How to judge trademark infringement in practice -- Interpret the relevant points in combination with the thinking of judgment

In life, is it possible to buy Kang Shuaifu, Kang Master, Yunkang pot, Wang Zi milk, whether it is “Cha Cha” melon seeds or “Zhi Zhi” melon seeds, “Diao” brand washing powder or “Zhou Ju” brand washing powder? Are you stupid and confused?

In addition to name confusion, do you encounter “copycat” products in your life? Will wonder whether it is “parallel goods”, “refurbished machine”? I will also wonder why some daigou are cheaper than the official website, and will question the products with the same packaging, which will not be fake? Are they trademark infringers? So if the fake goods can be seen at a glance, is it still a trademark infringement?

This is not only our daily consumers to consider the problem, but also the legal people to think about the problem, it is also closely related to the brand, store operators.

Further observing the behavior of trademark infringers, we will find that some infringers even intentionally register similar trademarks and publicize them. For example, the above “Zhou live” logo has been applied for trademark registration many times, and has been invalid many times, in addition to 03 types of daily chemical supplies, there are still some trademarks are valid.

In fact, in dealing with intellectual property cases involving trademark infringement, the first thing to deal with is to judge whether the trademark used by others constitutes infringement to the right holder. How to judge trademark infringement and whether there is a corresponding comparison and trial standards, the author analyzes relevant legal issues according to his own experience in the field of intellectual property rights for more than 7 years and combined with the court's judgment ideas, trial points, and specific cases.

The main points of judging whether the trademark constitutes infringement

Similar trademark infringement is only one part of trademark infringement. In practice, trademark infringement includes: the use of the “same” trademark in the same or similar goods constitutes infringement, the use of the “similar” trademark causes confusion, the sale of the trademark infringement goods, the forging of the trademark logo, reverse counterfeiting and helping others to commit trademark infringement. In the process of selling goods or providing services, the brand has encountered more infringement cases of the above three items. In short, when a suspected infringement is found, the following steps can be used to determine whether it constitutes trademark infringement.

Point 1: Determine whether the trademark is a trademark use rather than a fair use.

Generally speaking, the trademark is used on goods, packaging or containers of goods; For commodity trading contracts and other transaction documents; For online and offline flat or three-dimensional audiovisual media advertising; For exhibition or other commercial activities, etc., are trademark use. Fair use, also known as fair use, usually includes reasonable descriptive, indicative, illustrative use, etc. For example, when selling goods made of millet as raw materials, marking the raw materials of “millet” in a reasonable and good-faith way does not constitute infringement of the “millet” brand, but if the limit of fair use is exceeded, the relevant public will associate the two. May constitute trademark infringement.

Point two: Determine whether it is used in the same or similar goods or services.

Similar goods refer to the goods that are the same in function, use, production department, sales channel, consumption object, etc., or are easy to cause the relevant public to relate to or confuse; similar services refer to the services that are the same in purpose, content, method, object, etc., or are easy to cause the relevant public to have specific connection or confusion. Based on the Nice classification, the “Similar Goods and Services Segmentation Table” classifies currently available goods and services into 45 categories, which can be used as a reference for whether they are similar goods or services, but the specific criterion should still be whether there is confusion among the relevant public. It should be noted that if the trademark is not the same or similar but the trademark is used the same or similar, the well-known trademark can confirm whether the infringing goods belong to the scope of cross-class protection according to the case to determine whether it constitutes infringement.

Point 3: Determine whether the infringer is using the same trademark or a similar trademark.

1. If it is the same trademark, it is necessary to verify whether the source of its goods is the brand party, and this source does not include the goods processed by the “original factory” in excess of the authorized amount. Although according to the rules of evidence, the negative fact that “the goods do not come from the brand” should not be proved by the plaintiff, in practice, in order to avoid lawsuits by the right holder or fight against cross-selling and parallel import through litigation, the court will require the brand to identify the authenticity of the goods in most cases to determine that the goods sold by the infringer are fake. The aforementioned purchasing", "parallel goods", "refurbishment" and so on are also judged according to this method, that is, those outside the scope of trademark authorization and from non-brand parties are infringing goods, but in practice, specific analysis and confirmation are needed according to the specific case. For example, in some cases of "refurbished machines", due to the exhaustion of trademark rights after the goods are legally placed on the market, some courts believe that when the seller makes a clear statement that its goods belong to "refurbished machines", it is not a trademark infringement.

