Supreme People's Court Guiding Case No. 58: Chengdu Tongdefu Hechuan Peach Tablet Co., Ltd. v. Hechuan District, Chongqing Tongdefu Peach Tablet Co., Ltd. and Yu Xiaohua in a dispute over trademark infringement and unfair competition
Case Number: (2013) Yuyi Zhongfa Min Chu Zi No. 00273
"Basic Facts of the Case"
The plaintiff (counterclaim defendant) Chengdu Tongdefu Hechuan Peach Tablet Food Co., Ltd. (hereinafter referred to as Chengdu Tongdefu Company) sued the court, claiming that Chengdu Tongdefu Company was the trademark owner of "Tongdefu TONGDEFU and Tu", and that Yu Xiaohua had successively established individual industrial and commercial households and Chongqing Hechuan District Tongdefu Peach Tablet Co., Ltd. (hereinafter referred to as Chongqing Tongdefu Company), prominently used "Tongdefu" in its brand name and the outer packaging of the peach tablets produced, infringing the plaintiff's enjoyment of "Tongdefu TONGDEFU and figure" The exclusive right to use a registered trademark shall constitute unfair competition. The court was requested to order Chongqing Tongdefu Company and Yu Xiaohua to stop using and cancel the enterprise name containing the name of "Tongdefu"; stop the infringement of the plaintiff's exclusive right to use the trademark; publish a newspaper to apologize, eliminate the impact, and compensate the plaintiff for economic and goodwill losses of 500,000 yuan and reasonable expenses of 5066.4 yuan.
The defendant (counterclaim plaintiff) Chongqing, Tongdefu Company and Yu Xiaohua jointly defended and counterclaimed that chongqing Tongdefu Company's predecessor was Tongdefu Zhai Shop, which was founded in 1898, and although The Tongdefu Zhai Shop stopped production due to public-private partnership, it did not interrupt the transmission of unique skills from generation to generation. Yu Xiaohua, the fourth generation of "Tongdefu", inherited the ancestral business and successively registered individual industrial and commercial households and companies, standardizing the use of their enterprise names and brand names, and the registration behavior of Chongqing Tongdefu Company and Yu Xiaohua was bona fide and did not constitute infringement. Chengdu Tongdefu Company does not have a direct historical relationship with the long-established "Tongdefu", but its promotion of associating the "Tongdefu" trademark with the long-established "Tongdefu" is false propaganda. Moreover, Chengdu Tongdefu Company's unauthorized use of the well-known product name of "Tongdefu" constitutes unfair competition. The court was requested to order Chengdu Tongdefu Company to stop false publicity, publish it in a national newspaper to eliminate the impact, and stop infringing on the unique names of well-known "Tongdefu" goods.
After trial, the court found that the TongdeFu Zhai Shop, which was opened in 1898, was successively operated by Yu Hongchun, Yu Fuguang and Yu Yongzuo from 1916 to 1956. Between the 1920s and the 1950s, the "ThongDefu" firm enjoyed a high profile. In 1956, due to a public-private partnership, Tongdefu Zhai Shop ceased to operate. In 1998, The Wenjiang Branch of Hechuan Peach Tablet Factory was approved to register the trademark No. 1215206 "Tongdefu TONGDEFU and Tu", which was approved for use in Class 30, namely pastries, peach slices (pastries), cocoa products, and artificial coffee. On November 7, 2000, the name of the registrant of the aforementioned trademark was approved to be changed to Chengdu Tongdefu Company. Chengdu Tongdefu Company's various product packaging uses the words "time-honored brand" and "century-old brand", "'Tongdefu Brand' peach tablets Introduction:'Tongdefu Brand' peach tablets were created in the Qianlong period of the Qing Dynasty (or 1840) and have a long history and culture". The "Company Profile" page of the website of Chengdu Tongdefu Company uses the history of Tongdefu Zhaipu in the "Selected Literature and History of Hechuan Literature and History (Series II)" for the promotion of its "Tongdefu" brand Hechuan peach tablets. On January 4, 2002, Yu Xiaohua, the son of Yu Yongzuo, registered as an individual industrial and commercial household, with the name of Hechuan City's long-established Tongdefu Peach Tablet