Judgment Gist
The exclusive right to use the trademark "DUELER" enjoyed by Bridgestone Corporation shall be protected by law. According to the product brochure of Bridgestone Corporation, the trademark is used on its off-road vehicle series tire products by means of indicating it on the non-contact surface of the outside of the tire, which is the place where trademarks are commonly indicated for this type of goods. Baoli Company also uses the word "DUELER" on the outside of its off-road vehicle series tire products, which belongs to use for identification. According to Article 52.(1) of the Trademark Law of the People's Republic of China, the unauthorized use of a trademark identical or similar to another person's registered trademark on identical goods constitutes trademark infringement. Baoli Company's claim that "DUELER" has fixed meaning and it is not a coined word for which its use does not constitute trademark use cannot be established.
Case Information
Case Summary
Bridgestone Corporation registered the English trademark "DUELER" on May 14, 2004 in China with registration number 2019889, and the validity period was from May 14, 2004 to May 13, 2014. The goods approved for use were “tires for vehicles; inner tubes of vehicle tires”. Bridgestone Corporation enjoyed the exclusive right to use the trademark "DUELER" in accordance with the law.
On November 7, 2008, Bridgestone Corporation discovered that the tires produced by Guangzhou Baoli Tire Co., Ltd. (hereinafter referred to as "Baoli Company") sold by Tianjin Fuxingzhao Trading Co., Ltd. (hereinafter referred to as "Fuxingzhao Company") used the word "DUELER". Bridgestone Corporation filed a trademark infringement lawsuit claiming that the word "DUELER" on the tires produced and sold by Baoli Company and Fuxingzhao Company was identical to its registered trademark, which infringed the trademark rights of Bridgestone Corporation. At the same time, Bridgestone Corporation filed an anti-unfair competition lawsuit on the grounds that the use of the word "DUELER" by Baoli Company on its products belonged to counterfeiting other’s registered trademark which constituted unfair competition act against Bridgestone Corporation.
The court of first instance held that the main business scope of Bridgestone Corporation and Baoli Company was both manufacturing and sales of tires. "DUELER" is a legally registered trademark of Bridgestone Corporation which has the exclusive right to use the trademark and the goods approved for use are “tires for vehicles; inner tubes of vehicle tires” in class 12. Without authorization of Bridgestone Corporation, the use of the word "DUELER" on its tires by Baoli Company infringed the exclusive right of Bridgestone Corporation to use the trademark, and shall bear the corresponding infringement liability and compensate for economic losses. Fuxingzhao Company shall stop sales of the tires with the word "DUELER" since the tires infringed the exclusive right of Bridgestone Corporation to use the trademark. Because the products sold were provided by Baoli Company, Fuxingzhao Company was not liable for compensation.
Regarding the issue of unfair competition in this case, the use of the word "DUELER" on the tires produced by Baoli Company is likely to cause confusion among the relevant public that it has a specific connection with Bridgestone Corporation. It can be determined that it constitutes unfair competition. Baoli Company shall stop manufacturing and sales of tire products with the word "DUELER" that are sufficient to cause confusion and misidentification to the public, and compensate Bridgestone Corporation for economic losses as appropriate.
Regarding the amount of compensation, since it is difficult to determine the profits obtained by Baoli Company as a result of the infringement and the losses suffered by Bridgestone Corporation as a result of the infringement, it is determined according to factors such as the circumstances and duration of the infringement.
Accordingly, the court of first instance ordered that Baoli Company and Fuxingzhao Company to stop the infringing acts, and Baoli Company to compensate Bridgestone Corporation for economic losses.
Dissatisfied with the first instance judgment, Baoli Company appealed to Tianjin High People's Court (hereinafter referred to as the "court of second instance"), requesting that the first instance judgment be revoked, and that the appellee's claims be dismissed, and the costs of the litigation shall be borne by the appellee.
The court of second instance held that the exclusive right to use the trademark "DUELER" enjoyed by Bridgestone Corporation should be protected according to law. According to the product brochure of Bridgestone Corporation, the trademark is used on its off-road vehicle series tire products by means of indicating it on the non-contact surface of the outside of the tire, which is the place where trademarks are commonly indicated for this type of goods. Baoli Company also used the word "DUELER" on the outside of its off-road vehicle series tire products, which belongs to use for identification. According to Article 52.(1) of the Trademark Law of the People's Republic of China, the unauthorized use of a trademark identical or similar to another person's registered trademark on the identical goods constitutes trademark infringement. Baoli Company's claim that "DUELER" has fixed meaning and it is not a coined word, and its use did not constitute trademark use cannot be established.
