What is the trademark infringement judgment standard
——Analysis of the dispute over trademark rights of "MUJI" and "MUJI"
Dong Lei
In recent years, with the increasing awareness of intellectual property protection, disputes in the trademark field have increased, and the forms of trademark infringement have become increasingly diversified and complicated. How to determine whether a trademark infringement constitutes trademark infringement, whether the trademarks are the same or similar, and whether it is easy to cause confusion, etc. The focal point of the dispute between the two parties is also the difficulty of judgment in the practice of judicial and law enforcement personnel. To this end, the Trademark Law was amended for the fourth time last year, and the State Intellectual Property Office recently issued the "Trademark Infringement Judgment Standards" to strengthen trademark enforcement guidance, unify enforcement standards, and strengthen the protection of trademark exclusive rights.
The dispute over the "MUJI" trademark that has continued for many years is a typical case of determining trademark infringement. In recent years, the trademark disputes between the two companies have continued, and the outcome of the litigation has also won and lost. Behind the trademark dispute, how to better protect the legal rights and interests of trademark owners has always attracted the attention of the industry.
When "MUJI" meets "MUJI"
In November 2019, the Beijing Higher People's Court made a final judgment in the case of MUJI's trademark infringement dispute, dismissing the appeal request of MUJI Project and its subsidiary MUJI (Shanghai) Commercial Co., Ltd., and upholding the original judgment. Prior to this, the court of first instance Beijing Intellectual Property Court ruled that the Good Products Project and MUJI Shanghai Company immediately ceased infringing upon the exclusive rights of registered trademarks of Beijing Cottonfield Textile Co., Ltd. and Beijing MUJI Investment Co., Ltd.; compensation for the cotton field company, Beijing MUJI The company's economic losses and reasonable expenses totaled more than 400,000 yuan.
Speaking of MUJI, in addition to the well-known Japanese brands that mainly sell groceries and other commodities, perhaps few people know that there is also a MUJI that produces and sells home textiles in China. It was this domestically produced MUJI that seemed to be "unknown" and brought the Japanese MUJI to court on the grounds of infringement of the exclusive right to use registered trademarks.
The domestic MUJI trademark was approved for registration on April 28, 2001, and approved for use in category 24 "cotton, towels, towel quilts, bath towels, pillow towels, floor towels, bed sheets, pillowcases, quilts, quilts, cover pads, cushion covers" The product, after renewal, is valid until April 27, 2021. The original registrant of the trademark was Hainan Nanhua Industrial Trading Company. In July 2004, the trademark was transferred to Cotton Field Corporation upon approval. Beijing MUJI was established in June 2011, and Miantian Company is one of its investors. Cotton Field Corporation authorized Beijing MUJI to use the trademark in question exclusively in China for the production, sales and promotion of the designated products under the trademark.
MUJI Shanghai Company was established in May 2005, and the Japanese company Liangpin Project is its sole shareholder. In recent years, the "MUJI" specialty stores all over the mall are invested and operated by the company.
When "MUJI" meets "MUJI" in the market, there is only one word difference. Whose trademark is "authentic" will naturally attract the attention and discrimination of both parties and consumers. After investigation, Miantian Company and Beijing MUJI Company believed that the good product plan, MUJI Shanghai Company produced and sold acrylic blankets, linen flat bed covers, MUJI wool washable mattresses, MUJI cotton Tianzhu Bed covers and other commodities infringed on the exclusive right to the trademark in question, and then sued to the Beijing Intellectual Property Court.
The defendant argued that the Good Product Project has not committed any tort in China and should not bear any legal responsibility. In addition, the trademark claimed by the plaintiff is the simplified Chinese character "无印良品", and it uses the traditional Chinese character "无印良品". It is the first of its kind and has no subjective intention of infringement and should not be liable for compensation.
Is it trademark squatting, or is it a legitimate act
After the final judgment of this case, the Good Product Project and MUJI Shanghai Company issued a statement saying that since the birth of MUJI in Japan in 1980, the Good Product Project opened stores around the world, including Japan, to register "MUJI" And the "MUJI" trademark. In the mainland of China, the good product plan has registered the trademark of "Muji" in almost all goods and service categories, but only some of the product categories such as cloth, towels, bed covers, etc. have been preempted by other companies. "Good Product" trademark.
So, did the plaintiff in this case, as the defendant said, squatted its trademark? As for how to determine trademark squatting, the Trademark Law clearly stipulates that if a natural person, legal person or other organization needs to obtain the exclusive right to use the trademark for its goods or services in the production and operation activities, it shall apply to the Trademark Office for trademark registration. Applications for registration of malicious trademarks that are not intended for use shall be rejected.
However, according to the facts determined by the court's judgment, it seems difficult to draw a conclusion that the plaintiff has rushed to register the trademark. The registration date of the domestic MUJI trademark was in 2001. At that time, MUJI of Japan did not enter the Chinese mainland market, nor did it carry any advertising campaigns in mainland China. It is difficult to say how influential it is in the Chinese mainland market. In fact, it was not until 2005, four years later, that MUJI opened its first store in mainland China in Shanghai.
On the contrary, according to the facts determined by the court of first instance, the plaintiff has been in a normal state of operation after obtaining the trademark right in the case, and has won many awards in the industry, which can be said to have a certain reputation and reputation.
