CASE 5:

“BAOSHIFU” TRADEMARK INFRINGEMENT

◆ First instance: (2018) Su 8602 MinChu 104

Jiangsu Province

[Headnotes]

The owner o f a registered trademark shall regulate the use of his trademark on the goods or services approved by the State Administration for Industry and Commerce (SAIC) and shall not exceed the boundariy of the exclusive right to use the registered trademark.

When the owner of the registered trademark uses a trademark or its part which is the same as or similar to another registered trademark of others, and uses it on the same or similar goods or services approved by the registered trademark of others, and falls into the protection scope of the registered trademark of others, constitutes trademark infringement, it shall bear liability.

[Synopsis]

Plaintiff: Beijing Bao Caisheng Food Co., Ltd. (Bao Caisheng)

Defendant: Chen Haiqi

The plaintiff, Bao Caisheng, obtained the word trademark No.12484211 “” in class 30. The approved use of goods includes cakes, bread, biscuits, puddings, twists, moon cakes, meringue cakes, fruit breads, pies (dessert). A third party, Yishang Co., Ltd with the approval of the Trademark Office of the State Administration for Industry and Commerce, registered the trademark No. 17899179 “” in class 30, and was approved to use the mark on commodities including coffee, tea, bread, eight-treasure rice pudding, flour, noodles, condiments, soy sauce, ice cream, baking agent; trademark No. 17899096 “” was registered in class 43. On May 30, 2017, Yishang Co., Ltd authorized a use contract licensed to Chen Haiqi to regulate the use of trademarks according to No. 17899096 and No.17899179 in product packaging, corporate plaques and publicity materials. Bao Caisheng believed that Chen Haiqi was infringing on its exclusive right to use registered trademarks and brought the case to court.

The first trial of the Nanjing Railway Transport Court held that in this case, the defendant Chen Haiqi sold a variety of baked confectionery products in the shops he operated and used the registered trademark No. 12484211 “”, to which the plaintiff Bao Caisheng had the exclusive right, in a similar scope. The “Bao Shifu” and “Bao Shifu Pastry” word trademarks used by the defendant in the shops they operated are similar to the registered trademark No. 12484211 “”, which is enough to cause confusion among the relevant public as to the source of the goods. The defendant used the mark s imilar to the registered trademark of the plaintiff on the same commodity without the permission of the registered trademark owner, which constitutes an infringement of the plaintiff’s exclusive right to use the registered trademark.

Regarding the defendant’s argument that the logo used on the sale of the pastry has a legitimate source, the court held that the defendant had the right to use the registered trademarks No.17899096  and No. 17899179  in the scope and during the validity period of the license, in classes 30 and 43 respectively. However, the defendant’s use of the abovementioned trademarks to sell pastries was inconsistent with the goods/ services approved by the trademark registered to Yishang Co., Ltd. and inconsistent with the trademark registered to Yishang Co., Ltd The defendant did not regulate the use of the registered trademark as authorized by Yishang Co., Ltd. The existing evidence is not enough to prove that the alleged infringement mark was provided by Yishang Co., Ltd, so the court refused to accept the defense.

In summary, the Nanjing Railway Transport Court made a first instance judgment: the defendant Chen Haiqi must stop using the same or similar trademark on the pastry products as the registered trademark No.12484211, and compensate the plaintiff Bao Caisheng’s economic loss within 10 days from the effective date of the judgment (including reasonable expenses) totaling 50,000 Yuan; the court rejected other claims of the plaintiff Bao Caisheng. After the judgment, neither party appealed, and the first instance judgment took effect.

[Judge's Comment]

Private enterprises use registered trademarks on their own products or services and continue to accumulate reputation through production and operation. However, this process sometimes attracts malicious interest from others, causing consumers to confuse the source of goods, which in turn affects the normal operation of private enterprises. In this case, the plaintiff Bao Caisheng was a private enterprise established only in 2015. Through two or three years of operation, it created a viral brand “Bao Shifu”. At the same time, some speculators also quickly followed suit. In the market, various “Bao Shifu Pastry Shop”, “Bao Shifu Union” and “Bao Shifu’s Official Website” and other counterfeit brands emerged. In the face of the grim situation, the plaintiff had to carry out anti-counterfeiting rights protection actions throughout the country. This case is the first case of the plaintiff’s trademark rights protection.