Factory, and the business scope is peach slices and small foods produced and sold by themselves. In 2007, its name was changed to Tongdefu Peach Tablet Factory in Hechuan District, Chongqing, and was later cancelled. On May 6, 2011, Chongqing Tongdefu Company was established, the legal representative is Yu Xiaohua, the business scope is the production of pastries (baked cakes, cooked flour pastries), the company is the registered trademark exclusive right holder of the registered trademark No. 6626473 "Yu Fuguang 1898" graphic trademark and the 7587928 "Yu Xiaohua" graphic trademark. Chongqing Tongdefu Company's various product packaging uses "time-honored [Tongdefu] business name, founded in the Qing Guangxu 23 years (1898) has a long history" and other content to introduce the history and awards of Tongdefu Zhaipu, some products in the paragraph after the text noted "the above text content is excerpted from the "Hechuan County Chronicle"; "[Tongdefu] Ode: Tongdefu, in Hechuan, well-known, open for a hundred years, make peach pieces, four generations, high quality, low price, honesty, no deception, buying and selling, enthusiastic talk"; "Hechuan peach tablets"" Chongqing Hechuan District Tongdefu Peach Tablets Co., Ltd." and other words.
"Judgment Result"
On July 3, 2013, the Chongqing No. 1 Intermediate People's Court rendered the (2013) Yuyi Zhongfa Min Chu Zi No. 00273 Civil Judgment: 1. Chengdu Tongdefu Company immediately stopped the false publicity involved in the case. 2. Chengdu Tongdefu Company shall publish a statement on its website for five consecutive days on the effective date of this judgment to eliminate the impact of its false publicity. 3. Reject all litigation claims of Chengdu Tongdefu Company. 4. Other counterclaims of Chongqing Tongdefu Company and Yu Xiaohua were rejected. After the first-instance judgment was pronounced, Chengdu Tongdefu Company was not satisfied and filed an appeal. On December 17, 2013, the Chongqing Municipal Higher People's Court rendered the (2013) Yugao Fa Min Zhong Zi No. 00292 Civil Judgment: the appeal was rejected and the original judgment was upheld.
"Court View"
The effective judgment of the court held that the individual industrial and commercial households Yu Xiaohua and Chongqing Tongdefu Company and Chengdu Tongdefu Company have similar business scope and have a competitive relationship; the three words "Tongdefu" contained in their trade names are the same as the text part of the registered trademark of "Tongdefu TONGDEFU and Figure" of Chengdu Tongdefu Company, which is similar to the trademark. The key to whether the act of registering a brand name constitutes unfair competition lies in whether the act violates the principle of good faith. The evidence of Chengdu Tongdefu Company is not enough to prove that the trademark "Tongdefu TONGDEFU and Figure" has become quite well-known, and even if others register "Tongdefu" as a trade name and standardize its use, it will not cause the relevant public to misunderstand, so it cannot be explained that Yu Xiaohua's registration of the individual industrial and commercial household name as "Tongdefu" has the bad faith of "free riding". Moreover, between the 1920s and the 1950s, the "Tongdefu" firm enjoyed a high reputation. TongdeFuZhai Shop has been operated by Yu Hongchun, Yu Fuguang and Yu Yongzuo for three generations, especially during the operation period of Yu Fuguang, the peach slices produced by Tongdefu Zhai Shop have won more honors. Yu Xiaohua is the grandson of Yu Fuguang and the son of Yu Yongzuo, and based on the popularity of the business name of Tongdefu Zhaipu and its immediate family relationship with the operator of Tongdefu Zhaipu, it is reasonable to register the individual industrial and commercial household name as "Tongdefu". Yu Xiaohua's act of registering the name of an individual industrial and commercial household was bona fide, did not violate the principle of good faith, and did not constitute unfair competition. Based on the continuity of operation, its act of changing the name of an individual industrial and commercial household and the act of registering the company name of Chongqing Tongdefu Company did not constitute unfair competition.
