Introduction
Facts
Decision
Comment
Figurative trademarks are susceptible to infringement in China in many ways. As well as creating slavish copies of a device, infringers have piggybacked onto the goodwill of reputable figurative trademarks by, among other things:
- transforming a device;
- adding text;
- using part of a device; and
- using a device as decoration.
Infringers have even used such devices as 3D objects.
Brand owners seeking to stop such infringement will naturally resort to judicial remedies. Nevertheless, whether a 3D object can infringe a 2D device remains a divisive issue in judicial practice.
Article 9.2 of the Supreme People's Court's (SPC's) Interpretation on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Dispute Cases enumerates a few criteria to assess similarity when a 3D mark is involved:
'similar trademark' as prescribed in Article 52.1 of the Trademark Law refers to the accused infringing trademark, when compared with the plaintiff's registered trademark . . . the composition or coloring of the device is similar, or the overall structure of its combined elements is similar, or its three-dimensional shape and color combination are similar thereby is liable to mislead the relevant public to misidentify the source of the products or to misconstrue that their source is somewhat associated with products bearing the plaintiff's registered trademark.
In Michelin v Ningbo Jiaqi Arts & Crafts Co, Ltd, a trademark infringement suit that was selected as one of the SPC's 50 exemplary IP rights cases of 2020, the courts looked at a 2D figurative trademark being used in a 3D way. The case illustrates the possibility of different interpretations of such a situation.
Michelin is one of the world's largest tire manufacturers. It is also known for the Michelin Guide of restaurant ratings. Michelin registered its core trademarks – MICHELIN, "Michelin" in Chinese and the tire man device – in multiple classes, including class 28 (toys).
Ningbo Jiaqi Arts & Crafts Co, Ltd (Jiaqi) repeatedly exhibited products at the Canton Fair that used logos which were identical with or similar to Michelin's trademarks. In 2014, by filing a complaint against Jiaqi with the Complaint Reception for IP Rights and Trade Dispute of Canton Fair and sending a cease and desist letter to Jiaqi after the fair, Michelin obtained from Jiaqi a written undertaking not to engage in infringement again. In 2016, after finding that Jiaqi had been exhibiting and promoting toys depicting the tire man device, Michelin collected evidence (a product catalogue) and brought a civil action before the Haizhu District Court of Guangzhou. The case went through first-instance, second-instance and retrial proceedings, which:
- ruled in favour of Michelin;
- ordered cessation; and
- awarded damages of Rmb100,000.
Figure 1: registered trademarks 1 and 2
Figure 2: infringing products – image 1 and image 2
The case was successively tried by:
- the Haizhu District Court (first instance);
- the Guangzhou IP Court (appeal); and
- the Guangdong High Court (retrial).
In addition to the issue of whether Michelin's registered trademarks and the toys sold by Jiaqi were similar, the case also raised the question of whether the use of images 1 and 2 (Figure 2) and the act of selling these 3D toys constituted a use of the registered trademarks in the sense of article 48 of the Trademark Law.
Haizu District Court
The Haizhu District Court held that the use of images 1 and 2 did constitute trademark use since they aimed to advertise, promote and exhibit the toys in question. Further, the Haizhu District Court addressed the issue of similarity and held that image 1 was neither identical nor similar to registered trademarks 1 and 2 but that image 2 was similar to registered trademark 2 (but not to registered trademark 1).
Guangzhou IP Court
The Guangzhou IP Court took another view. It did not consider the similarity issue and instead held that the mere fact of printing the images in a catalogue did not constitute trademark use, thus concluding that the act in question did not commit trademark infringement. The Guangzhou IP Court even held that the toys themselves did not constitute trademark use, since:
- there was no label or any other sign attached to the products that could serve as a source identifier;
- the images referred only to spatial models, rather than 2D trademarks; and
- even if a purchase was made by a consumer, it was to be ascribed to the image used by the accused products rather than to confusion with the trademarks.
Guangdong High Court
The Guangdong High Court acknowledged that trademark use is a prerequisite for determining trademark infringement and opined that:
trademark use largely hinges on the user's objective to serve as a source identifier and whether such use effectively enables the relevant public to identify the source of the goods or services shall also be taken into consideration.
The Guangdong High Court analysed the use of the accused images as follows:
- Jiaqi had not used proprietary trademarks in its catalogue, merely indicating its company name, address and contact information on the back cover.
- Jiaqi had not used proprietary trademarks or any other logos on the products to indicate their source apart from the images, which were similar to the Michelin tire man.
- In light of the high reputation of the Michelin tire man, Jiaqi's purpose of using products with such a shape was to:
- direct the attention of the relevant public to the distinctive features of the tire man image;
- associate the toys with Michelin's trademarks; and
- cause confusion and misidentification among the relevant public.
- Jiaqi's catalogue depicted an array of toys using various images without indicating an explicit source. The accused images, which were highly recognisable, would lead the relevant public to misconstrue that the infringing toys were licensed by or associated with Michelin.
The Guangdong High Court affirmed that the distinctiveness and reputation of the iconic Michelin tire man had been reinforced through long-term promotion and extensive use to such an extent that the public associated it with Michelin. The Guangdong High Court elaborated in detail that the components and minutiae of the images at issue were almost identical to the registered trademarks, albeit with minor differences. The Guangdong High Court therefore concluded that the images at issue were likely to be associated with Michelin's tire man registered trademark, thus causing confusion or misidentification among the relevant public.
Based on the above, the Guangdong High Court affirmed that Jiaqi's use of the images at issue in the catalogue was purported to identify the source of the toys and that such images served as a source identifier and thus constituted trademark use in the sense of the Trademark Law.
The registration of 3D trademarks has repeatedly proven to be an uphill task in China. Brand owners that have no 3D trademark registrations have no option but to fall back on their 2D trademark portfolio in trademark enforcement actions. This can create difficulties because most Chinese courts remain conservative in finding trademark similarity in cases where an infringer uses a 2D registered trademark mark in a 3D manner. It is therefore to be welcomed that the Guangdong High Court has ascertained that using a figurative trademark in a 3D way constitutes trademark infringement.
It is also interesting to look at the matter of trademark use in this case. The Guangdong High Court adopted a twofold methodology in ascertaining trademark use, considering:
- the trademark user's objective; and
- the actual effect generated by such use, taking into account wilfulness and effective confusion.
It seems that the Guangdong High Court emphasised the importance of the intentional aspect, which could insinuate that it may be more likely to admit that infringement has been committed where it finds that there was an intention to create confusion.
For further information on this topic please contact Binbin Du at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.