Since October 2008, when Nestlé issued warning letters to dozens of domestic condiment companies using square soy sauce bottles to stop infringement regarding square bottle 3D trademarks, this battle has erupted in administrative and judicial proceedings.
Reporters recently confirmed that, in response to Kaiping Weishida Condiment Co., Ltd.'s request to confirm non-infringement of Nestlé's square bottle three-dimensional trademark rights, the Guangdong High People's Court has issued a final judgment, rejecting Nestlé's appeal and upholding the first-instance judgment, confirming that Weishida does not infringe on Nestlé's square bottle three-dimensional trademark rights. (Left image shows Weishida's square bottle)
The issues raised by this "soy sauce bottle" battle, such as "three-dimensional trademarks" and "product packaging," have drawn particular public attention. (Our newspaper previously reported on February 5, 2009, with "Focusing on the Background of the First Domestic Three-Dimensional Trademark Dispute," and on November 25, 2010, with "The First Domestic Three-Dimensional Trademark Dispute Again"
Trademark law expert Dong Baolin believes this is a typical case of "fair use of registered trademarks." Cheng Yongshun, Director of the Beijing Pragmatic Intellectual Property Development Center, called this case a positive exploration in determining infringement of three-dimensional trademarks. Li Shunde, Director of the Law and Intellectual Property Department at the Graduate School of the Chinese Academy of Social Sciences, emphasized that foreign countries strictly and cautiously protect three-dimensional trademarks, and China also maintains strict standards.
■ The court's second-instance judgment does not constitute infringement
On July 9, 2010, the Jiangmen Intermediate People's Court of Guangdong Province ruled on Kaiping Weishida Condiment Co., Ltd.'s request to confirm non-infringement of Nestlé's exclusive trademark rights, finding that Weishida Company did not constitute infringement. Nestlé appealed the first-instance verdict.
The Guangdong High People's Court held that the key points of dispute in this case were: first, whether Nestlé's registered trademark has distinctive distinctiveness; Second, whether the packaging, decoration, and trademarks used by Weishida Company as a whole could cause confusion or misidentification with Nestlé's registered trademarks.
The appellate court held that Nestlé's "brown square bottle with yellow pointed cap" three-dimensional mark constitutes a product container, and since this mark had already been used as packaging by many soy sauce producers in mainland before it was registered as a trademark, Nestlé's use of this registered trademark on the approved product "edible seasoning" has weak distinctiveness.
The court held that Weishida did not use the brown square bottle as a trademark, but rather as packaging material. Therefore, when making comparisons, it is necessary to consider all aspects visible to consumers, such as Weishida's soy sauce product packaging, decoration, and trademark, and compare it with the registered trademark in question.
The court also pointed out that Weishida used the brown square bottle as packaging, subjectively without any improper intent to free-ride, and objectively did not cause consumer confusion or misunderstanding, so Weishida's actions did not constitute infringement. In November 2010, the Guangdong Provincial High People's Court issued a final judgment, rejecting the appeal and upholding the first-instance judgment.
■ Foreign countries are very cautious about protecting three-dimensional trademarks, and only a few have been approved in China
China only began implementing registration protection for three-dimensional trademarks after the amendment of the Trademark Law in 2001. It is understood that in practice, three-dimensional trademarks mainly take three forms: first, three-dimensional marks that have no connection whatsoever to the designated goods or services; Second, the three-dimensional shape of the product packaging; Third, the three-dimensional shape of the product itself.
It is introduced that the three-dimensional shape of the product packaging and the product itself can also be protected objects of design patents. The exclusive right to design patents has a certain period, for example, ten years. After the protection period expires, it enters the public domain. Experts say this is to encourage innovation and balance the protection of rights holders and the public interest.
However, registering product packaging or the three-dimensional shape of goods as a three-dimensional trademark can be renewed through trademark renewal to provide indefinite protection. In a sense, this leads to the rights holder monopolizing product appearance and packaging resources, restricting the public's free use of these design resources and reducing public interests.
In a sense, the three-dimensional trademark system and the design patent system do have certain conflicts. Therefore, countries around the world, including China, that implement three-dimensional trademark systems, take a cautious approach to registering and protecting product packaging and three-dimensional shapes as three-dimensional trademarks.
It is reported that China's Trademark Office, Trademark Review and Adjudication Board, and courts have always been quite strict about the distinctiveness of such trademarks. Currently, the number of three-dimensional trademarks for product appearance and packaging approved and registered in China is not large. Main products include: Coca-Cola's "Cola" beverage bottles, Kraft Foods' triangle chocolates and their packaging boxes, and Ferrero's single-chip chocolate packaging.
Industry insiders told reporters that currently, only a few product packaging have been approved as three-dimensional trademarks, and there is significant controversy after registration.
