Text/Yu Yuan

Cross-border marketing is a common practice for liquor companies. Previously, Luzhou Laojiao sold ice cream across borders.

Just when consumers thought this was a new way for companies to cross-border marketing, the wine seller "Jiang Xiaobai" sued the facial mask seller "Jiang Xiaobai".

It turns out that this "Jiang Xiaobai" is not that "Jiang Xiaobai". However, what is interesting is that both companies hold legal "Jiang Xiaobai" trademarks.

So the question is, why are there two "Jiang Xiaobai" trademarks at the same time?

Why are there two "Jiang Xiaobai"?

On December 17, the Shanghai Intellectual Property Court publicly heard Chongqing Jiangxiaobai Liquor Co., Ltd. (hereinafter referred to as Jiangxiaobai Liquor Company) v. Jiangxiaobai Health Industry (Guangzhou) Co., Ltd. (hereinafter referred to as Jiangxiao) Bai Jianjian Company) and other three defendants filed a case involving trademark infringement and unfair competition, and claimed 3 million yuan.

During the court hearing, Jiangxiaobai Liquor Company claimed that it was the trademark owner of the registered trademark No. 10325554 "Jiangxiaobai". The "Jiangxiaobai" brand was founded at the end of 2011. At the beginning, it opened up the consumer market for the traditional liquor industry with its unique anthropomorphic brand image, rich and three-dimensional product concept system and innovative marketing methods. The three defendants used the "Jiang Xiaobai" trademark on the facial masks, repair lotions and other products they produced and sold as well as in related advertising activities, infringing the plaintiff's exclusive rights to well-known trademarks.

In short, the plaintiff believed that the defendant was "famous".

Information shows that Yang Yingping applied to register the "Jiang Xiaobai" trademark on July 10, 2018. On April 7, 2019, the State Intellectual Property Office announced the approval of the trademark registration. The trademark registration number is 32153557. The exclusive right period is from April 7, 2019 to April 6, 2029.

Qichacha data shows that Yang Yingping holds 50% of the shares in Jiangxiaobai Health Company. In addition to non-licensed medical device operations, the company's business scope also involves cosmetics wholesale and retail.

Yang Yingping told China News Weekly that Jiangxiaobai Medical Cold Compress Patch and Jiangxiaobai Health Company only carried out relevant business and exercised their legitimate rights and interests on the basis of legally obtaining the trademark registration certificate and going through the licensing and filing procedures. . "There are many such examples in the market. For example, the 'Great Wall' trademark includes Great Wall Motors, Great Wall Lubricant, Great Wall Red Wine, etc. It is a common phenomenon in the market that trademarks of different categories are held by different companies."

He further stated that Jiangxiaobai Cold Compress Patch has not taken the initiative or deliberately to have anything to do with Jiangxiaobai Liquor Industry since its launch. The other party is hyping up and abusing judicial resources to suppress.

Is "Jiang Xiaobai" considered a well-known trademark?

Faced with this situation, Jiangxiaobai Liquor Company also proposed that after years of continuous use and publicity, the registered trademark "Jiangxiaobai" has accumulated extremely high popularity and popularity among the relevant public in China. reputation, and has established a stable and unique corresponding relationship with the company, and has reached the level of well-known trademarks on wine products, it should be recognized as a well-known trademark in accordance with the law.

Requesting for well-known trademark protection in accordance with the law is a common method used by enterprises to protect well-known trademarks and avoid infringement of their rights. According to the Trademark Law and relevant administrative regulations, after a well-known trademark is recognized, the scope of exclusive rights and prohibition rights is wider, and more and more effective protection can be obtained in other fields such as corporate names and Internet domain names.

In Kong Lei’s view, once it is recognized as a well-known trademark, even if it is a different type of trademark, as long as it is similar to the well-known trademark and is easily confusing, it is illegal.

In other words, whether Jiangxiaobai Liquor Company can successfully defend its rights in this case depends on whether the 33rd category "Jiangxiaobai" it holds can be recognized as a "well-known trademark."

According to the relevant provisions of my country’s Trademark Law, if the holder of a trademark that is well-known to the relevant public believes that its rights have been infringed, it may apply for well-known trademark protection in accordance with the provisions of this law.

The Trademark Office can determine the well-known status of a trademark based on the needs of reviewing and handling cases. In addition, during the litigation process, the court can also determine whether the trademark constitutes a well-known trademark based on the needs of hearing the case.

