Case of the Week | Asserting infringement of multiple types of trademark exclusive rights simultaneously to circumvent disputes over product categories

Lawyer Zhan Shaofen, Director of the Intellectual Property Department, graduate of the Management Science and Engineering Department, School of Business, Hohai University, holds qualifications such as patent agent and Class 1 construction engineer, is a member of the first batch of intellectual property appraisers of the China Intellectual Property Research Association, and is dedicated to handling intellectual property, construction contract, and private lending civil and commercial disputes and providing related legal services.

Contact Information: Tel: 18958081319 Email: zhanshaofen@htxls.com

Simultaneously claiming infringement of multiple trademark exclusive rights, avoiding the risk of product category disputes

Case Summary

Xu Moumou is a glue manufacturer and has registered a series of glue product trademarks. The brand products it supplies are in the mid-to-high price range in both domestic and international markets. Xu Moumou found on a large online product wholesale platform that many stores produce, sell, and promise to sell glue products with trademarks similar to those registered by him, F6000 The trademarks are similar, and their prices are lower than or even significantly lower than the price of Xu Moumou's genuine products, seriously damaging Xu Moumou's legitimate rights and interests. Therefore, Xu Moumou sued multiple suspected infringing entities for infringement of trademark rights and unfair competition.

Agency Strategy

  Xu Moumou sought legal representation from Lawyer Zhan Shaofen of this firm. After communication, 2015  year  3  month  14  day, Xu Moumou obtained the  13850873  No. " JRF6000 " registered trademark, with the designated goods being Class  1 industrial glue; 2018  year  12  month  28  day, Xu Moumou obtained the  28116301 No. " F6000 " registered trademark, with the designated goods being Class  16  Class office and household glue. The main markings on the suspected infringing product packaging are " BLAIENF6000 ", and the advertised uses are quick-drying adhesives for handicrafts, plastics, paper, mobile phone screens, etc.

After analysis, Lawyer Zhan proposed the following agency strategy:

1. Simultaneously claim that the accused infringing products infringe on Class  1 " JRF6000 and Class  16  " F6000 " registered trademarks. Because the suspected infringing products are tubular glue, with models such as 50ML、110ML and have diverse advertised uses, if only the infringement of Class  1 industrial or Class  16  office trademarks is claimed, the defendant may claim that the products they sell belong to another category of products, different from the category of the trademarks involved in the case, which does not constitute infringement. This may lead to disputes over product categories during the trial, and may even lead to the failure of rights protection.

2. Simultaneously claim that the packaging of the accused infringing products constitutes unfair competition. Infringement of trademark rights and unfair competition are not contradictory; they can exist independently or coexist, and if they coexist, the amount of compensation can be increased.

During the trial, the court asked the plaintiff to clarify which trademark right of the plaintiff was infringed by the accused infringing product? Lawyer Zhan asked the defendant's agent to clarify first which category of product the accused infringing product they sold belongs to, whether it is Class 1 or Class 16 products. Afterwards, the plaintiff clearly stated that the plaintiff claimed that the accused infringing product infringed on the plaintiff's trademark rights of two categories, because the accused infringing product is tubular, and the use and category distinction are not obvious.

Judgment Result

The court held that the sales price of the accused infringing product was significantly lower than the market price, the defense of legitimate source was not established, and its main marking on the packaging " BLAIENF6000 " and Xu Moumou's No.  1 " JRF6000 and Class  16  " F6000 " registered trademark constitute similarity. The court ruled that the defendant infringed Xu Moumou's trademark rights.

Case Analysis

One of the risks for trademark right holders is that during the trial, the defendant may claim that its products are different from the registered categories of the trademarks involved in the case and do not constitute infringement. Once caught in a dispute over product categories, the difficulty of evidence presentation for the right holder increases, and the pressure on the judge to determine whether there is infringement increases. If the right holder only claims infringement of one category of trademark, the risk of failure of rights protection greatly increases.

In this case, simultaneously claiming infringement of multiple categories of trademarks successfully avoided the risk of disputes over product categories. No matter what category the defendant claims its products belong to, it infringes at least the trademark of the corresponding category of the plaintiff, and the defendant cannot quibble about the product category during the trial.

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