2. If it is an approximate logo, it is necessary to carry out trademark comparison to determine whether it causes confusion. Before conducting trademark comparison, it is recommended to check whether the trademark used by the suspected infringer is already registered. If the trademark has been registered by another person, in accordance with the Provisions of the Supreme People's Court on Several Issues concerning the Trial of Civil Disputes involving Conflicts of Registered Trademarks, enterprise names and prior Rights (2020 Amendment) (hereinafter referred to as the Trademark Conflict Provisions), it shall apply to the relevant administrative authority for settlement, except for the use of deformed. If the trademark used by the suspected infringer is an unregistered trademark, further trademark comparison is required.

How to determine whether the approximate mark constitutes infringement

Judging whether the approximate mark constitutes infringement should be based on whether the relevant public (especially from the perspective of general consumers) will cause confusion as the basic principle, that is, "the general attention of the relevant public is the standard". There are many judgment methods and standards in trademark comparison, but no matter what method is adopted, it should be returned to the basic principle of whether the relevant public misidentifies the source of the goods (or services), associates with the goods or services of the brand, and ultimately leads to the confusion of the relevant public.

1. Trademark comparison method

Whether the specific comparison of trademarks constitutes an approximation needs to be compared as a whole, compared with major parts, and compared in isolation. The Interpretation of the Supreme People's Court on Several Issues relating to the Application of Law in the Trial of Trademark Civil Dispute Cases and other relevant regulations have made relevant interpretations, and to determine that trademarks are identical or similar, it is necessary to consider the general attention of the relevant public, and to compare the whole trademark with the main part of the trademark, it is necessary to compare in an isolated state. At the same time, consideration should be given to the distinctiveness and popularity of the registered trademark.

(1) Overall comparison of trademarks

When comparing the trademark as a whole, it is necessary to consider the composition of the trademark, whether the trademark belongs to the graphic trademark, word trademark or graphic trademark (three-dimensional trademark and sound trademark are not detailed because they are more special), and to determine whether the trademark is similar by comparing the component elements, shape, structure and arrangement of the trademark as a whole. For example, whether it is the upper and lower structure, the left and right structure, the upper and lower small, the left and right narrow, etc., or whether it is composed of the upper part is divided into graphics and the lower part is divided into text, and the components used are basically the same, and so on, whether it will cause confusion from the overall perspective.

(2) Comparison of the main parts of the trademark

Comparing from the main parts of the trademark, it is necessary to consider whether the main parts of the content of the trademark are basically consistent or similar, which often occurs in the case of a relatively large logo in the overall composition of the trademark. Note that when defining the main part of the trademark, it is necessary to consider whether the relatively small part of the trademark is also an important part of the brand, and do not cause the consequence of giving up some rights.

(3) Comparison in isolation

Comparing whether the trademark constitutes an approximation is not to list the genuine goods and the infringing goods together, so that the relevant public can judge whether they are similar. This comparison method will inevitably make people notice different points, and thus cannot accurately judge whether it constitutes confusion. The "isolation" comparison principle requires the establishment of an isolated observation state, placing the "suspected infringing goods" in the corresponding consumption scenario, and judging whether it will cause confusion to consumers at different times and places. In the process of searching for goods or services, consumers perceive the corresponding goods or services according to the brand impression that appears in their minds, which may produce confusing results.

2. The significance and popularity of the trademark will affect the comparison results

The distinctiveness of a trademark is different from the distinctiveness of its use. The distinctiveness of the use of a trademark belongs to the category of trademark use, such as whether it is clearly posted as a trademark in goods, advertisements, and transaction documents. The distinctiveness of the trademark refers to whether the trademark itself is clearly distinguishable from others. The higher the distinctiveness of the trademark, the higher the possibility of confusion of similar trademark.

