"The obligee of a registered trademark sued another registered trademark holder. The former believes that the latter whose acts to use the trademark violates the exclusive rights of his trademark, while the latter defending himself is legitimately using his own registered trademark. How will the Court judge? "
Wherever there are rules to follow, and sharing regularities and opinions, there will be society bypassing mire towards civilization! By Legal Department of Asia Smart
Brief introduction of the Case
What we introduced today is such a case:
A daily cosmetics selling department in the city Heze restocked a batch of mosquito-repellent incense to sell. This batch of products use the trademark of "Er Dian Zheng" on wrappings. "Er Dian Zheng" is a factory’s registered trademark of this batch of mosquito-repellent incense manufacturer in Hebei.
However, this daily cosmetics selling department in Heze is sued to court by Zhejiang Zhengdian Industrial Co. Ltd. for violating the exclusive rights of the registered trademark "Zhengdian".
Zhejiang Zhengdian Industrial Co. Ltd
▼
Zhengdian mosquito-repellent incense produced by Zhengdian industrial company
▼
This case also has been reviewed by Supreme People's Court. However, the final result still requires the daily cosmetics selling department to undertake the tort liability.
It seems to be unfair!
There are three points that needs to be particularly paid attention from learning about this case.
1. "Er Dian Zheng" is a registered trademark. When the daily cosmetics selling department restocked the incense, they also inspected whether the incense has related trademark registration certificate, which indicates that they done the required duty.
But why does the first instance, second instance and the retrial be sentenced him to bear tort liability?
We explain a law clause that is about the principle of the Supreme People’s Court resolving rights conflicts between registered trademarks:
The Article 2 of Provisions of the Supreme People's Court Concerning Several Civil Issues on Disputes between Registered Trademarks, Corporate Names and Prior Rights stipulates that if a plaintiff fills suit on behalf of another registered trademark used on approved commodities or similar to his prior registered trademark, the People’s Court shall inform the plaintiff for settlement to relevant administrative authorities pursuant to the paragraph 3 Article 111 of Civil Procedure Law.
However, if the plaintiff fills a suit because his registered trademark is used beyond the approved commodities or through changing, splitting and combining distinctive features etc. by others, which is the same with or similar to his registered trademark, the People's Court shall accept the lawsuit.
In other words, if commercial signs involved in the infringement have been registered without changing the usage mode, generally the Court should require the plaintiff to file "invalidation of trademark registration" procedure with China Trademark Review Committee to resolve the problem.
However, this case is clearly dealt based on the provisions of "proviso" (note 2) in this clause.
Therefore, learning this case, we understand "the use of trademark is one of the key points", so that we can obtain practical guidance through the cases.
2. The daily cosmetics selling department in Heze is only a seller, not the manufacturer. Why is the department still convicted infringement even though they provide trademark registration certificate, manufacturer license, manufacturer proof etc.?
There is also legal knowledge that according to the law, if the seller proves infringement product to have legal source, he only needs to stop selling instead of undertaking compensation.
Clearly, there is insufficient evidence for vendors in this case.
Therefore, it is necessary to understand how did vendors prove it in this case, which is the second aspect we learn from this case.
Then if vendors encounter similar situations in the future, they can learn from this case to fulfill their burden of proof.
The Article 2 of Provisions of the Supreme People's Court Concerning Several Civil Issues on Disputes between Registered Trademarks, Corporate Names and Prior Rights stipulates that if a plaintiff fills suit on behalf of another registered trademark used on approved commodities or similar to his prior registered trademark, the People’s Court shall inform the plaintiff for settlement to relevant administrative authorities pursuant to the paragraph 3 Article 111 of Civil Procedure Law.
However, if the plaintiff fills a suit because his registered trademark is used beyond the approved commodities or through changing, splitting and combining distinctive features etc. by others, which is the same with or similar to his registered trademark, the People's Court shall accept the lawsuit.
3. Besides, we also noticed that when the daily cosmetics selling department in Heze applied for retrial, they also proposed that there is a trademark labeled "癞娃" on the product.
In other words, they obviously want to advocate there is other registered trademark on the product to distinguish its origin. Therefore, the infringing product coexists with goods from Zhengdian company in the market, which won’t cause confusion and misunderstanding among consumers.
