On December 6, 2010, Shenzhen Intermediate People's Court made the judgments (<2010> Shen Zhong Fa Min San Chu Zi Nos.209 and 155) in the cases that Genuineways on behalf of XXX Corporation (the “Plaintiff”) sued Shenzhen XXX Technology Co., Ltd. (the defendant selling the allegedly infringing ods) & Dongguan XXX Printer Consumables Factory (the defendant producing the allegedly infringing ods) (collectively the “Defendants”) for infringement of trademark. The court affirmed that the two Defendants’ use of the characters “适用于XXXXX” (compatible for XXXXX) and “EXXXXX YXXX VXXXX” on the allegedly infringing ink cartridges infringed the Plaintiff’s exclusive right to use the registered trademarks “XXXXX” No. 43XXXXX and “EXXXXX YXXX VXXXX” No. 46XXXXX, and that the two Defendants should cease infringement, remove the infringing representations on the ods in stock and compensate the Plaintiff in the amount of RMB240, 000 (RMB120, 000 in each judgment).
The above two cases involve two complicate legal issues in determining infringement in the present judicial practice on the protection of registered marks:
1. Boundary between reasonable use of other’s registered trademark and infringement
The development of the law always lags behind the development of society, which confronts every legal practitioner on how to address the emerging conflict in the real world with laws in a fair and just way. In the present cases, the special relationship between the compatible products manufacturers and the printer/photocopier manufacturers makes it necessary to label the brand of the printer/photocopier using the compatible products (ink cartridges and other consumables) to the consumers. The compatible products producers and sellers should, according to the principle of od faith, use the registered marks reasonably, that is, make a specific and clear instructional description of the function and intended purpose of the compatible products in detail, for example: this product is suitable for XXXXX branded printers, this product is to be used with XXXXX branded photocopiers, etc; the irregular use contrary to the principle of od faith will result in infringement of registered trademarks. Just like in mentioned cases, the two defendants directly marked the words "可用于XXXXX" or "适用于XXXXX" (compatible for XXXXX) on their allegedly infringing products at a prominent position, with the characters "可用于" or "适用于" (compatible for) significantly smaller than and much different from the word "XXXXX" in respect of font, style, color, visual effect, etc, which constitutes a prominent use liable to produce misidentification among the relevant public regarding the source of ods, and hence it constitutes an infringement.
2. The use of other’s registered trademark in combination with one’s own registered trademark also constitutes infringement of registered trademark.
In these cases, the two Defendants’ use of their own registered marks “XX” and “LXXXXX (Device)” above the words “EXXXXX YXXX VXXXX” constituted an infringement on the Plaintiff’s exclusive right to use the registered trademark.
In addition, the same allegedly infringing product of the Defendants infringed two registered trademarks "XXXXX" and " EXXXXX YXXX VXXXX ", for which Genuineways filed two lawsuits respectively, both of which were supported by the court.
The judgments give lessons not only to compatible products manufacturers on the use of registered trademark of the manufacturer of the printer and photocopier but also to the ancillary products manufacturers in a similar case. It is also conducive to a fair market competition between the two types of companies and the development of related industries, which will ultimately benefit the consumers.