(1) Graphic trademarks with original design are usually more significant, and text trademarks with imaginary words that do not produce other connections and only point to the corresponding goods are more significant. Common such as "Yamaha", "Hengyuanxiang", "Huawei" and so on;

(2) If the trademark itself has a certain meaning, the significance is relatively low. Such as "Honor" mobile phone, "Tianqi" toothpaste and so on. Of course, for this kind of trademark, it can be protected and managed through long-term trademark use, reasonable rights protection and other norms of conduct, and strengthen the specific connection between commodities and trademarks to obtain significant characteristics, so as to increase the significance of the trademark.

(3) Due to the long-term lack of trademark use, some trademarks are even widely used in the referential words of a commodity, resulting in the trademark into the general field to become a common name, then lose its significance as a trademark. For example, "flash drive" was once a trademark name for a mobile storage device created by Ronco. Due to improper management, the trademark was widely used, resulting in the generalization of the trademark into a general vocabulary, entering the general field, and finally being revoked.

From the perspective of the popularity of the trademark, the higher the popularity of the trademark, the higher the possibility of the similar trademark to constitute confusion. The popularity of a trademark is usually judged by its scope of use, region of use, operating years, publicity investment, etc. Especially when the trademark becomes a famous trademark or well-known trademark, it is well known to consumers. At this time, similar trademarks are more likely to cause confusion, and the scope of protection of the trademark increases.

It can be seen from the above that trademarks with higher significance and popularity are more likely to cause confusion among the relevant public, so this is also one of the factors that should be considered when judging trademark infringement.

Finally, other difficulties in determining whether trademark infringement is constituted include, for example, how to identify similar goods, whether it is necessary to claim cross-class protection through well-known trademarks; How to deal with the true and false selling of infringers; How to deal with infringers who claim that OEM processing does not constitute infringement; The infringer claims that the product is the inventory of historical purchase, etc. The author has encountered it many times in practice and formulated the corresponding treatment plan and strategy, and needs specific analysis and judgment on different cases.

Interpretation of relevant cases

For example, take the infringement case of Rongsheng Ronshen refrigerator brand owned by a certain group of Sea as an example, the infringer registered a number of trademarks such as “Rongsnd” when selling refrigerator products, and combined and deformed the registered trademarks.

The difficulty of the case is that the infringer registered the trademark, and the multiple trademarks were pieced together, split and combined, deformed and used, whether it constituted an approximation. From the proviso clause in Article 1 of the Provisions on Trademark Conflict, it can be seen that “where the plaintiff brings a lawsuit on the grounds that the registered trademark used by another person exceeds the scope of approved goods or changes the significant features, splits, combinations, etc., is identical with or similar to the registered trademark, the people's court shall accept it.” Note If the registered trademark is used in a distorted manner or similar to others, it will still constitute infringement. At the same time, due to the similar composition of the infringing trademarks by comparison, there are also malicious registration and other cases, the trademark invalidation procedure was launched for the batch of infringing trademarks, and finally the several trademarks have been invalid, which also provides a good right foundation for subsequent rights protection actions.

To sum up, in this article, the author introduces the methods of judging trademark infringement, first, trademark use or fair use? Second, are the categories of goods or services the same or similar? Third, the same trademark or similar trademark? It also introduces the judgment method and comparison method of similar trademark infringement. Brand protection has a long way to go. As a brand, in addition to establishing its own trademark moat, it should also pay attention to the infringement on the market and actively pay attention to the protection of its own brand. And for us consumers, we should also sharpen our eyes when buying goods.

As a professional lawyer deeply engaged in the field of intellectual property, when we deal with each specific case, we will encounter many other problems, such as the conflict between trademarks and prior Copyrights, the conflict between trademarks and enterprise names, the competition between trademarks and influential trade names, and the use of unregistered well-known trademarks by squatting, etc. Each content has its own interesting points. I also look forward to sharing with you one by one in subsequent articles.

