatively high reputation, and that the guanshengyuan brand name, trademark and packaging should not be used after the end of the joint venture cooperation, and should be reasonably avoided in the use of the relevant logo. However, the defendant did not standardize the use of the enterprise name, and highlighted the words "Xindu Guanshengyuan" and "Xindu Guanshengyuan Production" on the product, official website, and WeChat public account as product recommendation. According to the defendant's evidence, its own trademark has a certain degree of popularity, but the popularity of the enterprise name itself is not involved, but from the perspective of the way it actually uses it, including the identification location of the product, its "New Capital Crown Garden" information is more prominent. Moreover, the "Guanshengyuan" part is presented in different fonts and different sizes, which is easier for the relevant public to focus on the three words of "Guanshengyuan", which is difficult to say that it is legitimate. In this case, "Guanshengyuan" was both the plaintiff's well-known trademark and China's time-honored brand name, as well as the name of the plaintiff and its affiliates, and the relevant public, in the case of general attention, could not distinguish whether the defendant's use method pointed to the enterprise name or the trademark, which was likely to cause the relevant public to confuse and misidentify the above logo with the plaintiff's trademark involved in the case, constituting trademark infringement. As for the defendant's registration and use of the "xdgsy.com.cn" domain name, because the pronunciation and meaning of the alphabet combination "xdgsy" are not unique, it is difficult to determine that there is a correspondence between it and "Guanshengyuan". Moreover, only one of the three trademarks involved in the case claimed by the plaintiff contains the word "g.s.y", and judging from the reading habits of Chinese consumers, the main identification part of the trademark is still the word "Guanshengyuan" Chinese. It is difficult to determine that "xdgsy" is identical or similar to the three trademarks involved in the case. Therefore, the act of registering the use of the domain name does not constitute trademark infringement.
In summary, the court determined the amount of compensation as appropriate in accordance with law after considering the popularity of the trademark in question, the nature of the infringing act carried out by the defendant, the degree of fault, the duration of the infringement and other infringing circumstances, and ordered the defendant to stop the trademark infringement and compensate the plaintiff for losses of 500,000 yuan. The judgment is now in force.
Judge's Commentary
"Guanshengyuan", as a well-known national brand and the representative of Chinese time-honored brands, inherits Chinese traditional culture, and is also the carrier of the history of the Chinese nation, with great cohesion and appeal, and the protection of Chinese time-honored brands is the proper meaning of intellectual property protection. However, in practice, it is not uncommon for a traditional long-established brand to form a coexistence of multiple long-established business entities under the same lineage due to historical reasons. In this case, each business entity does not have malicious intent, the right to form a trade name has its legitimacy, and the complete and standardized use of the enterprise name does not constitute unfair competition. At the same time, it is also necessary to take into account the balance of interests between the protection of the exclusive right to use a registered trademark and respect for the inheritance of Chinese time-honored brands. When the exclusive right to use the trademark of "Guanshengyuan" has been clearly enjoyed by one business entity, if other business entities consciously highlight the use of relevant words, it is obviously difficult to say that it is justified, which constitutes trademark infringement.
Compared with ordinary cases, this case is that it is necessary to give China time-honored brand strong legal protection, respect its historical heritage and background of the times, and balance the interests between the two. If the case is tried according to the traditional line of thinking of infringement cases, it is more difficult to defend that the use of the complete specification of the defendant's enterprise name does not constitute unfair competition. The defendant in this case obtained the "Guanshengyuan" brand name with its historical origin and era background, and subjectively did not imitate or attach malicious intent, if it can use its corporate name in a complete and standardized manner, it belongs to the category of fair use; and if it consciously highlights the use of relevant words, there is subjective malice, which constitutes trademark infringement. Trademark infringement and unfair dispute cases are often not black and white, and there are many factors to consider, the most important thing in this case is the characterization of the case, rather than the amount of compensation. Such judicial adjudication results provide a new way of thinking for the protection of Chinese time-honored brands, and have an exemplary guiding effect.
Judge Profile
Li Xia, female, Master of Laws, is currently a judge in the Intellectual Property Trial Division of the Shanghai Putuo District People's Court and a second-level judge.
He has won many honors such as Shanghai Civil Servant Commendation, Shanghai Court Commendation, and Putuo Court Case Handling Star. The cases presided over were selected as the top ten (non-criminal) cases of intellectual property protection of foreign commodity protection in China, the top ten typical cases of the Shanghai Intellectual Property Court, the top ten copyright typical cases of the Shanghai Municipal Copyright Bureau, the "four hundred" fine cases of the Shanghai court, the excellent judgment documents, and the demonstration trial.
Attached: Relevant legal provisions
I. Tort Liability Law of the People's Republic of China
Article 15 The main ways to bear tort liability are:
(1) Stop the infringement;
……
(6) Compensation for losses;
The above methods of bearing tort liability may be applied separately or in combination.
II. Anti-Unfair Competition Law of the People's Republic of China
Article 2: In their production and business activities, business operators shall follow the principles of voluntariness, equality, fairness, and good faith, and abide by laws and business ethics.
"Acts of unfair competition" as used in this Law refers to the conduct of business operators in their production and business activities in violating the provisions of this Law, disrupting the order of market competition, and harming the lawful rights and interests of other business operators or consumers.
"Business operators" as used in this Law refers to natural persons, legal persons and unincorporated organizations engaged in the production, operation or provision of services (hereinafter referred to as "goods include services").
Article 6: Business operators must not carry out the following acts of confusion, causing people to mistakenly believe that they are other people's goods or have specific links with others:
(2) Unauthorized use of other people's enterprise names (including abbreviations, trade names, and so forth), social organization names (including abbreviations, etc.), and names (including pen names, stage names, translated names, and so forth) that have a certain degree of influence;
Article 17: Where business operators violate the provisions of this Law and cause harm to others, they shall bear civil liability in accordance with law.
Where the lawful rights and interests of business operators are harmed by acts of unfair competition, they may file a lawsuit with the people's court.
The amount of compensation for a business operator who has been harmed by an act of unfair competition shall be determined on the basis of the actual losses he has suffered as a result of the infringement; where the actual losses are difficult to calculate, it shall be determined on the basis of the benefits obtained by the infringer as a result of the infringement. The amount of compensation shall also include the reasonable expenses paid by the business operator to stop the infringement.
Where a business operator violates the provisions of Articles 6 and 9 of this Law, and the actual losses suffered by the right holder as a result of the infringement or the benefits obtained by the infringer as a result of the infringement are difficult to determine, the people's court shall award the right holder compensation of not more than 3 million yuan on the basis of the circumstances of the infringement.
III. Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Civil Dispute Cases Involving Conflicts between Registered Trademarks, Enterprise Names and Prior Rights
Article 4 Where the name of the enterprise subject to litigation infringes the exclusive right to use a registered trademark or constitutes unfair competition, the people's court may, on the basis of the plaintiff's litigation claims and the specific circumstances of the case, determine that the defendant bears civil liability such as cessation of use and standardized use.
ARTICLE 144 of the Civil Procedure Law of the People's Republic of China: Where a defendant refuses to appear in court without a legitimate reason after being summoned by summons, or withdraws from court without the court's permission, he may make a judgment in absentia.