In trademark infringement cases, in addition to the situation where "presumed confusion" applies when the same trademark is used on the same goods, whether it is likely to cause confusion or misunderstanding is one of the infringement elements that must be considered. Whether the allegedly infringing mark is used within the meaning of trademark law is one of the important criteria for determining the likelihood of confusion and has an important impact on the determination of trademark infringement.
1. The concept of "use in the sense of trademark law"
"Use in the sense of trademark law" is also called "trademark use" or "trademark use". It is an important concept that runs through the entire process of trademark registration, trademark rights maintenance, and trademark infringement identification. However, its connotation and extension have always been controversial in both theoretical and practical circles. This article intends to discuss how to understand and identify "use in the sense of trademark law" in infringement cases. Therefore, it is first necessary to clarify the boundary between it and "trademark use" in trademark cancellation procedures.
In the trademark cancellation procedure, trademark use can be divided into "commercial use" and "symbolic use", and this is used to determine whether a registered trademark should be maintained. "Commercial use" refers to the open, true and legal use of a trademark in commercial activities. Products bearing the trademark should be truly put on the market so that the trademark can come into contact with consumers; "Symbolic use" refers to For use with the sole purpose of maintaining the validity of trademark registration, sales volume, sales period, form of use, etc. are all factors that will be considered to determine whether it constitutes "symbolic use".
The author believes that trademark use in trademark infringement cases is basically not “symbolic use”. Therefore, this article only discusses how to understand and identify “use in the sense of trademark law” within the scope of “commercial use”.
There are different expressions and different views on what “use in the sense of trademark law” means. A restrictive interpretation, starting from the literal meaning, believes that the use of a trademark is the act of using it as a trademark. The "trademark" here is a trademark in a commercial concept, and does not include product names, product decoration, advertising terms, etc.; an expansionary interpretation, Based on the provisions of Article 3 of the "Regulations for the Implementation of the Trademark Law", it is considered that all displays that "use trademarks on goods, product packaging or containers, and trademark transaction documents, or use trademarks in advertising, exhibitions, and other commercial activities" All commercial activities involving trademark signs belong to the use of trademarks; a compromise point of view is that it should be measured based on whether the use has the function of distinguishing the source of the goods. The new trademark in 2013 adopted a compromise view, which also put an end to the above dispute. Article 48 of the New Trademark Law stipulates, “The use of trademarks as referred to in this Law refers to the use of trademarks on goods, commodity packaging or containers, and commodity transaction documents, or the use of trademarks in advertising, exhibitions, and other commercial activities. Actions used to identify the source of goods.”
The core function of trademark use is to identify the source of goods, so the essence of trademark infringement is the use of the allegedly infringing mark, which harms and hinders the realization of this function. The result is that it is easy to cause confusion, Misidentification. In trademark infringement cases, how to determine whether the alleged infringing mark is a "use within the meaning of trademark law" is of important reference significance in determining whether the infringement is established.
2. Basic rules for determining "use within the meaning of trademark law"
To determine whether an accused infringing mark constitutes use within the meaning of trademark law, it needs to be determined on a case-by-case basis based on the specific circumstances of the case. , it is difficult to make unified rules and interpretations at the legal level. Judging from past cases, the intention, method of use, and objective effects of both the trademark registrant and the alleged infringer may affect the determination of infringement to a certain extent; the method of use is the core, and it can be inferred based on the method of use. The subjective intention of the user can also evaluate the objective effect after use.
From the perspective of business practices and conventions, a commercial mark, whether it is a graphic, text, color or a combination of these elements, may be used as a trademark or product on goods, packaging or containers. Name, packaging and decoration or advertising terms.
For an enterprise, in addition to the registration value of the core brand and main logo, the unique name of the product, the specific composition of the packaging and decoration, and the personalized advertising language have also become the targets of the enterprise's trademark application because of their unique commercial appeal.
The trademark mark accused of infringement may be used in the same way as the registered trademark, or it may be used differently. For example, using someone else’s registered trademark words as a product name, or using someone else’s registered advertising term as a trademark.
Theoretically, whether it is a product name, packaging, decoration or advertising terms, it is possible to establish a unique relationship with the brand through prominent use and extensive publicity, and become a symbol indicating the source of the product. On the other hand, it is also possible that the registered trademark itself has not been used extensively, but the allegedly infringing trademark mark has established a certain degree of fixed connection with the infringer and the infringing products through prominent use and extensive publicity. Both the positive and negative situations above should constitute "use within the meaning of trademark law".
