Nanjing big-name file won the trademark lawsuit again. Do all the "big-name files" have to be renamed?

Nanjing Big Brand Archives Weibo @ Nanjing Big Brand Archives Map

Nanjing big-name file won two trademark lawsuits in Anhui.

On July 1 1 day and August 3 1 day, 2022, Hefei Intermediate People's Court successively ruled that Nanjing Dahui Enterprise Development Co., Ltd. (referred to as Nanjing Dahui) won the case in two judgments.

The court asked the defendant to change the name of the enterprise and not to use the words "big name file". At the same time, they compensated Dahui Company for economic losses and reasonable expenses of 200,000 yuan and 300,000 yuan respectively, and they also assumed corresponding legal fees and preservation fees.

The newspaper previously reported that there are more than 400 catering enterprises registered by the national industrial and commercial departments with the words "big-name stalls", including Guangdong, the birthplace of "big-name stalls". The verdict of this case may affect whether these enterprises constitute trademark infringement and unfair competition.

The judgment held that the defendant's use of "big-name files" constituted trademark infringement. However, the judgment did not respond positively to the dispute whether the "big-name file" was a generic name.

After the verdict was issued, the newspaper learned that one of the defendants had filed an appeal, and the other defendant said that he would appeal.

Court: The defendant's use of a "big name" trademark constitutes infringement.

(2022) The defendant Wan 0 1 Republic of China 186 was the store and actual operator of Chaozhou famous restaurant, and the defendant in the judgment of Wan 0 1 Republic of China No.496 was the store and actual operator of Hefei famous restaurant, hereinafter collectively referred to as the defendant.

In addition to paying * * * 500,000 yuan in compensation, the court asked the defendants to stop infringing the exclusive right to use the registered trademark of the plaintiff Dahui Company, and at the same time asked the defendants to stop using the words "big brand file" in their enterprise names.

For trademark infringement, the court relied on the provisions of Article 3, paragraph 1, and Article 57, paragraph 2 of the Trademark Law of People's Republic of China (PRC). The exclusive right to use a registered trademark is protected by law. Without the permission of the trademark owner, using a trademark identical with or similar to its registered trademark on the same commodity is likely to cause confusion, which is an act of infringement of the exclusive right to use a registered trademark.

At the same time, according to the relevant judicial interpretation, the judgment explains the standard of identical or similar trademarks.

The court held that a trademark is a mark used by a provider of goods or services to distinguish their own goods or services from similar or similar goods or services provided by others. The primary function of a trademark is to identify the source and provider of goods and services. Therefore, distinctiveness is the essential attribute of a trademark.

The distinctiveness of a trademark comes from two aspects, one is inherent distinctiveness. In the process of trademark creation, due to the differences in pronunciation, graphics and text combinations, the identification of other goods or service providers. The second is to gain salience, and the trademark has formed popularity after long-term use and publicity. Consumers refer to trademarks as specific goods or services accordingly. Therefore, when judging whether the exclusive right to use a registered trademark is infringed, we should not only compare the similarity of related trademarks in terms of pronunciation, meaning and other factors, but also comprehensively consider the distinctiveness of related trademarks, the business conditions of both parties, the actual use of trademarks and other factors to judge whether it is enough to confuse consumers with goods or services.

The court held that in this case, the evidence provided by Nanjing Dahui can prove the trademarks No.3008805,No. 1088772 1 and No.3008805. 17276085, which it claims to protect, has achieved certain significance and influence after long-term use and publicity, and has the function of trademark recognition.

The logic of the court is that the plaintiff has obtained a series of trademarks of "big-name files", and the use of "big-name files" by others is infringement. At the same time, the court held that the identification function of Nanjing Dahui's "Big Brand Archives" series of trademarks was the result of its long-term use and publicity.

The court held that the business scope of each defendant was the same as that of the trademark involved, and the "big-name files" used in its offline stores and online platforms, and the alleged infringing marks could identify the source of goods or services, which belonged to trademark use. By comparison, the above-mentioned accused infringement marks are similar to the trademarks involved, which is easy to cause consumers to confuse the source of goods or services. The defendant's use of the above-mentioned alleged infringing mark without the plaintiff's permission is an act of infringement of the exclusive right to use the registered trademark involved.

"Chaozhou Big Brand Archives" two stores have been renamed.

In the judgment (2022) 10,0001early Republic of China 186, the court held that Chaozhou restaurant, Xiweifang restaurant and Chaozhou food stall were accused of trademark infringement and unfair competition, and they should bear the civil liability of stopping the infringement and compensating for the losses in accordance with the provisions of the first paragraph of Article 179 of the Civil Code of People's Republic of China (PRC). Anhui Xiweifang Company, as a brand operator, actually participated in the management of Chaozhou Fu Restaurant, Xiweifang Restaurant and Chaozhou Big Brand Store. According to Article 168 of the General Principles of the Civil Law of People's Republic of China (PRC), it shall also bear the civil liability of stopping the infringement and compensating for the losses.