Li Junhui, a special researcher at the Intellectual Property Research Center of China University of Political Science and Law, pointed out that Article 14 of my country’s Trademark Law specifically stipulates the factors that should be considered in determining a well-known trademark, such as the relevant public’s awareness of the trademark, the trademark The duration of use, the duration, extent and geographical scope of any promotional efforts for the mark, and records of the protection of the mark as a well-known mark. The Trademark Review and Adjudication Board must consider the above factors to comprehensively evaluate whether a trademark is a well-known trademark.

Because this point is so important, Jiangxiaobai Liquor Company produced a large amount of evidence such as "annual revenue exceeded 3 billion in 2019" during the trial to prove that "Jiangxiaobai" as a liquor brand The influence has reached the standard of well-known trademark.

However, the defendants also responded tit-for-tat. Yang Yingping believes that in the liquor industry, Jiangxiaobai’s annual revenue is not high and cannot be used as a basis for certification of well-known trademarks. "Moreover, Jiangxiaobai has been established for less than ten years, and well-known trademarks such as Moutai and Wuliangye have existed for decades."

Jiangxiaobai still needs to dig deep into the trademark moat

Court hearing On the same day, Jiangxiaobai Liquor Company also believed that Yang Yingping registered a large number of trademarks and registered trademarks in bad faith.

According to the China Trademark Network, in addition to "Jiang Xiaobai", Yang Yingping has applied for a total of 277 trademarks since 2014, such as Caizhilin, Jiang Xiaohong, Yushengtang, Yan Ruyi, and Derentang. , Baojiakang, Gongsudao, Sensodyne, etc., including 51 Class 3 (cosmetics) trademarks and 67 Class 10 (medical devices) trademarks.

In this regard, Yang Yingping believes that Jiangxiaobai Liquor Company has applied for registration of as many as 2,144 trademarks, which is ten times the number of its own trademarks. "It is obvious that they are hoarding trademarks."

However, the China Trademark Network shows that the number of trademarks Jiangxiaobai Liquor Company has applied for registration is currently 231.

According to the relevant provisions of my country’s Trademark Law, malicious registration of trademarks includes the following situations: 1. The trademark applied for registration for the same or similar goods is a copy, imitation or translation of someone else’s trademark that has not been registered in China Well-known trademarks that are likely to cause confusion; 2. Without authorization, the agent or representative registers the trademark of the principal or represented person in his own name; 3. Preemptive registration of a trademark that has been used by others and has certain influence .

Li Junhui told China News Weekly that if the defendant registers and holds a large number of trademarks similar to well-known brands such as Jiangxiaobai and Sensodyne, then there is obvious trademark "hoarding" behavior and the legitimacy of its registration behavior is questionable. It not only disrupts the good order of trademark registration, but also interferes with the construction of brand protection in our country and needs to be restrained.

The trial lasted about two and a half hours that day, and the court will announce the verdict at a later date.

The confrontation between Jiangxiaobai Liquor Company and Yang Yingping does not stop there.

In addition to this trademark dispute, Yang Yingping also applied for registration of a "Jiang Xiaobai" trademark on dental equipment and instruments, physical therapy equipment and other commodities on July 10, 2018. However, later, the trademark was declared invalid by the State Intellectual Property Office due to a complaint filed by Jiangxiaobai Liquor Company. At present, Yang Yingping is dissatisfied with the ruling made by the State Intellectual Property Office and has filed a lawsuit with the Beijing Intellectual Property Court.

In fact, trademarks have always been the "Achilles heel" of Jiangxiaobai Liquor Company. In January this year, Jiangxiaobai Wine Company took seven years to win the lawsuit against Chongqing Jiangjin Winery and officially declared that "Jiangxiaobai" belongs to itself.

At present, the trademark "Jiang Xiaobai" is being applied for by dozens of companies and many individuals in many fields such as catering, jewelry, and mechanical processing. Many "Jiang Xiaobai" even have Belong. For example, the categories of "facial cleanser; conditioner; hair softener; washing powder; perfume; toothpaste; incense; shampoo; soap; air fragrance" in the third category of trademarks have been registered by Guizhou Hanjia Gojiang Culture Media Co., Ltd. Company registration.

Chongqing Jiangxiaobai Liquor Co., Ltd. only registered the categories of "animal cosmetics; polishing preparations; tobacco flavors; abrasives".

At present, if Jiang Xiaobai wants to become bigger and stronger, trademark is a hurdle that it must overcome.