From the perspective of the outer packaging of Chongqing Tongdefu Company's products, Chongqing Tongdefu Company uses the full name of the enterprise, marked at the bottom of the front of the outer packaging, and the three words "Tongdefu" are located in the full name of the enterprise, which is consistent with the whole, and is not used separately in the form of abbreviation and so on, nor does it take any changes to highlight, and the overall text size, glyph, color are not prominent compared with other parts. Therefore, the act of Chongqing Tongdefu Company marking the enterprise name on the outer packaging of the product is a standardized use, which does not constitute a prominent use of the brand name, nor does it constitute trademark infringement.
As far as chongqing Tongdefu Company's behavior of labeling "TongdeFusong" is concerned, the four characters of "Tongdefusong" are slightly larger relative to their specific content (36-character oil poems), but visually form a whole. Its specific content is based on a similar text recorded in the historical records of Tongdefu Zhai shop once used on the outer packaging of goods, which is intended to show the history and business philosophy of the "Tongdefu" business name, not to highlight the three words of "Tongdefu". And Chongqing Tongdefu Company's product packaging uses a number of commercial logos, of which the "Hechuan Peach Tablets" collective trademark is particularly prominent, its own trademarks are also more obvious, and at the same time marked with the "Hechuan Peach Tablets" geographical indications and Chongqing Intangible Cultural Heritage, relative to these signs, "Tongdefusong" and its specific content only belongs to ordinary descriptive text, obviously does not have the form of commercial logos, nor is it prominent enough to be eye-catching, objectively it is not easy to make consumers misunderstand the source of goods, nor does it have the function of replacing trademarks. Therefore, Chongqing Tongdefu Company's act of labeling "Tongdefusong" is not a "prominent use" in the sense of trademark infringement and does not constitute trademark infringement. The history and honor of some of the "Tongdefu Brand" peach tablets published on the website of Chengdu Tongdefu Company are consistent with the history and honor of The Tongdefu Zhai Shop recorded in the historical records, and the historical sources are marked on its website, but there is no evidence to prove what kind of connection exists between it and the Tongdefu Zhai Shop. In addition, Chengdu Tongdefu Company also marked the outer packaging of its products as "century-old brand", "time-honored brand", "founded in the Qianlong period of the Qing Dynasty", etc., and its "Tongdefu TONGDEFU and Figure" trademark was approved for registration in 1998, and Chengdu Tongdefu Company did not provide evidence to prove the basis for its above-mentioned labeling behavior. The above-mentioned acts of Chengdu and Defu Company are inconsistent with the facts, which is easy for consumers to misunderstand the origin and history of its brand and its relationship with Defu Zhaipu, thereby gaining an advantage in competition, constituting false publicity, and should bear the corresponding civil liability for stopping infringement and eliminating the impact.
"Judicial Gist"
1. Where an individual or enterprise that has no historical origin with the "time-honored brand" registers the "time-honored brand" or a similar brand name as a trademark, and carries out publicity based on the history of the "time-honored brand", it shall be deemed to be false publicity and constitute unfair competition.
2. Where an individual or enterprise with a historical relationship with a "long-established brand" registers the "old-fashioned brand" as an individual industrial and commercial household name or enterprise name without violating the principle of good faith, and fails to cause people to misunderstand and does not prominently use the name, it shall not constitute unfair competition or infringe the exclusive right to use the registered trademark.
In practice, more and more enterprises are keen on the traffic and attraction brought by "long-established brands" and try to register them as trademarks to obtain legal exclusive protection. However, the judgment in this case is a wake-up call for us: even if we have completed the whole process of trademark registration and obtained the exclusive right to use some "old-fashioned" trademarks, we still need to be "careful in words and deeds". Deliberately attaching to a "long-established brand" that has no historical origin and false publicity to the market may face the risk of infringement and unfair competition litigation.