Does Using a Trademark with Common Meaning Constitute Trademark Infringement in China?

jigonghoubao(By Luo Yanjie) According to Chinese legislation, a mark which has a common meaning in normal ways may be registered as a trademark where it has acquired distinctiveness through use and is readily distinguishable. If being registered, the mark with a common meaning would be protected under the Trademark Law. However, in practice, a competitor may use the trademark against the exclusive right holder, with a defense that the trademark has common meaning. Today, we will introduce a successful case where the court is in favor of the exclusive right holder of the trademark.

Introduction to the Case:

Plaintiff: Guangdong Jigong Healthy Food Co., Ltd (the “Jigong Food”)

DefendantShanghai Hongsenlin Food Company (the “Company HSL”)

Court of first instance: Yangpu District Primiary People’s Court  No.: (2011)杨民三(知)初字第10号

Court of second instance: None

    Jigong Food holds the exclusive right of “喉宝” (reads “Houbao” in Chinese) trademark (the “disputed trademark”) numbered 1753200 under Class 29 for jams, fruit pulp, peanut butter, plum and crystallized fruits. In the end of 2010, salesman of Jigong Food found out that the Company HSL produced and sold a food named “佛山喉宝” (the “disputed food”) in the market, using the similar trademark to that of Jigong Food. But the Company HSL argued that the disputed food used the common meaning of the disputed sign, for which has a remarkable effect on sore throats. Besides, the disputed food has marked its company logo on the conspicuous place and the use of the disputed sign in its food attempted to express its product functionality. For these reasons, the Company HSL held that it constituted non-infringement

Yangpu District Primary People’s Court accepted the case and made the following judgment:

  1. Despite that the disputed sign has the meaning of “functionality on sore throat”, it is not necessarily lead the public into thinking that the disputed sign and the crystallized fruits are associated without each other. In other words, when referring to the disputed sign, relevant public won’t remind of the crystallized fruits which have functionality on sore throats.
  2. Under the evidence that the Company HSL used the disputed sign with larger fonts at the outside and inner package, these behaviors have exceeded a reasonable level.

Therefore, the court decided that the defendant constituted trademark infringement and thus shall assume liability of compensation.

Lawyer’s Comment:

1.   Why can a sign having common meanings be registered as a trademark?

Article 11 of the Trademark Law stipulates that: the following signs shall not be registered as trademarks: (1). Names, devices, or model numbers that are generic to a class or group of goods; (2). Marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods on which the marks are used; (3). Marks that lack distinctive characteristics.

In this case, even though the court held that the disputed trademark has some common meaning of functionality on sore throat, the common meaning does not have the functionality for what it applied. For this reason, the Chinese Trademark Office affirmed the disputed sign to be capable of constituting a trademark with the character of distinctiveness in accordance with their regulations.

2. The irrational use of the trademark having common meaning also constitutes trademark infringement.

In this case, under the literal understanding that the disputed sign has common meaning on throat functionality, the court also held that the disputed sign is not necessarily relevant to the disputed food. In other words, when referring to the use of the dispute trademark, the public won’t make an association between the disputed food and the disputed trademark and thus are likely lead the public into thinking of the disputed trademark.

Then, with the evidences that the defendant used the disputed sign with larger fonts at the outside and inner package, the court decided that such behaviors have exceeded the rational level of product description. In other words, the use of this disputed sign is closer to the disputed trademark, not an objective description. Therefore, it is correct that the behaviors of the defendant constituted trademark infringement by virtue of non-fair use.

 Lawyer Contacts

You Yunting86-21-52134918

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