Two “Hai Bang Wang” Clashes! How Was the Final Verdict on Trademark Cross-Category Enforcement?
When choosing a commercial logo, an enterprise should reasonably avoid the trademarks of others, especially those with a certain reputation and influence. Behaviors such as “famous brands” and “free riding” may bring economic benefits in the short term, but the accompanying legal risks cannot be ignored.
Recently, the Fujian Provincial High People’s Court (hereinafter referred to as the Fujian High Court) made a final judgment in the case of trademark infringement and unfair competition dispute between Haibawang (Shantou) Food Co., Ltd. (hereinafter referred to as Haibawang Shantou Company) v. Haibawang Jinjiang Company. The court found that the No. 877824 “Haibawang” word and picture trademark (hereinafter referred to as the “Disputed Trademark”) owned by Haibawang Shantou Company had a high reputation and influence, and that the use of the “Haibawang” and “Haibawang” logos (hereinafter referred to as the “alleged infringing marks”) by a company in Jinjiang infringed the exclusive right to use the registered trademark in question, and its act of registering “Haibawang” as an enterprise trade name constituted unfair competition. Haibawang Jinjiang Company must stop the infringement and compensate Haibawang Shantou Company for economic losses totaling 300,000 yuan, rejected all the appeal requests of Haibawang Jinjiang Company, and upheld the first-instance judgment made by the Intermediate People’s Court of Quanzhou City, Fujian Province (hereinafter referred to as the “Quanzhou Intermediate People’s Court”).
Because the brand involved in the case has a high reputation in the industry, the case has attracted widespread attention.
The dispute over trademark names has made waves
Haibawang Shantou Company was established in 1994, mainly engaged in the production and sales of quick-frozen food. The company not only has opened exclusive stores and flagship stores on platforms such as JD.com, Tmall and Sam’s Club, but also set up many branches and sales departments in China. After years of operation, Haibawang Shantou Company has won many honorary titles such as “National Key Leading Enterprise of Agricultural Industrialization”.
“The ‘Haibawang’ series of trademarks, including the trademark involved in the case, condenses the company’s huge investment in human, material and financial resources, and has strong recognition and good reputation. In our investigation, we found that a company in Jinjiang not only registered and used the exact same corporate name as Haibawang Shantou Company, but also sold fish and chips, instant rice, instant noodles and other goods under this name, and the logo it used was highly similar to the ‘Haibawang’ series of trademarks held by us, which was suspected of constituting trademark infringement and unfair competition. Accordingly, we filed a lawsuit with the Quanzhou Intermediate People’s Court. Zheng Li, the agent of Haibawang Shantou Company, said in an interview with a reporter from China Intellectual Property News.
It is understood that a company in Jinjiang, Haibawang, was established on May 9, 2018, mainly engaged in food production and sales, and used the alleged infringing logo on fish and chips, instant noodles and other goods, and promoted it through a variety of channels.
In the first instance, a company in Jinjiang argued that the alleged infringing mark used by it was legally authorized to use goods such as instant noodles in Class 30, while the trademark involved in the case was approved for use in Class 29 fish food, canned meat and other goods, and the similar groups to which the two belonged were not the same, and the designated goods were not the same and were not similar, which would not cause confusion and misidentification among the relevant public; Haibawang Shantou Company has never used the disputed trademark on instant noodles, instant rice and other goods, and its trademark interests may not be damaged, and the compensation for infringement damages is not established; The company is registered in accordance with the law, and the use of the “Haibawang” brand name is legal and reasonable, and there is no unfair competition such as clinging to confusion.
The appeal was denied
In the first instance, the Quanzhou Intermediate People’s Court conducted a public trial on a number of key issues, such as whether the alleged trademark infringement and unfair competition of a company in Jinjiang, Haibawang, were established.
After the trial, the Quanzhou Intermediate People’s Court found that the trademark involved in the case had been widely known to the relevant public in China after the long-term promotion and use of Haibawang Shantou Company, and had a high reputation and influence, and the alleged infringing mark was similar to the visual effect of the trademark in question, constituting a similar trademark. Although a company in Jinjiang claimed that the logo it used was an authorized trademark, the relevant trademark had been declared invalid, and the alleged act of a company in Jinjiang constituted trademark infringement. In addition, the evidence on record can prove that Haibawang Shantou’s trade name “Haibawang” already had a certain market reputation before 2018, and was known to the relevant public, and the trade name met the condition of “having a certain influence” as stipulated in Article 6, Paragraph 2 of the Anti-Unfair Competition Law. The registration and use of the “Haibawang” brand name by a certain company in Jinjiang constitutes unfair competition against Haibawang Shantou Company.
A company in Jinjiang, Haibawang, was dissatisfied with the first-instance judgment and appealed to the Fujian High Court. The main grounds of appeal were: the evidence provided by Haibawang Shantou Company could not objectively and truly reflect the situation of Haibawang Shantou Company and its products, could not prove the popularity and influence of the trademark in question, and its use of the word “Haibawang” as the enterprise name was a legal and reasonable use; The sued conduct will not cause public confusion and misidentification, and a company in Jinjiang, Haibawang, should not be liable for compensation.
After the trial, the Fujian High People’s Court rejected all the appeal requests of a company in Jinjiang, Haibawang, and upheld the original judgment.
Regarding the second-instance verdict of the case, Zheng Li said: “The case finally determined that the sued act was established, which is of great significance to the parties and brand building, and demonstrates the clear attitude of the judicial system to encourage honest management and maintain brand value. ”
The reporter of this newspaper repeatedly contacted the lawyer representing a company in Jinjiang, but did not receive a response as of press time.
Strengthen the protection of intellectual property rights
What is the main basis for the court of second instance to uphold the judgment of first instance? In this regard, this reporter interviewed Chen Zhihui, the presiding judge of the second instance of the case.
Chen Zhihui said that the particularity of this case is that the plaintiff also has a registered trademark in the same class of the allegedly infringing product, but it does not use the same kind of trademark as the basis for claiming, but uses other types of trademarks as the basis for rights protection, and claims cross-class protection. There are different views in the industry on the handling of this type of case. After trial, the collegial panel held that the strict protection of trademarks with high visibility and influence should be reflected not only in the determination of trademark infringement, but also in the assumption of infringement liability. Although the trademark owner owns a registered trademark on goods that are identical or similar to the alleged infringing product, if the registered trademark is a defensive trademark and has not been actually used or is part of the non-main business of the right holder, and the registered trademark is not well-known, the right holder shall be allowed to claim rights with the registered trademark registered in other classes if the right holder makes a reasonable explanation.
“In this case, after registering trademark in china involved in the case, Haibawang Shantou Company promoted the ‘Haibawang’ series of food products through TV advertisements and other channels, and the sales scope was all over the provinces in China, which has been widely known to the relevant public in China. At the same time, in order to protect its trademark rights and interests, Haibawang Shantou Company actively defended its rights to the administrative departments and judicial authorities for malicious preemptive registration and trademark infringement. However, a company in Jinjiang of Haibawang clearly knew the popularity and influence of the trademark involved in the case, but still copied and imitated the trademark in question that had been registered by Haibawang Shantou Company on different or dissimilar goods, misleading the public, causing damage to the association between the trademark and the goods or services it originally represented, unreasonably occupying the business reputation of Haibawang Shantou Company’s trademark in question, and endangering the actual interests of Haibawang Shantou Company. On this basis, the court of first instance found that the alleged act constituted trademark infringement and unfair competition, and that it was not improper. Chen Zhihui said.
