The dilemma of protecting the rights of the brand when it encounters “counterfeit goods” - with solutions and litigation plan skills

After the brand has a certain influence, the brand will find that a lot of“counterfeit”goods suddenly appear in the market. These goods are widely used in the market and expand the market, which has a negative impact on the brand's reputation and market sales. In case of such a situation, how to solve it through non-litigation or litigation? How the brand side should maintain its own brand interests is an inevitable topic to be considered.

In the field of intellectual property rights, trademark infringement and copyright infringement can be claimed for different infringements. If the goods also use the invention, utility model or design patent of the right holder, patent infringement can also be claimed. However, in reality, imitation and“borrowing”between commodities are often not limited to the above intellectual property rights, but also the use of the same or similar commodity names, packaging, and decoration.

On this basis, this article summarizes the common ways to deal with this problem in legal practice at present, and combines the author's more than 7 years of experience in intellectual property brand maintenance to write, to help the brand can choose the most suitable intellectual property protection brand and goods from infringement.

01、the problems encountered in the current brand maintenance, the trial points of the court

For such cases, there are the following problems in the selection of relevant intellectual property rights for protection:

First, the trademark used by the infringer is suspected of free riding, but the comparison is not the same or similar, can not bring a trademark infringement lawsuit;

Second, the appearance of the product has not applied for a design patent, and can not bring a design patent infringement lawsuit;

Third, the goods enjoy the copyright of independent design, but the scope of copyright protection is limited to the work itself, and the scope of protection in industrial products is difficult to extend to the entire product and the brand value attached to the product.

As can be seen above, in some cases, whether it is trademarks, patents or Copyrights, they cannot fully and effectively protect the brand from infringement.

In this case, the brand will encounter difficulties, especially in the field of foreign affairs. In this case, priority can be given to proving that the commodity belongs to the packaging and decoration that has a certain impact, so as to effectively protect the launch and sale of the commodity and maintain the commodity from improper attachment by others.

The identification of the packaging and decoration of goods that have a certain impact is as follows:

Article 6 of the Anti-Unfair Competition Law stipulates that“Business operators shall not engage in any of the following acts of confusion to cause people to be mistaken for other people's goods or have a specific connection with others: (1) Unauthorized use of the same or similar marks of the name, packaging and decoration of the goods that have a certain impact on others; ...”

In the process of judging whether the product infringes on others, the main points of packaging and decoration attention are:

(1) The goods of the right holder are known to the relevant public (or to the relevant field). The main need to consider whether the product has a certain market visibility in China and is known to the relevant public;

2. the system is unique and stable design, with significant characteristics to distinguish the source of goods. That is, the overall style is consistent, with stable design features, with identification, and can identify the source of goods;

3. The accused infringing products constitute similar. That is, the packaging and decoration of the accused infringing goods are similar to the packaging and decoration of the right holder, which also causes confusion and misidentification.

02、solution and litigation proof points

First, clarify the design points of the packaging and decoration of goods that are different from other goods, and prove whether it constitutes confusion.

In the identification of commodity packaging and decoration that has a certain impact, the right holder who claims the right needs to put forward the specific design points and elements of the commodity. The selection of the main points of the design must be flexible, not to describe the details too much, but also to maintain the uniqueness of the product, reflecting the product can be distinguished from other products. In addition, if there are multiple packaging and decoration products, it is necessary to choose continuous use and the formation of fixed characteristics of the decoration, otherwise there is a risk that the court will find that the packaging and decoration is not stable.

Most people are often so focused on describing the details of a product's design that they forget about its features. In particular, when the product of the right holder and the accused infringing product are obviously confused, but there are some differences, too much description of the design details of the product is easy to lose the focus, so that the focus is on other details of the product, leading to the belief that the product does not constitute an approximation.

On the contrary, if the description of the specific design of the product is too shallow, it may produce a situation that cannot explain the characteristics of the product and cannot be distinguished from other products. Therefore, the description of product design features should be limited to maintaining the unique design of the product, and the characteristics of both sides should be described as far as possible to ensure that it does not deviate from the scope of protection.