3. Specific methods for determining “use in the sense of trademark law”
From various actual cases, registration of trademarks used as product names, packaging and decoration, and advertising terms The trademark itself is likely to be descriptive to a certain extent. For example, a registered trademark that can be used as a product name usually contains descriptive terms, but is not a common name; a registered trademark that can be used as an advertising term may contain more morphemes. It also usually has some implicit, extended but not direct descriptive meaning. On the other hand, the allegedly infringing mark is often used together with the infringer's own trademark. These are some of the unique characteristics of this type of case.
To determine "use in the sense of a trademark" in such cases, it is necessary to make a comprehensive judgment based on the specific use methods, scope of use and popularity of the registered trademark and the accused infringing mark. . Situations that are helpful in determining "use in the sense of a trademark" include: using the logo alone or prominently in a prominent position, the logo is highly distinctive, has been widely publicized to achieve high visibility, and has formed a specific correspondence among the relevant public relationship; situations that are helpful in determining "use that does not constitute trademark use" include: use in conjunction with other words, prominent use of a trademark with certain distinctiveness and popularity in a prominent position, use based on inherent meaning, and commercial compliance Conventional descriptive use (complete and standardized use, use with context, consistent with the font, size, color style, etc. of the text in the context, etc.), the registered trademark itself is not very distinctive, not well-known, and cannot be used among the relevant public form a specific corresponding relationship.
The following will combine some typical cases to illustrate some specific methods for determining use within the meaning of trademark law in trademark infringement cases.
In the case of Zhejiang Lanye suing Pepsi-Cola for infringement of its "Blue Storm" registered trademark, the court of second instance found that "in this case, Pepsi-Cola invested a large amount of money and used various methods to establish China's promotional activities to promote "Blue Storm" products, the "Blue Storm" logo has left a deep impression on consumers. When consumers see the "Blue Storm" logo, they naturally think of PepsiCo's products, especially its posters. PepsiCo prominently displays the "Blue Storm" logo in its products and only states the "Blue Storm" logo on the bottle caps of its products. Its function of distinguishing the source of goods has been fully demonstrated through its series of promotional activities. , the "Blue Storm" logo has actually become a trademark. "In this case, "Blue Storm" was first used alone on the bottle cap and was highlighted in the promotional poster, which made "Blue Storm" a trademark. "Storm" is more easily noticed by consumers than other commercial signs commonly used, which is the basic condition for its "recognition function" to be realized. Furthermore, although the registered trademark "Blue Storm" has not actually been used, Pepsi-Cola's large-scale publicity behavior has caused consumers to mistakenly associate the registered trademark with Pepsi-Cola, which also harmed the identification function of the registered trademark. Therefore, Trademark infringement established.
In the case of a well-known food company suing Yake Company for infringement of the "Crispy Fragrant Rice" trademark, the court of second instance determined that the "Crispy Fragrant Rice" trademark had acquired outstanding and distinctive features through the plaintiff's long-term use and promotion. sex and higher visibility. There is no reasonable reason for Yake Company to use the words "Crispy Fragrant Rice" as the trade name on its products. It may easily lead the relevant public to mistakenly believe that Yake Company and the plaintiff in the original trial have a brand cooperation, licensing, etc. relationship, which will objectively cause the original trial Loss of market share for plaintiff’s related products. Although Yake Company's "Yake" trademark is also well-known, it cannot be used as a defense to prevent it from constituting trademark infringement, especially when the front of the accused infringing product uses "CoCo", a trademark that consumers are not familiar with. , and the well-known "Yake" is placed on the back and blocked by the edge. In terms of usage intention, there is obviously a tendency to weaken its own trademark and highlight the "Crispy Fragrant Rice" trademark. In summary, Yake Company subjectively had the intention of free riding, and objectively had the possibility of misleading consumers. At the same time, it would downplay the trademark in dispute, so it was determined that trademark infringement was established. "In this case, the registered trademark "Crispy Fragrant Rice" has been prominently used by the plaintiff in the original trial as the main brand. Long-term and extensive use has established a unique corresponding relationship between "Crispy Fragrant Rice" and the plaintiff in the original trial, and has a strong The function of identifying the source of goods; and Yake Company marked "Crispy Fragrant Rice" as a trade name on the same product packaging, and concealed its own trademark and highlighted "Crispy Fragrant Rice", which objectively harmed and weakened The supposed identification function of "Crispy Fragrant Rice" can easily cause confusion and misunderstanding among consumers, so trademark infringement is established (Author: Hou Yujing)