First-instance case number: (2018) Sichuan 01 Preliminary Civil Judgement No. 2732

Trademark use is the prerequisite for trademark infringement determination. Usually, the trademark and the product should be physically and conceptually separable; when the trademark itself is a commodity, and the two are physically difficult to separate, whether the way belongs to the "trademark use", should be comprehensively analyzed from the objective way of information transmission and the subjective state of information reception to determine whether the trademark can be conceptually distinguished from the product, and whether the separated information is indicative of the source of the product.

Case introduction

Plaintiff: Louis Vuitton Malletier

Defendant: Yang Wei

The plaintiff, Louis Vuitton Malletier, is the owner of the "LV" word trademark No. 241023, the LOUIS VUITTON" word trademark No. 240996 ", the "quatrefoils" graphic trademark No. 1111913 and the "monogram" graphic trademark No. G852773. The approved commodity categories for the above-registered trademarks are all Category 14, including earrings, necklaces, rings, bracelets, etc.

The defendant Yang Wei is the operator of a Taobao shop named "Xiaoxiaobaozipu". On May 17, 2018, Louis Vuitton Malletier notarized the purchase of two necklaces (accused infringing goods 1 and 2) from the aforementioned Taobao store, and found that the store also sold two other allegedly infringing necklaces (accused infringing goods 3, 4).

Louis Vuitton Malletier claimed that the use of the words "LOUIS VUITTON" and "LV" on the buckle and tail chains of the accused goods 1 and 2, as well as the quatrefoils-shaped necklace pendants of the accused goods 1-4, infringed the exclusive right to use the four trademarks, and requested an order that Yang Wei to stop producing and selling the infringing necklaces, destroy the stock, and compensate RMB 400,000 for economic loss and RMB 90,000 for reasonable expenses.

The Chengdu Intermediate People's Court of Sichuan Province held that the use of "LOUIS VUITTON" and "LV" on the accused infringing goods 1, 2 necklace buckle and tail chain infringed the exclusive right of the plaintiff's registered trademark No. 240996 and No. 241023, respectively. However, whether the pendants used in the four alleged infringing goods constituted "trademark use" should be analyzed.

According to the provisions of Article 48 of the Trademark Law of the People's Republic of China, based on the interpretation of the context, the expression "use the trademark on goods" in the article already contains the meaning of the different objects of the trademark and the goods, that is, the trademark and the product fixed on a certain carrier can be physically separated from each other, or the trademark as information can be separated from the product in concept; at the same time, the expression "used to identify the source of goods" also clearly points out the trademark separated from the goods and detached from the goods should have the function of indicating the source of the goods. Since the shape, pattern, and color of the pendant almost determine the aesthetic value of this kind of necklace, the "quatrefoils" and "monogram" expressed by the pendant in the case through the shape, pattern and color do not belong to a mark that can be physically separated from the product. For this method of use that cannot be physically separated, it is necessary to comprehensively analyze the objective method of information transmission and the subjective state of information reception to determine whether the trademark can be conceptually distinguished from the product and whether the separated information is indicative of the source of the goods. As Louis Vuitton Malletier failed to prove in this case that the relevant public has understood the "quatrefoils" and "monogram" pattern as trademarks, nor did it prove that the direct reproduction of the pendant design was a common practice in the use of trademarks. Therefore, it is difficult for the relevant public to interpret the trademark information from the design of the pendant in question. Thus, the necklace pendant is not a trademark use, nor is it a product infringed the exclusive rights of registered trademarks No. 1111913 and No. G852773.

In summary, the court finally decided: Yang Wei stopped selling infringing goods and compensated Louis Vuitton Malletier for economic losses of RMB 18,000 and reasonable expenses of RMB 1,5867.5. After the verdict was pronounced in the first instance, neither party appealed.

Typical meaning

When the product or part of the product is identical or similar in appearance to the trademark, should it be the object of trademark protection? Because the goods themselves have the function of use, if they are completely prohibited, the scope of protection of trademarks will obviously be unduly expanded; if they are completely denied, they may harm the interests of trademark owners and encourage "using legal loophole" behavior. Therefore, this case proposes a "comprehensive analysis from the objective way of information transmission and the subjective state of information reception" to balance the functional limitations of trademarks with the design space of goods.

First of all, from the perspective of the way of information transmission, it should be examined whether the design of the product is different from the conventional design, or the design distinguishes aesthetic information from other identification information. Beyond the conventional design approach to appearance, intentional labeling, and deliberate differentiation, it is usually easier to have the same carrier convey multiple messages. In this case, flowers, symmetry, contrasting colors and their combinations are commonly used design elements and techniques for jewelry products. The pendant involved in the case has no special features in the use of the patterns of "quatrefoils" and "monogram". The simple presentation of the above patterns on the pendant does not indicate or imply that there is a meaning other than the meaning of flowers. Therefore, from the perspective of information transmission, the necklace pendant, in this case, has no design elements to convey the origin of the goods.

Secondly, from the way of information receiving, it is necessary to examine whether the relevant public can interpret product aesthetic information and usage information other than identification information from the product design. The interpretation of information by the relevant public is not only related to the information itself, but also related to its subjective state such as memory. If in the cognition of the relevant public, the use of specific words, patterns, or the use in specific locations of the product has other meanings, then it is also easy to interpret other information. However, in this case, Louis Vuitton Malletier failed to prove that the "quatrefoils" and "monogram" patterns are sufficiently well known to be understood by the public as trademarks, and it is, therefore, difficult to conclude that the pendant involved in the case could have indicated the origin of the goods.