However, this has not been supported by the Court. This is the third aspect that we need to understand, which is why can’t the infringing products that include other registered trademarks are regarded as legitimate defense?
The Court’s Opinions
Now we are unveiling the riddle. What caused the daily cosmetics selling department in Heze with legitimate defense still to bear the infringement liability?
Regarding the first point, the daily cosmetics selling department in Heze defensed "Er Dian Zheng" is a registered trademark, which should not be heard by the People's Court. But how does the Court judge this?
After hearing, the Court found:
The registered logo of the registered trademark "Er Dian Zheng" in China Trademark Office shows that the three characters of "Er Dian Zheng" are the same in font, and there is not black edge in two characters of "Dian Zheng".
However, the actual use of infringing product in its wrapping box is that there are characters "Dian Zheng" marked in prominently positions of front box, and the font of "Dian Zheng" is similar to that of "Zheng Dian" trademark, with the emphasis of black edge.
Although a character "Er" is used next to "Dian Zheng", the font of "Er" is not the same with "Dian Zheng" that have black edge, and the font is obviously smaller and similar to the background color with low identification, which is easy to make the relevant public misunderstand the origin of the product.
Thus, the trademark use of infringement goods falls into the scope of protecting involved trademark rights. The manufacturer is the one who exclusively owns the registered trademark right of "Er Dian Zheng", which does not affect trademark infringement judgment in this case.
Therefore, according to the law behind the Article 2 ("proviso") of Provisions of the Supreme People's Court Concerning Several Civil Issues on Disputes between Registered Trademarks, Corporate Names and Prior Rights, the Court shall accept this trademark infringement case.
Regarding the second point why the vendors provide insufficient evidence to not prove that the infringing goods have legal origin, according to provisions of Article 79 of Trademark Law of PRC, the following circumstances shall be stipulated in Article 60 of Trademark Law that prove this commodity is lawfully acquired:
(1) The list of goods supplied by the supplier with legal signature and receipt of payment shall be verified or confirmed by the supplier;
(2) The purchase contract signed by the supplier and the retailer and verified;
(3) The lawful purchase invoice and the recorded items in the invoice that are corresponding to the relevant commodities;
(4) Other circumstances which may prove lawful access to the involved goods.
The Court believes that in this case the daily cosmetics selling department in Heze although submitted the related business license, trademark registration certificate, manufacturers certificate etc. of infringing commodity manufacturers, they did not provide relevant evidence such as sale contract or purchase list to support themselves. Therefore, the daily cosmetics selling department in Heze hasn’t completed the burden of proof that the infringing goods are legally obtained. Therefore, the legal source defense of the daily cosmetics selling department cannot be standing.
Regarding the third point, whether the other legal registered trademarks on infringing products can be used as the legal defense that the commodity sources won’t mislead the public.
The Courts believe that although there are other designs manufacturers units addresses and trademarks of "leper" on infringing commodities in cases where they are sued do not affect public judgment about confusion or mistaken ideas about commodities sources.
Asia Smart’s Suggestion
Sharing and learning this case is expected to give operators the following two suggestions:
1. As for trademark obligee, even if trademark is successfully registered, in actual business, the actual use of trademark logo better should be consistent with registered logo.
It is necessary to avoid changing prominent aspects or splitting them up in use. Because if it is used improperly, it still may face trademark infringement lawsuit.
2. As for sellers, when restock the goods, you should pay attention to examining if the trademark sample on registration certificate is the same with trademark sample in wrappings.
Besides, we must keep valid evidence of restocking goods to avoid legal risk of trademark infringement. If the evidence is insufficient, it still leads to undertake the liability that can be avoidable.
Remarks:
Note 1 Interpretation for Case Source: People's Republic of China Supreme Court (2019) Supreme Court of Law and Public Claims, No. 6262.
Note 2 Proviso: a particular sentence structure in legal provisions which is a text of turning, exception, restriction, supplement or additional condition on previous provisions.
上一篇：Why can registered trademark not prohibit others from using similar trademarks in catering industry? 下一篇：If the trademark application case of MG mask is also lost in the second instance, what problems may be faced?2020-09-21
2020-09-21
2020-09-21
2020-09-21
2020-09-21