■ The registration and protection of three-dimensional trademarks should focus on distinctiveness
Dong Baolin believes that all rights are limited, and trademark rights are no exception. The three-dimensional trademark "Brown square bottle with yellow pointed cap" is the appearance and utility model of soy sauce bottles. It is a mark with functional or economic value registered as a trademark, used by a single enterprise for a long time, which is detrimental to economic and social development. If such a mark is registered as a trademark, "the exclusive right holder of the registered trademark has no right to prohibit others from legitimate use."
Cheng Yongshun stated that the core of trademarks is their function of identifying the source of goods. The protection of exclusive rights by trademark law for registered trademarks is essentially about protecting the trademark's identification function, the goodwill of the trademark, and the order of a fair competitive market economy. Therefore, if others do not use the product in a way that causes confusion about the source of the goods, does not harm the core identification function and value of the registered trademark, nor does it harm its reputation, it does not constitute trademark infringement.
He emphasized that the standard for determining trademark infringement is confusion, not merely the similarity of trademark markings. The court's judgment in this case focused closely on "whether confusion was caused," grasping both the original intent of the law and the essence of the issue. In judicial practice, confusion judgments usually require a comprehensive consideration of multiple factors, including the core identifying role played by the most discriminating elements and the public's overall impression, with emphasis made according to the actual circumstances of each case.
Li Shunde emphasized that product packaging should be protected with caution as a three-dimensional trademark. Although more than 100 countries and regions worldwide already provide protection for three-dimensional trademarks, the registration and protection of product packaging as three-dimensional trademarks is generally very strict and cautious. Because the basic function of product packaging is primarily to contain and protect goods, making them easy to transport and store, rather than serving as a trademark to help consumers distinguish and identify products. Moreover, resources for product packaging are limited. If a few people improperly monopolize it as a registered trademark, it is clearly a serious infringement on public interests. Therefore, product packaging protected by three-dimensional trademark registration must already possess a "second meaning" in actual use, meaning that besides its own meaning, it indicates a special source of goods or services, meaning it already has distinctiveness after use.
Li Shunde pointed out that considering distinctiveness is not only the primary criterion for determining whether a trademark can be registered, but also an important factor that must be considered in trademark infringement litigation. Different trademarks have varying degrees of distinctiveness, and the strength of distinctiveness is also dynamically developed. Trademarks like "Aspirin" and "Nylon" were once prominent but have long become generic names for similar products and can no longer be used exclusively as trademarks.
The strength of trademark distinctiveness is closely related to the level of protection. Li Shunde said that as the Guangdong High People's Court clearly classified the disputed trademark "whether it has distinct distinctiveness" as the focal point of dispute in this case, it was one of the key factors enabling an objective and fair judgment.
The distinctiveness of a trademark, like trademark rights themselves, is geographical. "The determination of trademark awareness should be limited to within China. Even if the trademark is well-known abroad, it should not be recognized if it lacks or is not well-known in China." Li Shunde greatly appreciated the second-instance judgment for correctly reflecting this principle.
■ Background
Nestlé's brown square bottle three-dimensional trademark applied for Madrid International Trademark registration in 1995, and in 2002, the later application was extended to China. At that time, the Trademark Office of the State Administration for Industry and Commerce rejected the trademark application on the grounds of lack of distinctiveness.
During the rejection and review process, in June 2007, the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce made a decision approving the registration of the three-dimensional trademark.
In October 2008, Nestlé issued warning letters or filed complaints with the industrial and commercial administrative department to dozens of domestic condiment companies, demanding that the relevant companies stop infringing and destroy the suspected infringing materials.
Kaiping Weishida Condiment Co., Ltd. (hereinafter referred to as Weishida Company) is a leading enterprise in the industry. As one of the companies warned, it has responded positively to the infringement allegations. On one hand, he filed a legal dispute with the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce regarding the three-dimensional trademark; on the other hand, he filed a lawsuit with the Jiangmen Intermediate People's Court, seeking confirmation that his use of brown square bottle packaging did not constitute infringement of Nestlé's three-dimensional trademark rights.
Subsequently, in April 2009, the Kaiping Food Industry Association also legally filed a dispute against Nestlé's three-dimensional trademark.
On July 19, 2010, the Trademark Review and Adjudication Board ruled on Weishida's application for a dispute over the three-dimensional trademark, upholding the registration of the disputed trademark.
Weishida was dissatisfied with the ruling and filed an administrative lawsuit with the Beijing No. 1 Intermediate People's Court. On December 10, 2010, the court of first instance ruled that the Trademark Review and Adjudication Board's ruling examination procedure was illegal, ordering the Board to make a new ruling on the square bottle trademark dispute.
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