China IP,[Trademark]

◆ First instance: (2012) HuiZhongFaZhiMinChu No. 264
◆ Second Instance: (2016) YueMinZhong No. 240
Guangdong Province
While judging whether the plaintiff is eligible for filing a litigation on confirmation of non-infringement of trademark right, the following factors should be considered comprehensively: 1. the defendant has sent a warning letter to the plaintiff due to plaintiff’s use of the involved trademark; 2. the plaintiff has urged the defendant to issue proceedings due to the defendant’s nonfeasance of initiating a litigation; 3. the mentioned action of the defendant may cause damages to the plaintiff. Placing a mark which has similarity to other’s registered trademark on one’s own commodities, but the mark in question is not used for the purpose of identifying the origin of involved commodities, a use as such does not constitute an infringement of trademark right.
Plaintiff (in the trial of first instance): Guang Zhou Wanglaoji Giant Health Industry Co., Ltd (GHI)
Defendant (in the trial of first instance): Wanglaoji Co., Ltd (WLJ)WLJ has exclusive right to use “吉庆时分(Jiqing Shifen2)”, which is a registered trademark of “beverage” commodities in the 32nd category, and WLJ has licensed the trademark to affiliated enterprises, such as, JDB Group. GHI produced and sold the “王老吉(Wanglaoji)” beverage packages, on which GHI used the words “Jiqing Shifen”. WLJ filed many complaints at the industrial and commercial departments all over China and claimed that the aforementioned behavior of GHI constituted infringement of its trademark right, these complaints resulted in many administrative penalties for GHI. GHI thus filed a lawsuit and requested for a verdict to confirm that the use of words “Jiqing Shifen” did not infringe the aforementioned trademark right.
The court held that GHI was in predicament due to WLJ’s complaints and other actions, GHI issued a notice and urged WLJ to litigate. However, WLJ did not file a lawsuit against GHI for the aforementioned use of “Jiqing Shifen”. Therefore, this case complies with the acceptance conditions for requesting confirmation of noninfringement of trademark right. On the outer packaging of the involved commodity, the advertisement slogan “ 吉庆时分喝王老吉(Drink Wanglaoji in auspicious time)” is presented by small text and has been placed in a marginal position. Meanwhile, the registered trademark “Wanglaoji” has a relatively speaking larger font and is noticeably positioned on the package. Consumers will not accordingly consider the aforementioned “Jiqing Shifen” has a function of identifying the source of commodities. The judgement confirms that the aforementioned act of GHI does not constitute trademark infringement.
[Judge's Comment]
This case concerns the disputes between JDB Group and Guangzhou Pharmaceutical Group on whether the latter’s use of words “Jiqing Shifen” constitutes infringement, and this case has a relatively high degree of social concern. The effective judgement holds the opinion that only if a mark with identifiability can constitute commercial use. GHI’s use of involved mark in this case does not lead consumers to mistake the commodities’ trademark as “Jiqing Shifen”. This judgment has correctly delineated the scope of trademark rights of right holders; prevented trademark owners from right abuses, through which to affect the normal operations of their competitive enterprises; and the judgment is a significant reference while handling similar cases.
Translated by Zhao Yajie, Lecturer of School of Political Sciences and Law, Ningxia University)
1 Otherwise written as Wong Lo Kat
2 auspicious time

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