"The authentic wufangzhai zongzi are sold in fake gift boxes. Is it an infringement?"
Recently, the Shanghai Intellectual Property Court (hereinafter referred to as the Shanghai Intellectual Property Court) rejected the appeal against the dispute over trademark infringement between the appellant Zhejiang Wufangzhai Industrial Co., Ltd. (hereinafter referred to as the wufangzhai company) and the appellees Shanghai suxiego Industrial Co., Ltd. (hereinafter referred to as the suxiego company) and Shanghai Yingli Industrial Co., Ltd. (hereinafter referred to as the Yingli company), and upheld the original final judgment.
Wufangzhai company claimed to the court of first instance that "wufangzhai" was founded in 1921, and its registered trademark has a high reputation. It was once recognized as a "Chinese time-honored brand" and a well-known trademark. In 2018, the law enforcement officers of Shanghai Jing'an District market supervision and administration bureau investigated and punished the gift boxes sold by suxiego company with the words and graphic trademarks such as "wufangzhai". The zongzi in the gift box involved came from the authorized agent of wufangzhai, but wufangzhai has never produced or authorized other companies to produce and sell such gift boxes.
According to the investigation, Yingli company provided zongzi and gift boxes, and suxiege company carried out combined sales. Therefore, the acts of suxiege company and Yingli company infringed the exclusive rights of wufangzhai company's No. 9720610 "Wufang" trademark, No. 10379873 "delicious Wufang" trademark and No. 331907 "wufangzhai" trademark, and should be jointly liable. In addition, Yingli company sold zongzi gift boxes and used the same trademark on the same goods, infringing the exclusive right to use the trademark "wufangzhai" No. 3781249. Wufangzhai company requested the court to order suxiege company and Yingli company to immediately stop producing, selling and destroying the packaging boxes and commodities with the above trademark marks, and jointly compensate for the economic losses and reasonable expenses totaling 300000 yuan.
The court of first instance held that the zongzi in the gift box involved in the case came from the authorized seller of wufangzhai and were genuine. During the trial, wufangzhai company confirmed that the round pattern of wufangzhai old man and the production date were printed on the vacuum packaged zongzi in bulk, and the packaging, shelf life and quality of the bulk zongzi were no different from those in the gift box. It can be seen that the act of using basically the same logo as the registered trademark on the package of the gift box involved in the case has not damaged the function of indicating the source of the trademark, nor the function of ensuring the quality of the trademark. Therefore, the acts of suxiego company and Yingli company have not infringed the rights of registered trademarks No. 9720610, 10379873 and 331907.
Su Xiege company prominently marked "Wufang", "delicious Wufang" and "wufangzhai" on the gift boxes involved in the case, which constituted a use act in the sense of trademark law. Without the permission of the trademark registrant, Su Xiege company used the same trademark as the registered trademark on the same commodity, infringing the exclusive right of wufangzhai company to use the registered trademark No. 3781249.
Considering the popularity of the trademark involved, the subjective fault degree of the infringer, the impact of the infringement, the lawyer fees paid by wufangzhai company and other factors, and considering that the zongzi in the gift box involved really came from wufangzhai company, the compensation amount and reasonable expenses are determined to be 30000 yuan.
Wufangzhai company refused to accept the first instance judgment and appealed to the Shanghai Intellectual Property Court, holding that the first instance judgment found that the acts of suxige company and Yingli company did not infringe the rights of registered trademarks 9720610, 10379873 and 331907, and the amount of compensation was too low. It requested that suxige company and Yingli company should jointly compensate 150000 yuan for economic losses according to law.
The Shanghai Intellectual Property Court held that
In this case, suxige company and Yingli company will put the bulk zongzi from wufangzhai company into the gift box involved in the case whose source is unknown but whose appearance is similar to the authentic gift box of wufangzhai company, and then sell them in the name of wufangzhai zongzi gift box. The words "wufangzhai", "delicious Wufang", "Wufang" and other words similar to or basically the same as the registered trademark are used on the outer package of the gift box involved, If it infringes upon the exclusive right to use the registered trademarks No. 9720610, 10379873 and 331907 of wufangzhai company, it shall be liable for compensation.
The reasons are as follows.
1. although the bulk zongzi are authentic from wufangzhai company, the zongzi gift box accused of infringement is different from the authentic zongzi gift box of wufangzhai company, and the outer packaging and sales price are different;
2. from the category of goods approved for use of registered trademarks, gift box zongzi is also a kind of zongzi goods, so the behaviors of suxiego company and Yingli company belong to the use of trademarks similar to the registered trademarks on the same kind of goods;
3. putting the bulk rice dumplings into counterfeit gift boxes for external sales will cause confusion and misunderstanding of the relevant public about the gift box rice dumplings, damage the relationship between the registered trademark on the gift box and the source indication of the goods in the gift box, encroach on the market share of the authentic gift box rice dumplings, and have an impact on the business reputation of wufangzhai company.
Therefore, the court of first instance held that the acts of suxige company and Yingli company did not infringe the rights of No. 9720610, 10379873 and 331907 registered trademarks, which was an error of applicable law and should be corrected. In addition, according to the existing evidence, the sales volume of suxiege company and Yingli company is small, the profit is not high, the average price difference between the bulk zongzi and gift box zongzi of wufangzhai company is not large, and suxiege company and Yingli company did buy the bulk zongzi of wufangzhai company, which did not cause great losses to wufangzhai company.
To sum up, the Shanghai Intellectual Property Court held that the act of sub packaging and selling authentic "wufangzhai" zongzi constituted trademark infringement, but after considering the circumstances of the case, it upheld the amount of compensation in the original trial, so it made the above judgment.
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