(By Luo Yanjie) Abstract: Marks that only bear the generic names, devices, or model numbers of the goods shall not be registered as trademarks. This restriction was just limited the generic names of the same goods. Trademark right is a unified national right all over the China and shall be under equal protection. In practice, for an act of an enterprise name infringing a registered trademark, the court may make a comprehensive judgment of different kinds of infringement liabilities.
With regard to some well-known brands, an act of using another’s well-known brand as an enterprise name is a typical infringement manner, which annoys the right holder. In today’s post, we’d like to introduce and share a typical case that the infringing party was finally convicted of infringement by the courts and ordered to stop using its enterprise name for the following.
Introduction to the Case:
Appellate (Plaintiff in the first instance): Beijing Paris Spring Photography Company
Appellee (Defendant in the first instance): Li Jiping
Court of First Instance: Jiaozuo City Intermediate People’s Court No: (2013)焦民三初字第1号
Court of Second Instance: Henan Province Higher People’s Court No.: (2013)豫法知民终字第121号
Beijing Paris Spring Photography Company, establishing in September 2000, applied for a number 1789975 combination trademark of Chinese Characters “巴黎春天”, English Letters “PARIS SPRING” and its pattern (the “disputed trademark”) on June 14 2002. The disputed trademark was approved with number 4857435 by the Trademark Office on July 21, 2009. Li Jipi owned a wedding studio named Boai County Paris Spring Photography, which established on October 27 2006 and registered “Boai County Paris Spring Photography” as its enterprise name in the Boai County industrial and commercial administration. On its threshold, there are Chinese Characters “巴黎春天婚纱摄影”, the same to the disputed trademark. After finding this, Beijing Paris Spring Photography Company brought Li Jiping to the courts on the grounds of infringement.
Jiaozuo City Intermediate People’s Court of the first instance heard the case and held that four Chinese characters “巴黎春天” are a combination of general vocabulary with a low distinctiveness. Furthermore, Beijing Paris Spring Photography Company had a different service area from that of Li Jiping and there is no intersection relationship in consumers. Therefore, the court of first instance decided Li Jiping not to infringe the disputed trademark. Dissatisfied with the judgment contained by the Jiaozuo City Intermediate People’s Court, Beijing Paris Spring Photography Company appealed to Henan Province Higher People’s Court.
Henan Province Higher People’s Court held that:
First, the disputed trademark was a combination trademark comprising of an abstract pattern, English Letters “PARIS SPRING” and Chinese characters “巴黎春天” . In the whole disputed trademark, Chinese characters “巴黎春天”, the literal part, were the major part of consumers’ recognitions on its photography name and services Therefore, Li Jiping’s apparent use of Chinese characters “巴黎春天” constituted the infringement of the disputed trademark.
Second, Li Jiping’s registration of “巴黎春天” as its enterprise name confused the consumers, thus constituting unfair competition.
Finally, Henan Province Higher People’s Court ordered Li Jiping to stop use the disputed trademark of Beijing Paris Spring Photography and the enterprise name “巴黎春天”.
1. The standard of trademark infringement
In this case, the reason why the court of first instance decided the defendant to be non-infringement relied on that firstly “巴黎春天” is a generic name and secondly the two different service areas between Beijing Paris Spring Photography Company and Li Jiping’s makes no intersection relationship of consumers. In our opinion, these two reasons may be failed legally.
Firstly, pursuant to Article 11 of the Trademark Law that “Marks that only bear the generic names, devices, or model numbers of the goods shall not be registered as trademarks,” this restriction only be used in “generic names” of this goods. As for wedding photography, “巴黎春天” obviously was not a generic name of photography. Then trademarks are a unified national right in China and shall be under equal protection even though the different service area of the right holder and the defendant hereof decided the consumers without intersection relationship. The act of the defendant also brought damages to the right holder of the disputed trademark, i.e., consumers will make a confusion of the two companies because of the two same named companies since Beijing Paris Spring Photography Company entered into the Boai County where Li Jiping’s company is located.
Therefore, because there may be a false in the original judgment of the court, we are in favor of the judgment of the second instance court.
2. The liability of an enterprise name infringing a registered trademark
For a general infringing act, stopping infringement would be an important content to undertake liability. Because the right of an enterprise name and the right of trademark are two independent rights, it is only in certain circumstances that there shall be an infringement. With regard to how to undertake infringement liability under these circumstances, there are no clear stipulations and provisions. The only legal basis is the Article 4 of Provisions of the People’s Supreme Court on Several Issues Concerning the Trial of Civil Disputes Cases Involving Confliction between Registered Trademarks or Enterprise Names with Prior Rights, i.e., in the event an accused enterprise name infringes the exclusive right to use a registered trademark or constitutes unfair competition, the people’s courts may, based on the claims of the plaintiff and the circumstances of the case, determine that the defendant shall bear civil liability such as stopping and standardizing the use of the name.
In practice, for an act of an enterprise name infringing a registered trademark, the court may make a comprehensive judgment of different kinds of infringement liabilities. The general standards are that: where one registered another’s well-known trademark as its enterprise name with improper means, such registration itself may constitute invalidity and the courts may order the registrant to stop the use of its enterprise name. On the contrary, if the infringing party apparently uses some parts of its enterprise name, the courts may order the infringing party to use that specification. However, in this case, the court judged the defendant to stop the use of its enterprise name on the grounds of the highly awareness of “巴黎春天” .