Recently, JT&N received (2018) JXZ No. 5482, No. 5483, No. 5484 and No. 5485 final administrative judgments of “Cailinji” time-honored trademarks. The People's High Court of Beijing revoked the first instance judgment in accordance with law, and it was in favor of our client. Lawyers Yong WANG and Dongping WANG, senior partners of JT&N, engaged in above 4 cases.
The case is complex because it involves the history of the time-honored brand and hot-dry noodles techniques. Based on that, mandatory lawyers of our firm made a lot of collation and research on the inheritance of traditional techniques, the ownership of rights and interests of time-honored brand and the connection between time-honored brand and trademark system in the process of the case. The court of the second instance adopted our proposal in the end.
In addition to protecting the legitimate rights and interests of the party, the victory of the case helps to maintain the market order in the hot-dry noodles industry and has typical significance in the practice of right protection of time-honored brands.
Background Information of the Case
In 1928, Mingwei CAI founded “Cailinji” hot-dry noodles brand. The brand has been operated and enjoying great reputation in the industry.
In 1955, Cailinji was transformed from the private sector into a public-private joint venture;
In 1966, Cailinji was transformed from a public-private joint venture into a state-owned enterprise whose name was Wuhan Cailinji Hot-dry Noodles Restaurant;
In 1995, Cailinji Hot-dry Noodles was approved to register “Cailinji” and its figure trademarks in the 30th and the 42th classes of commodities;
In 2008, to revive the time-honored brand and strengthen the protection of the brand, Cailinji Hot-dry Noodles Restaurant made reconstruction and established Wuhan Cailinji Electronic Commerce Co., Ltd. All related trademarks were registered under the company;
In 2011, Wuhan Cailinji Electronic Commerce Co., Ltd. declared manufacture skills to the administration and the skills were selected in The Intangible Cultural Heritage List of Hubei Province;
In 2013, Hubei Dingjinyao Catering Service Management Co. Ltd. was established. At the same year, Hanwen CAI, the son of Mingwei CAI, obtained 5% equity of the company. And then Hubei Dingjinyao Catering Service Management Co. Ltd. made rush registration of “Cailinji” trademarks.
The Viewpoint of Trademark Review and Adjudication Board
The word part of the controversial trademark, Mingwei CAI and Old Cailinji, completely includes the word part of the reference mark—“Cailinji”. The controversial trademark has the similar words and calling with the reference mark, based on which it should be regarded as similar trademark. Besides, documented evidence submitted by Wuhan Cailinji Electronic Commerce Co., Ltd. demonstrated that “Cailinji” trademark has great reputation in the hot-dry noodles industry and the two companies are peers.
On the basis of above factors, the coexistence of controversial trademark and reference mark on the similar commodity is likely to make related public think they come from the same market entities or have some other connections. The public may have confusion. Therefore, controversial trademark and reference mark has constituted similar trademark on the similar commodity of the Article 30 of Trademark Act. Trademark Review and Adjudication Board made ruling based on that: the controversial trademark shall be invalid.
The Viewpoint of the Court of the First Instance
When Hubei Dingjinyao Catering Service Management Co. Ltd. in which Hanwen CAI, the eldest son of Mingwei CAI, has the share, applied for the registration of the controversial trademark, “Mingwei Cai” who is one of founders of “Cailinji” and its figure were added to differentiate from the reference mark “Cailinji”. The related public can differentiate the controversial trade mark and reference mark via this addition and the historical origin that Mingwei CAI is one of founders of “Cailinji”. It is unlikely to produce confusion. Therefore, the application of registration of the controversial trademark doesn’t break the Article 30 of Trademark Act. Based on this, the court of the first instance revoked the ruling of Trademark Review and Adjudication Board and ordered the board to make ruling again.
The Viewpoint of the Court of the Second Instance
Effective judicial precedent, No. 1728 judgment cited by the original court, showed that the controversial trademark was not the same as its counterpart in the case, and two trademarks had certain difference in inscape and implication. Besides, the case involved in No. 1728 judgment is a review case of trademark rejection. The case of trademark application for rejection review is a unilateral procedure in which the registrant of reference mark and Wuhan Cailinji Electronic Commerce Co., Ltd. didn’t participate in the litigation with the failure to considerate service condition and popularity of the reference mark. Therefore, No. 1728 judgment failed to be reference for the case.