In addition, the evidence found by the court of first instance shows that since the good product plan has filed an opposition application against the trademarks involved in the plaintiff's case, my country's trademark administration department has repeatedly ruled that the trademarks involved are approved for registration. For example, in January 2004, the Trademark Office of the former State Administration for Industry and Commerce issued (2004) Trademark Differentiation No. 20, "Wujin Liangpin" Trademark Opposition Ruling, ruling that the trademark in question was approved for registration. The good product plan did not accept the above ruling and filed an application for review of the objection with the trademark review committee of the former State Administration for Industry and Commerce. In March 2009, the Trademark Review and Adjudication Board ruled that the trademark in question was approved for registration.
Since then, after the administrative litigation procedures of the first and second instance, the above-mentioned rulings made by the Trademark Review and Adjudication Board have been maintained. In the subsequent retrial of the application, the Supreme People’s Court held in its judgment in June 2012 that the evidence provided by the Good Product Project can only prove that its “MUJI” trademark was registered in Japan, Hong Kong and other places before April 6, 2000. The use of publicity and the popularity in these areas does not prove that the "MUJI" trademark is actually used on commodities such as towels of category 24 in mainland China and has a certain impact, so a final judgment to uphold the original judgment was made.
Based on the above facts, the court found that the trademark in question in the case held by the plaintiff is currently legal and valid and should be protected by law.
The defendant in this case also stated in the statement after the final judgment that the Good Product Project and MUJI Shanghai Company cannot use the "MUJI" trademark for these products in mainland China, but the trademark was misused in 2014 and 2015. . "In order to eliminate the impact of the above actions on Beijing Cotton Field Textile Co., Ltd., etc., our company has rectified the trademark marking of the above-mentioned products."
The defense is invalid and the infringement is determined to be established
During the trial of this case, the defendant once put forward a series of defense reasons: the good product plan did not implement any infringement in China and should not bear any legal responsibility; the good product plan has the registration of "MUJI" on the 20th, 21st, and 27th commodities Trademark; the "MUJI" brand of the good product plan is well-known.
Whether the above-mentioned defense reasons are valid and whether the defendant’s infringing action is established depends on whether the defendant uses similar trademarks in similar products, which may easily lead to consumers’ misrecognition and confusion about the source of the products.
According to the provisions of my country's Trademark Law, similar products refer to products that are the same in terms of function, use, production department, sales channel, consumer group, etc., or that the relevant public generally believes that they have specific connections and are likely to cause confusion. To determine whether the commodities are similar, the general public's general knowledge of the commodities should be used to make a comprehensive judgment. Trademark approximation refers to the composition and color of the trademark style, pronunciation, meaning or graphics, or the overall structure of the combination of its elements is similar, or the three-dimensional shape and color combination are similar, which is likely to cause the relevant public to make mistakes about the source of goods or services. Recognize, or think that its source has a specific connection with another person’s prior registered trademark.
Generally speaking, to determine whether a trademark constitutes similarity, the general attention of the relevant public should be taken as the standard, not only considering the similarity of the constituent elements of the trademark symbol and its entirety, but also the distinctiveness and popularity of the relevant trademark, the commodity used or The degree of service relevance is based on whether it is easy to cause confusion.
The court of first instance held that the blanket in the infringed product and the blanket approved by the trademark in question, the bed cover in the infringed product and the bed cover approved by the trademark in question, the mattress in the infringed product and the mattress approved by the trademark in The functions, uses, production departments, sales channels, consumer groups, etc. are the same or similar, constituting the same or similar commodities. The "MUJI", "MUJI" and "MUJI" used on the accused infringing products are only different from the trademark "MUJI" and "MUJI" and the existence of "MUJI". The difference constitutes the same or similar trademark, and the two are used on the same or similar goods of blankets and bed covers at the same time, which may easily lead the relevant public to misunderstand the source of the goods.
In addition, whether the “MUJI” brand of the good product plan is well-known, cannot be a reason for using the same or similar trademark on the same or similar goods as the trademark in question, nor can it become a case where the cotton field company legally holds the trademark in question Reasonable arguments.
In the second instance, the court held that the trademark of “MUJI” registered on the 20th, 21st, and 27th commodities of the good product plan was different from the product category of the trademark approval registration in this case, and could not be used as a reasonable defense for the alleged infringement in this case. In the case where multiple “MUJI” trademarks under the plaintiff’s name, including the trademark in question, and multiple “MUJI” products under the defendant’s name have been approved and registered on different categories of commodities, they serve as different markets with two trademarks. Subjects should respect the established market order, regulate the exercise of rights under their respective trademark exclusive rights, try to draw clear boundaries between commercial signs, and avoid causing confusion and misrecognition by the relevant public. Any behavior beyond the boundary of one's own trademark exclusive rights and infringement of the other party's exclusive trademark rights shall be stopped and shall bear corresponding legal responsibilities.
As for the good product plan, it claimed that its manufacturing of the infringed product occurred outside of China, and no infringement was committed in China. The court held that among the infringed products, the origin of the goods displayed on the flatbed bed linen and other commodities is China. Even if the infringed product is produced outside the country, the registered trademark is regional. After the infringed product enters the field of commodity circulation in China, it has infringed the exclusive right of the trademark in question. The good product plan as the manufacturer of the infringed product should bear the corresponding Tort Liability.
To sum up, the Beijing Higher People's Court finally determined that the "Muji" MUJI, "MUJI" "MUJI" and "MUJI" were used on the infringing product of the indicted product and the trademark involved Using similar trademarks on the same or similar commodities, Liangpin plans to produce goods marked with the above-mentioned marks, and MUJI Shanghai Company’s sales of goods marked with the above-mentioned marks infringe on the plaintiff’s exclusive right to use the registered trademark in the case in question.