“YIJUNDUO” Being Sued, for Infringement against Trademark Right and Exclusive Package and Decoration of Famous Merchandise of Yakult
Guide
Recently, as attorney of YAKULT HONSHA CO., LTD, Linda Liu has successfully maintained lawful rights and interests of the obligee in the case of trademark infringement and malfeasant competition of YIJUNDUO. Shanghai Intellectual Property Court, Court of Second Instance, upheld the original judgment of the first instance and determined that, as YAKULT product constitutes exclusive package and decoration of famous merchandise, the infringer infringes the word trademark right and the three-dimensional trademark right of the obligee, forming trademark infringement and malfeasant competition, and shall pay a total of 700, 000 yuan to YAKULT HONSHA CO., LTD as compensation for economic losses and reasonable expenses.
Those who have kids in their family must be familiar with the products of Yakult, a kind of beverage most children have tasted. Early in this year, Shanghai Intellectual Property Court received an appeal involving lactic beverage, in which the obligee of Yakult sues Yijunduo. Shanghai Intellectual Property Court opened a public hearing for this case in May and organized relevant personnel of Shanghai Food and Drug Administration as audience throughout the proceedings. The case in question is closed recently, with Shanghai Intellectual Property Court upholding the original judgment in the second instance.
(on the right is Attorney Jie CHEN and Attorney Bowen YU from Linda Liu)
Zhejiang Guoran Food Co., Ltd (hereinafter referred to as “Guoran”) shall immediately cease the infringement against the right of exclusive use of registered trademark of Yakult Honsha Co., Ltd (hereinafter referred to as Yakult Honsha), immediately stop the use of the package of five items forming a row and decorations that are similar to the exclusive package and decoration of famous merchandise of the Yakult product, and shall pay a total of 700, 000 yuan to Yakult Honsha as compensation for economic losses and reasonable expenses. Shanghai Luckmart Supermarket Co., Ltd (hereinafter referred to as Luckmart) shall immediately cease the sale of the Yijunduo fermented-flavor dairy beverage.
Yakult Honsha was founded in January, 1949. Shanghai Yakult Co., Ltd (herein after referred to as “Yakult Shanghai”) and Yakult (China) Marketing Co., Ltd (hereinafter referred to as “Yakult China”) are companies established by Yakult Honsha as investment in China. The product involved in this case has two Chinese translations, namely, “Yiliduo”, mainly sold in the region Guangdong Province, and “Yangleduo”, sold in regions other than the sale region of “Yiliduo”. Yakult Honsha is entitled to the copyright for the package and decoration of “Yiliduo” and “Yangleduo”, including the single bottle container and five items forming a row, and the right of exclusive use of several registered trademarks of “Yiliduo”.
Yakult Honsha, the plaintiff, found that Guoran, the defendant, without permission and arbitrarily uses package containers similar to the involved product of this case for a dairy beverage produced by the defendant and sold by Luckmart, and an identification of “Yijunduo” that is similar to the registered trademark “Yiliduo”, constituting malfeasant competition with infringement against the trademark right of Yakult and arbitrary use of exclusive package and decoration of famous merchandise. The infringement behavior of the two defendants causes huge economic losses to the plaintiff. Therefore, the plaintiff filed the appeal to the court and request a decision of the court that the two defendants immediately cease the behavior of producing, selling and promoting the “Yijunduo” fermented-flavored dairy beverage, destroy the inventory and relevant promotion materials and information, recall and destroy all of the not-yet-sold “Yijunduo” fermented-flavored dairy beverage and promotion materials, and pay an amount of 1.2 million yuan to the plaintiff as compensation for its economic losses and reasonable expenses.
Guoran, the defendant, asserted that the trademark “Yijunduo” used on the accused infringing product is a common name; the single container used for the accused infringing product is an industrial common container, and is significantly different from the product of the plaintiff in shape, and thus will not cause confusion of the relevant public.
The court of first instance states the following opinions after reviewing the case: the accused infringing product constitutes the same or similar goods of the 7 goods permitted to use the trademark involved in this case claimed by Yakult Honsha. Guoran marks the single containers and the outer package of its product with “Yijunduo”, which functions to distinguish the source of goods and plays the role of commercial signs, and thus is used as trademark; moreover, it is not a common name. According to a comparison, the Chinese characters of “Yijunduo” and the word trademark “Yiliduo” claimed by Yakult Honsha are different merely in one character, and have similar pronunciations and similar typefaces; the combined use of “Yijunduo” and brackets of Guoran is similar to the two-dimension combined trademark claimed by Yakult Honsha both in combination of characters and the configuration of graphics; the combined use of the characters of “Yijunduo” and the single container of its product is similar to the three-dimension combined trademark claimed by Yakult Honsha in structure, shape and overall visual effect; further, though the high popularity of “Yiliduo” product is mainly within the region of Guangdong Province, Guoran, who runs business in the same industry, is unlikely to have no knowledge of the trademark and the product of “Yiliduo”; yet Guoran still uses “Yijunduo” that is similar to “Yiliduo” as a commercial sign for its product in the same category; such behavior of Guoran is apparently out of subjective intention to play up to the popularity of the trademark. Hence, the court of first instance determined that the behavior of Guoran of using the identification “Yijunduo” constitutes infringement against the right of exclusive use of registered trademark of the plaintiff.
In addition, on perusal, the package and decoration of “Yangleduo” is exclusive package and decoration of famous merchandise. After performing a comparison between the package and decoration of five items forming a row of the two parties’ products, the package and decoration of five items forming a row used by the product of Guoran adopts the same elements with “Yangleduo” products, constituting similarity in package and decoration. Therefore, Guoran conducted an act of arbitrary use of package and decoration of famous merchandise, constituting malfeasant competition.
The court of first instance decided that Guoran shall immediately cease the infringement against the right of exclusive use of registered trademark of Yakult Honsha, immediately cease the use of the package and decoration of five items forming a row similar to the exclusive package and decoration of the famous merchandise “Yiliduo” and “Yangleduo”, and pay a total amount of 700,000 yuan as compensation for the economic losses and reasonable expenses of Yakult Honsha; in addition, Luckmart shall immediately cease the sale of “Yijunduo” fermented-flavored dairy beverage produced by Guoran.
Guoran was not satisfied with the judgment of first instance and filed an appeal.
After reviewing the case, Shanghai Intellectual Property Court stated the following opinions: the identification of the accused infringing product is similar to the main combination trademark of the respondent; the overall package and decoration of the accused infringing product is similar to that of the product of the respondent; and the slight different in the package of the accused infringing product is not sufficient to avoid confusion of the general public. Therefore, the behavior of Guoran constitutes infringement against the right of exclusive use of registered trademark of the respondent and malfeasant competition. The second instant upholds the original decision.
Date: July 20, 2017
Place: Shanghai Intellectual Property Court
