Is it risky to use model symbols similar to competing products?
A product’s model symbol (hereinafter referred to as the “Symbol” refers to a serial number marked on a product. Such serial number is used to identify products. It is common to design a specific “Symbol” with a few alphabets, digits, the combination of alphabets and digits, or the combination of the foresaid items with a trademark, such as Audi A4, Q7. Some “Symbols” are quite special, and after a long period of use and promotion, consumers would connect those “Symbols” with their manufactures, in other words, such “Symbols” could play a role in distinguishing the source of a product. However, most “Symbols” do not have this feature.
In practice, some companies would mark “Symbols” similar to competing products on their own products. Partial of those companies intend to copy, and the rest of them just chose such “Symbols” by coincidence. Then whether it is risky to use “Symbols” similar to competing products? Regarding this question, different situations shall be decided case by case.
If a competing product’s “Symbol” is a generic name in the industry and has not been registered as a trademark, normally the usage of such “Symbol” would not be deemed as infringement. For example, in the case (2020) Zhe 06 Min Chu No. 193, the Shaoxing Intermediate People’s Court of Zhejiang Province pointed out that, “ZR-1000 is a ‘Symbol’ consisting of alphabets and digits, which is one of the numerous ‘Symbols’ of Company X, and its distinctiveness is not high; and the mask bacterial filtration efficiency (BFE) detector is the generic name of the product. Therefore, the ZR-1000 mask bacterial filtration efficiency (BFE) detector is a combination of the ‘Symbol’ and the generic name, and its distinctiveness is not strong.”
In addition, despite the distinctiveness of the product’s “Symbol” itself, the court would also analyze whether such “Symbol” has built up its distinctive feature after it has been used in commercial, and whether it has established a stable corresponding connection with a specific product. In the case (2021) Min Min Zhong No. 1161, the Fujian High People’s Court has mentioned the distinctiveness of the product’s “Symbol”, and especially emphasized: “During the trial, Company X confirmed that… the ‘Symbol’ is not unique in the industry, and Company X did not provide evidence to prove that ZR- 1000 has built up its distinctive feature after it has been used in commercial for a long term, and has established a stable corresponding connection with the mask bacterial filtration efficiency detector manufactured by Company X.”
Conversely, if a “Symbol” is relatively special, or has been clearly differentiated from other similar “Symbols” through use, and has a certain market reputation, it may be protected in accordance with Article 6 of the “Anti-Unfair Competition Law”. According to the relevant provisions of the “Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of the Anti-Unfair Competition Law” (Fa Shi [2022] No. 9, implemented on March 20, 2022), “Where the mark is the generic name, graphic or model of the commodity has, upon being used, acquired distinctive feature and a certain market reputation, and the party concerned applies for protection in accordance with Article 6 of the ‘Anti-Unfair Competition Law’, the people’s court shall uphold such application.”
Take a typical case of Jiangsu High People’s Court for reference, the court held that, “Although CM1 is the ‘Symbol’ of Company C, it also conforms to the characteristics of the unique name of a well-known commodity, and plays the role of the unique name of a well-known commodity in actual use. First, Company C has obtained the registration for CM1 as a specific ‘Symbol’ approved by the China Electrical Equipment Industry Association and its general low-voltage electrical branch, so this CM1 is unique and other companies are not allowed to use it. Therefore, CM1 is not a generic name for relevant products, and it has significant distinguishing characteristics. Second, CM1 is the national key protection Low-voltage electrical ‘Symbol’. The letter ‘C’ stands for Company C, the letter ‘M’ stands for plastic case circuit breaker, and the digit ‘1’ stands for the design serial number. Therefore, CM1 has a natural connection with Company C, and it could be used by consumers to distinguish Company C‘s products from other competing products. Third, after conducting a questionnaire survey of 105 design institutes and 50 industry companies of the branch, the results shows that Company C and its CM1 plastic case circuit breaker have a high influence in the industry, and also have a relatively high brand awareness among relevant users. CM1 as its proprietary ‘Symbol’ is well-known to relevant users, and has become a unique mark to distinguish it from similar products of other manufacturers” (see (2005) Su Min San Zhong Zi No. 0108).
Therefore, it is recommended that companies shall try to avoid using “Symbols”similar to competing products.
If due to various reasons, a company has to use “Symbols” similar to competing products, it is recommended to pay attention to the following two aspects. First, to avoid using “Symbols” similar to well-known ones in the industry. Second, to avoid infringing competitors’ IPR, such as copyright, trademark and etc., while using those similar “Symbols” on products, packages, or in promotion; in addition, in order to avoid confusion with competitors which might be identified as acts of unfair competition, it is further recommended to highlight its own trademark.