(By Luo Yanjie) Abstract: A trademark shall be distinctive and a rational use of the characters in a trademark does not constitute infringement. The 2013 version of the Trademark law clearly stipulates that where an identical or similar trademark has been used in connection with the same goods or similar goods by others before the registrant’s application, the exclusive right holder of said registered trademark shall have no right to prohibit other people from using the aforesaid trademark from continuous use of such trademark within the original scope, but may request its users to add proper marks for distinction.

Generally, the use of another’s registered trademark constitutes trademark infringement. However, in today’s post, we would like to introduce a special case within an opposite judgment contained by the court on the grounds of defendant’s prior use and some self reasons of the disputed trademark.

Introduction to the Case:

Plaintiff: Mianyang City BianZuiBa Soup Pot

Defendant: He Zhibi

Court of first instance: Nanchong Intermediate People’s Court  No.: （2011）南中法民初字第41号

Court of second instance: Sichuan Higher People’s Court  No.: （2012）川民终字第67号

In 2006, Mianyang City BianZuiBa Soup Pot applied for a combination trademark (the “disputed trademark”) in which the graph accounted for a large proportion and accompanied by three Chinese characters “扁嘴巴” (read as BianZuiBa and means duck-billed mouth ) numbered 3804689 under Class 43 for catering (food and drink) and restaurants. After approved by the Chinese Trademark Office (the “CTMO”), Mianyang City BianZuiBa Soup Hot has used the disputed trademark into the field of catering and restaurants. Defendant He Zhibi has operated a soup hot also named BianZuiBa Soup Pot in Tiexin Road, Nanchong City since January 2005. Mianyang BianZuiBa Soup Pot filed a lawsuit on the basis of trademark infringement, alleging that He Zhibi used its trademark in his soup hot without authorization and thus is constituted infringement to its interests of the disputed trademark.

   This case was heard by two courts, i.e., Nanchong Intermediate People’s Court and Sichuan Higher People’s Court, with the following judgments:

1. “扁嘴巴” (read BianZuiBa) refers to duck-billed animals in general, such as duck and Coscoroba coscorba. Therefore, characters “扁嘴巴” are standard language to interpret duck-billed animals.
2. Where business registration of defendant’s Nongchong BianZuiBa Soup Pot was earlier than that of the disputed trademark, defendant He Zhibi enjoyed the prior right of its enterprise name over “扁嘴巴”, which shall receive legal protection.

Lawyers’ Comment:

1.      A trademark shall be distinctive and a rational use of the words in a trademark does not constitute infringement.

“Distinctiveness” refers to a character that a trademark shall be distinguished from the source of another’s commodities or services. For example, pursuant to the Trademark law, marks that merely indicate the names, devices or model numbers that are generic to a class or group of commodities shall not be registered as trademarks.

   In the judgment of this case, the disputed trademark distinguishing from another’s marks was the graph, not the characters “扁嘴巴”. Moreover, characters “扁嘴巴” that are standard words to interpret the unique attribute of ducks shall not be protected as a trademark. Therefore, another’s use of those characters may not assume the liability of trademark infringement.

2.      The legal practice and legislation trends in the prior use right of trademark.

The prior use right of trademark means that one who has used a trademark that is identical with or similar to a registered trademark in respect of the identical or similar commodities before the registrant obtains trademark rights, could continue to use the trademark without the authorization which may be strictly restricted in the providing the identical or similar commodities and services. In our current Trademark law, there is no clear definition about the prior use right of trademark and moreover different courts adopts different attitudes towards this prior use right of trademark.

In the judgment of the courts, the attribute of intellectual property decides a possibility that a same object of intellectual property may exist in different subjects of right and thus are inevitable to reproduce confusion. On one hand, a registered trademark enjoys the exclusive right to use; On the other hand, one cannot exclude the legality of other rights. From the judgment of the two courts, we could likely to find out that the two courts are likely to approve the prior use right of trademark, which is consistent with the latest legislation trends. Because the 2013 version of the Trademark law that will take effective in May 2014 clearly stipulates, where an identical or similar trademark has been used in connection with the same goods or similar goods by others before the registrant’s application, the exclusive right holder of said registered trademark shall have no right to prohibit other people from using the aforesaid trademark from continuous use of such trademark within the original scope, but may request its users to add proper marks for distinction.

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