For example: (2022) In the Supreme Law Minre No. 63 Unfair Competition Dispute, the court held that:“Although the bottle body involved in packaging and decoration is a common cylinder, its relatively flat shoulder and the groove design of the bottle body have certain differences. After the long-term use and publicity of a company, the packaging and decoration involved have established a stable corresponding relationship with a company.”Can be used to identify the source of goods, in summary, a company used in the case of packaging, decoration... It has formed a certain impact on packaging and decoration.(All are currently published cases).

Second, to clarify the scope of the relevant public, to prove that the product“has a certain impact”.

In the traditional offline commercial sales promotion model,“having a certain impact”can be proved by history, business scale (including the online and offline sales scope of the product, operating income, sales profit, etc.), market share, ranking (with the ranking and market share of the product itself as a priority, supplemented by the ranking of the brand and the enterprise in the relevant industry), honorary awards, advertising, etc.

At the same time, due to the development and progress of society, the publicity and promotion mode of a product or even a brand is different from the traditional commodity sales, which is reflected in the diversification of the promotion mode, advertising communication, publicity methods, etc., can be transformed by public and private domain traffic, social media, live broadcasting platforms, stars and Internet celebrities. There are different degrees of influence on the publicity and promotion of goods. Therefore, the advertising and network traffic of the new platform are also one of the evidences to prove that the product has a certain impact. Especially in different industries, to prove the influence of goods, it is necessary to clarify the corresponding audience groups of goods.

For example: (2021) Yue 73 Min End 4638 unfair competition Dispute, the court held that:“According to the advertising service contract, exhibition contract, advertising endorsement service contract, live broadcast promotion service contract and other evidence provided by Barri company, in order to promote its Kox series of products, Barri company has carried out a lot of publicity and promotion through advertising, hiring star spokespersons, and reporting on the corresponding network media platform, and spent a high publicity cost.”Since 2018, the sales volume and sales amount of“Kuomting Petal shower gel”on Tmall have been large, and the continuous publicity and promotion of Barylee Company in new marketing methods such as Xiaored Book, Tiktok, and network media have also made the product have a greater impact. The above facts show that the product involved in the case of“Kox Ting petal shower gel”has a certain market share and is known to the relevant public.

03、practical handling skills

It should be pointed out that in practice, because not all goods can fully meet all of the above requirements, for example, the product only has a small range of influence and it is difficult to prove, and the boundary of the unique design features of the product is slightly disputed, so it is recommended to combine“packaging and decoration with some influence”with the use of trademarks, trade names, and other unfair competition acts.

Take a case of unfair competition of footwear decoration infringement handled by the author as an example, in which the author acted for the right holder. The infringing goods not only use the design and decoration of the right holder, but also in the whole sales process, the publicity copy and advertising pictures of the goods are related to the right holder. At the same time, because the audience of the goods is concentrated in the young crowd, the idea of proving the scope of influence is also different from the traditional case. Accordingly, the author of this case has adopted the following solution:

First, the application of law. In this case, the infringer not only imitates a product, but chooses the fourth combination of Article 6 of the Antilaw in the case of direct application of Article 6 of the Antilaw, and combines the principle provisions of Article 2 of the Antilaw to assert the bottom line.

Second, as to whether there is confusion and whether there is publicity. Mainly through the star's dress (street photography magazines, Tiktok videos, etc., as the main force), variety shows, publicity, etc., to prove popularity, including the right holder's goods are carried by a star, Internet traffic data, etc. Due to the change of the new business model, the star's dress is linked to the brand's direction and trend indicators, and has a certain influence on the specific relevant public.

Third, the selection of specific infringing goods. Since there are several colors in the infringing store, in the case of multiple goods constituting infringement, it is necessary to clarify which styles and colors are respectively. At the same time, the keywords related to the right holder contained in the store publicity can be used as auxiliary points to prove that the other party constitutes unfair competition.

Brand maintenance has a long way to go, such as the author's team encountered a Swiss local sports brand because of authorization to a domestic company, resulting in the disclosure of relevant information, after the termination of the cooperation agreement, a domestic company still uses its brand, with its mold to bid for the domestic large-scale sports games, and even in the Paris Olympic Games have appeared similar goods. However, the problem encountered by the Swiss local sports brand is that it has no business in the country and no registered company, the trademark of territorial extension has not been registered, and there is no patent. The company encountered the dilemma of rights protection as mentioned in the article, in this case, the scheme described in this article can be used to take unfair competition as the backstop, collect relevant evidence, and Sue for rights protection.