Whether A Logo Similar To A Registered Trademark Shall Be Deemed As An Infringement?
Recently, Zhejiang Tea Group Co., Ltd., (“ZJ Tea”), the owner of the registered trademark “Shifeng “, files a lawsuit against Hangzhou Shifeng Tea Co., Ltd. (“HZ Tea”). ZJ Tea claims that HZ Tea has used “Shifeng Tea”, “Taste Shifeng” on its online store, printed “Shifeng Longjing” on packaging boxes and bags, and highlighted “Shifeng”, which has infringed ZJ Tea’s registered trademark. HZ Tea counterpleads that its logo is “Shifeng”, and it sells tea; in addition “Shifeng” is the generic name for the tea in respect of origin and quality.
Then, using a logo similar to a registered trademark shall be deemed as an infringement?
According to “Trademark Law” Article 57, without the authorization from the trademark registrant, to use a trademark that is similar to a registered trademark in respect of the identical goods, or to use a trademark that is identical with or similar to a registered trademark in respect of the similar goods, and is likely to cause confusion, shall be an infringement. To identify such an infringement, no matter whether for the same goods, 2 elements shall be applied: (1) similar; (2) being used as a trademark. As for the similar goods, another element shall be applied, which is “be likely to cause confusion”.
Interpretation of the Supreme People’s Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks, Article 9.2 and 10 have stipulated the basic criteria and principle on identifying such infringement.
As for “being used as a trademark”, at present, China don’t apply the concept of “trademark use” like Japan, Taiwan and other countries / regions. “Trademark Law” Article 58 provides that, any party takes the registered trademark as its business name, which misleads the public, shall be deemed as constituting acts of unfair competition, and be dealt with in accordance with the “Anti-Unfair Competition Law”. However, “Regulations for the Implementation of the Trademark Law” Article 76 provides that, to use a logo similar to others registered trademark as the name or package of goods on the identical or similar goods, which is likely to cause confusion, shall be deemed as infringement. In view of this, if a logo is not used as a trademark, but will mislead the public, it shall be deemed as an infringement. In practice, “trademark use” has been applied in some judgments. For example, in “Times Square” case, Chongqing Fifth Intermediate People’s Court states that “the defendant has not use” Star Times Square” independently or with highlight. It just describes the square in the entire logo, which is the sub-element to constitute the name of a service category. ……in addition, the defendant has also used some other elements for the entire logo, which may not mislead the public, so the defendant does not commit an infringement.
With the enhanced legislation of anti-unfair competition, if it is a combination of logo and its size, location and other elements, where the logo is not highlight, the judicial departments may deny “trademark use” of such trademark, then it is possible for them to define such action is not an infringement. Therefore, from the trademark owners’ perspective, they shall analyze whether “non-trademark use” will be applied to the claimed action, if yes, it would be better for them to file a lawsuit on unfair competition.
As for “being likely to cause confusion”, there is no laws or regulations has clarified that “who” has been confused, so it is possible for the judges to define this element according to his/her own daily experience and feeling. In fact, “the relevant public” shall also be applied to “being likely to cause confusion”. For “the relevant public”, according to Interpretation of the Supreme People’s Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks, Article 8 states that, “refers to certain consumer-related goods or services identified by the trademark and is closely related to the foregoing and marketing of goods or services to other operators.” In many cases, the judge will be aware of this, for example, in “Venus” case, the Supreme Court mentions “in case the normal consumers pay general attention, they may not be mislead.”
In addition, elements related to “being likely to cause confusion” include: identifying approximation, the spatial extent of the use of commercial logos, formation history and development process of cited trademarks, trademarks significant, even marketing channels, and so on.
Therefore, for the plaintiffs, where they plan to file a lawsuit against an infringement, they shall firstly analyze which kind of lawsuit shall be filed, for the infringement of registered trademark, or unfair competition, or other kinds. Then based on the kind of lawsuit, they shall prepare the relevant evidence. For the defendants, they may counterplead as the proper use according to Article 59 of Trademark Law, such as generic name, main raw material, origins and etc., or the proper action in accordance with Anti-Unfair Competition Law.