In terms of historic origin, service condition and popularity of “Cailinji” hot-dry noodles, “Cailinji”, as a brand of hot-dry noodles restaurant, was established by Mingwei CAI in the 1920s and 1930s. Cailinji Hot-dry Noodles Restaurant has witnessed joint state-private reform and the transformation of state-owned enterprise in the 1950s and 1960s under the special historical background. In this case, property rights and interests of “Cailinji” time-honored brand have been transferred. Wuhan Cailinji Electronic Commerce Co., Ltd. has functioned as an entity after the reconstruction and reorganization of the Cailinji Hot-dry Noodles Restaurant. It inherited the legitimate rights and interests of “Cailinji” time-honored brand and “Cailinji” trademark registered by Cailinji Hot-dry Noodles Restaurant which also made extended registration. “Cailinji” trademark has been used and published by Cailinji Hot-dry Noodles Restaurant and Wuhan Cailinji Electronic Commerce Co., Ltd. based on which “Cailinji” hot-dry noodles has been selected as Famous Chinese Snack, Best Chinese-favored Snack and Chinese Famous Snack. It has proved that “Cailinji” trademark has great popularity and business reputation. For related public, “Cailinji” trademark has fixed connection with Wuhan Cailinji Electronic Commerce Co., Ltd.
From the perspective of relationship between inheritance of intangible cultural heritage and trademark protection, in the submitted evidence, Wuhan Culture Bureau and Hubei Provincial Department of Culture granted honor certificate in May and September 2012 to Yongzhong WANG of Wuhan Cailinji Electronic Commerce Co., Ltd. as the representative inheritor of Cailinji hot-dry noodles manufacture skills. However, Hubei Dingjinyao Catering Service Management Co. Ltd. or Hanwen CAI didn’t been regard as the representative inheritor. Therefore, the company’s proposal that the shareholder Hanwen CAI used word of “Cailinji” via the identity of the son of Mingwi CAI lacks of fact and legal basis. In reality, in addition to the use of the word “Cailinji” in the controversial trademark, there is another way to demonstrate the cooperation of both sides and identify the fact that Hanwen CAI is the son of Mingwei CAI during the cooperative business operation between Hubei Dingjinyao Catering Service Management Co. Ltd. and Hanwen CAI. The company should try their best to draw a clear distinction with others’ registered trademarks. It should avoid “Cailinji” trademark that has been registered legally rather than apply for the registration of the trademark that completely includes inscape or major identification part that has been used.
As the controversial trademark completely includes word and inscape of reference mark, with the combination of great reputation in hot-dry noodles commodity of both brands, related public is likely to be confused if there is the coexistence of similar commodity. As a result, the controversial trademark and reference mark constitute similar trademark on the similar commodity in the Article 30 of Trademark Act. It shall be declared null and void. Grounds of appeal of Trademark Review and Adjudication Board and Wuhan Cailinji Electronic Commerce Co., Ltd. can be established.
In conclusion, The People's High Court of Beijing made the final judgment. The court revoked the first instance judgment in accordance with law and dismissed all claims of Hubei Dingjinyao Catering Service Management Co. Ltd.
Typical Significance of the Case
Possible judgment of trademark confusion should not only consider the inscape and overall visual effect of the trademark, but also incorporate the significance and popularity of related trademarks into the consideration and verify relational degree of used commodity. With the consideration of all above factors, whether the coexistence of two trademarks leads to the confusion of related public can be judged finally.
In the case, trademark similarity, past judicial precedent, historical background of time-honored brand, the popularity of the reference mark, and inheritance and protection of intangible cultural heritage are taken into consideration, and cohesive relations between time-honored brand and trademark system and major difference between time-honored brand inheritance and family property inheritance are clarified. It has great guiding significance on the settlement of ownership dispute and historical inheritance of time-honored brand. Meanwhile, in the participation of the case, mandatory lawyers of our firm adopted history review, origin reconstruction, structured description of brand story and other litigation skills. These skills have certain reference value for subsequent similar cases.