According to the judgment, in view of the fact that Chaozhou Fu Restaurant and Xiweifang Restaurant have changed their original business names during the litigation in this case, the two defendants no longer need to bear the responsibility of changing their business names.

The reporter learned that there were three stores in Chaozhou, and two are still in business. The original "Chaozhou Big Brand Store" was renamed as "Chaozhou Fu Restaurant" and the original "Chaozhou Big Brand Store 2" was renamed as "Xiweifang Restaurant".

In the judgment (2022) 10,0001496 at the beginning of the Republic of China, the court also asked the defendant to change the name of the enterprise, and the words "big brand file" were not allowed.

For more than 400 enterprises with "big-name files" in their names, whether it is necessary to change their names in the future depends to some extent on Nanjing Dahui's willingness to safeguard rights. As of press time, the company has not been interviewed by this newspaper reporter.

Is "big brand file" a common name in the industry?

The newspaper previously reported that Article 9 of the Trademark Law stipulated that a trademark applied for registration should have distinctive features and be easy to identify. Paragraph 1 of Article 11 of the Trademark Law stipulates that only the common name, figure and model of the commodity shall not be registered as a trademark.

Therefore, one of the focuses of this case is whether the "big-name file" belongs to a generic name.

The plaintiff believes that "big brand file" is not a common name.

The plaintiff proved that authoritative dictionaries and dictionaries published in Chinese mainland, such as General Standard Chinese Character Dictionary, Modern Chinese Standard Dictionary and Xinhua Dictionary, all contained relevant excerpts, which proved that these authoritative dictionaries and dictionaries published in Chinese mainland had no big-name entries, and "big-name files" were not the general term for dictionary income.

The plaintiff proved that dictionaries and dictionaries compiled by authoritative organizations in Hong Kong and Taiwan, such as Vocabulary for Primary School Learning in Hong Kong and Compendium of Mandarin Dictionary of the Ministry of Education, did not describe "big names". In Hongkong, Taiwan Province Province and other places where traditional Chinese characters are used, "big name file" is not a common name included in authoritative dictionaries.

The plaintiff also provided evidence that the CCL corpus of Peking University China Linguistics Research Center was developed and maintained by an authoritative organization, which proved that the CCL corpus of Peking University China Linguistics Research Center was an authoritative corpus. This corpus does not include "big-name files" but a large number of "food stalls", which proves that the authoritative corpus does not include the common vocabulary "big-name files".

According to China's trial standards for trademark review, generic names refer to commodity names stipulated by national standards and industry standards or established by convention, including full names, abbreviations, abbreviations and established names.

The defendant believes that "big-name stall" is a common name established by convention, which is widely used by the public in the industry, and obviously does not have the function of distinguishing the goods or services of different producers and operators.

The defendant claimed that the "big-name stalls" originated in the early days when the Hong Kong government issued bigger licenses to big-name stalls than ordinary hawkers at that time and needed to be hung in a conspicuous place. So the file with this big license plate is called "big file". Because "Pai" and "Pai" are homophonic, many people think that "big-name stalls" are named after being set up in the street, and they are mistakenly called "food stalls".

The defendant gave evidence that according to the Concise Dictionary of Hong Kong Dialect, big-name stalls refer to "cooked food or clothes grocery stalls on the roadside in downtown areas (one of Hong Kong's local characteristics)" and "food stalls refer to rows of sales stalls (mostly catering stalls) on the roadside or in the square. Originally known as the big-name file, because the cards are homonyms, write food stalls. " According to the definition of Comparative Dictionary of Hong Kong Dialect and Putonghua, big-name stalls refer to stalls selling cooked food, tea, snacks, clothes and groceries on the roadside in downtown areas. The business license of the stall is hung on a simple wooden board or tin shed, which is very conspicuous, so people call it "big-name stall" or "food stall" The Cantonese Dictionary (published by Guangdong People's Publishing House) records that big-name stalls are licensed stalls selling food and sundries on the street. According to the book "Cantonese Folklore" (Chinese Publishing House), food stalls were originally "big-name stalls", referring to food stalls allowed to operate on the street or in lower-grade areas. No matter from dictionaries or conventions, big-name stalls are also called food stalls, which means food stalls.

In the two judgments of Hefei Intermediate People's Court, the court did not demonstrate whether the "big-name file" was a generic name, nor did it affirm or deny the above evidence and proof purpose of the original and defendant.