Weekly China Brand Protection News

September 5, 2024

Descriptive use of “Xiongzai” indicating product shape does not constitute  trademark infringement

Recently, the Jinjiang Court of Fujian Province delivered a first-instance judgement in a trademark infringement case between Xiongzai Animation Co., Ltd. (“Xiongzai”) and Feilala Candy (Shanghai) Trading Co., Ltd. (“Feilala”) and the Baijie Central Park Store of Fujian Yonghui Supermarket Co., Ltd. in Quanzhou, Jinjiang provision (“Yonghui Supermarket”). The court held that the defendant’s use of the term “Xiongzai” on the names of its products during production and sales constituted legitimate use and did not infringe upon Xiongzai’s registered trademark rights.

Cited Marks

The court found that:

1. Feilala prominently displayed the “Fruit Flavor Forest” label in the center of the packaging for its “Fruit Flavor Forest Xiongzai Gummies, in Chinese” with the term “Xiongzai Gummies” in smaller font below, along with images of bears and fruits. The back of the packaging featured five bears, each corresponding to a different flavor, and the gummies themselves were bear-shaped.

2. According to Articles 48 and 59(1) of the Trademark Law, trademark use means using a trademark in commercial activities where it serves to identify the source of goods. Descriptive use of terms to indicate characteristics such as the shape, quality, main ingredients, function, purpose, weight, quantity, or other features of a product does not constitute trademark use under the law. In this case, the disputed product is bear-shaped gummies, and Feilala’s use of the term “Xiongzai” was intended to describe the product’s shape. This use aligns with the common practice of using animal names to label food and other related products in everyday life. The labeling did not exceed the scope of legitimate, reasonable use and would not lead the public into confusinf the source of the goods, thus constituting legitimate use. Therefore, the defendants’ use of the term “Xiongzai” on its product names during production and sales was deemed legitimate use and did not infringe upon Xiongzai’s exclusive rights to the registered trademark “Xiongzai.”

3. Additionally, the inherent distinctiveness of the term “Xiongzai” is relatively low, and the corresponding exclusivity as a registered trademark is weaker. The protection should be reasonable and appropriate, and it should not exclude or restrict others from using the term “Xiongzai” within its inherent meaning. Otherwise, it would result in an undue monopoly over the term, harming the legitimate rights and interests of other business entities.

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