The act of Baoli Company directly constituted an infringement of the trademark "DUELER" of Bridgestone Corporation, and shall bear the corresponding trademark infringement liability in accordance with the provisions of Article 52.(1) and Article 56 of the Trademark Law of the People's Republic of China. The original judgment found that Baoli Company constituted unfair competition while determining trademark infringement, and ruled that Baoli Company was liable in accordance with Article 17 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases of Unfair Competition was improper and should be corrected.
Accordingly, the court of second instance upheld the items 1, 2 and 4 of the judgment of first instance; The third item of the first instance judgment was revoked; The second instance judgment ordered Baoli Company to compensate Bridgestone Corporation for economic losses of CNY 180,000 (approx. USD 26,146, including reasonable expenses incurred by the appellee to stop the infringement).
Attorney’s Opinion
This case is a trademark infringement case in the tire industry, which was selected into the Top Ten Typical Cases of Tianjin Intellectual Property Judicial Protection in 2011.
Whether the use of the accused infringing sign constitutes trademark use is an important premise in trademark infringement judgment. According to Article 3 of the Implementing Regulations of the Trademark Law of 2002, which is applicable to this case, the use of trademarks includes the use of trademarks in commodities, commodity packages or containers, and commodity transaction documents, or in advertising, exhibitions, and other commercial activities. Therefore, in principle, the use of trademarks on infringing products obviously belongs to trademark use. However, in this case, the accused infringer claimed that he only used the trademark involved in the case on tire products, and had not used the trademark involved in advertising and packaging. His use of the trademark involved was not trademark use, nor did it play a role as an indication of source of goods, so it did not constitute an infringement.
The fundamental function of a trademark is to identify sources, that is, to let consumers distinguish between different sources of goods and avoid confusion. To determine whether the use of the trademark by the user is fair use or infringing use, it should be judged from the subjective intention and objective results of the user. In this case, the accused infringer imitated the trademark of the right holder for many times, and as a market player in the same industry, he should have known the right holder’s goods and trademark, but he had repeatedly committed trademark infringement, so it was hard to determine that the accused infringer’s use of the trademark involved in the case was in good faith or for legitimate purposes. On the other hand, the key to the establishment of trademark infringement is to take the possibility of confusion as the fundamental standard. Therefore, for the use of a trademark identical with or similar to the registered trademark by a non-trademark owner, only if no confusion is caused from the use, can the defense of fair use be established. It should be noted that the distinctiveness and popularity of the trademark itself is not only an important criterion to determine whether the use of the trademark by the user is in good faith, but also an important basis to determine whether it causes confusion or misunderstanding. In this case, although the accused infringer repeatedly claimed that the trademark "DUELER" involved in the case had meaning such as “a person who fights duels, etc.”, the right holder actively demonstrated the popularity of the trademark, and claimed that although the trademark involved in the case had meaning, its distinctiveness on tire products was also high. Therefore, the court finally adopted our point of view and determined that the act of the alleged infringer constituted infringement.
In addition, the Trademark Law of 2001 and the Anti-unfair Competition Law of 1993 were applicable to this case. At that time, both laws provided for trademark infringement similar to this case. That is to say, the Anti-unfair Competition Law also had provisions that "counterfeiting others' registered trademarks" constitutes an act of unfair competition, and there was a problem of legal concurrence. It is generally believed that when there is a problem of legal concurrence for the same infringement, the law with specialization and stronger protection should prevail. The Anti-unfair Competition Law is a limited supplementary law in the field of intellectual property rights. For the infringement that has been stipulated in the special law, the special law should be applied preferentially. The infringement in this case was trademark infringement. Obviously, the trademark law is more specialized for such infringement. Therefore, the court of second instance also made it clear that the Trademark Law should be applied, instead of applying the provisions of the Trademark Law and the Anti-unfair Competition Law simultaneously to protect the trademark owner.
Link to the Case Judgment:
Second instance
https://www.iphouse.cn/cases/detail/39opew7qy32n1j78krdl8gd0zrkm54xv.html?keyword=%E5%B9%BF%E5%B7%9E%E5%B8%82%E5%AE%9D%E5%8A%9B%E8%BD%AE%E8%83%8E%E6%9C%89%E9%99%90%E5%85%AC%E5%8F%B8%E3%80%81%E6%A0%AA%E5%BC%8F%E4%BC%9A%E7%A4%BE%E6%99%AE%E5%88%A9%E5%8F%B8%E9%80%9A%E4%BE%B5%E5%AE%B3