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Refer to the laws and regulations and judicial interpretation

Trademark Law of the People's Republic of China (2019 Amendment)

Article 57 Any of the following acts shall constitute an infringement of the exclusive right to use a registered trademark:

(1) using a trademark identical to its registered trademark on the same kind of goods without the permission of the trademark registrant;

(2) Without the permission of the trademark registrant, using a trademark similar to its registered trademark in respect of the same kind of goods, or using a trademark identical with or similar to its registered trademark in respect of similar goods, which is likely to cause confusion;

(3) selling goods that infringe upon the exclusive right to use a registered trademark;

(4) forging or manufacturing without authorization the marks of a registered trademark of another person or selling the marks of a registered trademark forged or manufactured without authorization;

(5) replacing its registered trademark without the consent of the trademark registrant and placing the goods with the replaced trademark back on the market;

(6) Intentionally providing convenient conditions for the infringement of another person's exclusive right to use a trademark, helping another person to carry out the infringement of the exclusive right to use a trademark;

(7) causing other damage to another person's exclusive right to use a registered trademark.

Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Disputes (2020 Amendment)

Article 8 The term “relevant public” as used in the Trademark Law refers to consumers who are related to a certain class of goods or services identified in a trademark and other business operators who are closely related to the marketing of said goods or services.

Article 9 The same trademark as stipulated in Article 57 (1) (2) of the Trademark Law means that the trademark accused of infringement is compared with the plaintiff's registered trademark, and the two are basically indistinguishable in vision.

“Similarity of trademarks” as provided in Article 57 (2) of the Trademark Law means that when the trademark accused of infringement is compared with the plaintiff's registered trademark, the font, pronunciation, meaning or graphic composition and color of the words are similar, or the overall structure after the combination of its various elements is similar, or the three-dimensional shape and color combination are similar. It is easy for the relevant public to misidentify the source of the goods or think that the source has a specific connection with the goods registered by the plaintiff.

Article 10 In accordance with the provisions of Article 57 (1) (2) of the Trademark Law, the people's court shall determine that trademarks are identical or similar in accordance with the following principles:

(1) taking the general attention of the relevant public as the standard;

(2) Both the overall comparison of the trademark and the main part of the trademark should be compared, and the comparison should be carried out separately in the state of isolation of the objects of comparison;

(3) In determining whether a trademark is similar, the significance and popularity of the registered trademark requested for protection shall be taken into account.

Article 11 Similar commodities as provided in Article 57 (2) of the Trademark Law refer to commodities that are identical in functions, uses, production departments, sales channels, consumption objects, etc., or that are generally considered by the relevant public to have specific connections and are likely to cause confusion.

Similar services refer to services that are the same in terms of purpose, content, method, object, etc., or that the relevant public generally believes that there is a specific connection and that are easy to cause confusion.

Goods and services are similar, meaning that there is a specific connection between the goods and services, which is easy to confuse the relevant public.

Article 12 In determining whether goods or services are similar in accordance with the provisions of Article 57 (2) of the Trademark Law, the people's court shall make a comprehensive judgment based on the general understanding of the relevant public of the goods or services; The International Classification of Goods and Services for Trademark Registration and the Classification of Similar Goods and Services can be used as a reference for judging similar goods or services.

Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Civil Disputes Involving Conflicts of Registered Trademarks, Enterprise Names and Prior Rights (2020 Amendment)

Article 1 Where a plaintiff brings a lawsuit on the grounds that the words and graphics used by another person in a registered trademark infringe upon his prior rights such as copyright, patent right of design, right of enterprise name, etc., in conformity with the provisions of Article 119 of the Civil Procedure Law, the people's court shall accept the lawsuit.

Where a plaintiff brings a lawsuit on the grounds that the registered trademark used by another person on the approved goods is identical or similar to the earlier registered trademark, the people's court shall, in accordance with the provisions of Article 124 (3) of the Civil Procedure Law, inform the plaintiff to apply to the relevant competent administrative authority for settlement. However, if a plaintiff brings an action on the grounds that a registered trademark used by another person beyond the scope of the approved goods or by changing its distinctive features, splitting, combining, etc., is identical with or similar to its registered trademark, the people's court shall accept it.