Weekly China Brand Protection News

September 20, 2024

The Supreme People’s Court, upon review, has recognized “Ronghua Mooncakes in Chinese” as a distinctive name of a well-known product

The Supreme People’s Court of China issued a retrial judgment between the plaintiffs, Wing Wah Cake Shop Limited (“Hong Kong Wing Wah”), Dongguan Wing Wah Cake Shop Limited (“Dongguan Wing Wah”), and the defendants, an individual Su, Foshan City Shunde District Su Wing Wah Food Co., Ltd. (“Su Wing Wah”), and an individual Huang, regarding a trademark infringement and unauthorized use of distinctive names, packaging, and decoration of well-known goods dispute. The court ordered Su Wing Wah and Su to immediately stop the production and sale of the infringing products and to destroy the infringing goods, as well as to compensate for economic losses of CNY 500,000 (USD 68,500).

Cited Marks

Accused Infringing Products

The court found the following:

I. Regarding whether the accused infringing products infringed upon Hong Kong Wing Wah’s trademark rights

Hong Kong Wing Wah and Dongguan Wing Wah claimed the accused infringing products were mooncakes, identical to their Cited Marks’ approved goods. Upon comparing the packaging and decoration of the accused infringing products with the Cited Marks, it was found that the packaging and decoration of the infringing products used a design featuring peony flowers with leaves. The petals, stamens, and leaves of the peony were similar to those in registered trademark reg. no. 600301. Additionally, the infringing products’ packaging prominently featured a design of a peony with leaves, accompanied by a moon in the background, with the positioning and composition of the peony and moon being similar to those in registered trademarks with reg. nos. 1567181, 1567184, 1567182, and 1567183. Moreover, the “Fragrant Double-Yolk White Lotus Paste Mooncake” used a dark blue background with a yellow moon behind the peony, further resembling trademarks reg. nos. 1567182 and 1567183.

Su and Su Wing Wah used signs similar to Hong Kong Wing Wah’s Cited Marks as a prominent part of the packaging and decoration of the accused infringing products, serving as an identifier of the product’s origin. This unauthorized use capitalized on the distinctive features of Hong Kong Wing Wah’s Cited Marks, potentially causing the relevant public to mistakenly believe that the products originated from Hong Kong Wing Wah or that there was a specific connection between the products and the registered trademarks of Hong Kong Wing Wah. This amounted to the use of a mark similar to another party’s registered trademark on the identical type of product, misleading the public and infringed Hong Kong Wing Wah’s Cited Marks.

II. Regarding whether the accused infringing acts constituted unfair competition

First, Hong Kong Wing Wah provided substantial evidence to demonstrate that as early as the 1960s, it and its associated companies had been advertising their mooncake products in Hong Kong, linking the products with the corporate name “Wing Wah” and gradually using marks such as “Wing Wah,” “Wing Wah Mooncake,” and the “Full Moon and Flowers” design. In 1987, Hong Kong Wing Wah and its associated companies began establishing sales entities in mainland China. From then on, the company continuously promoted and sold its “Wing Wah Mooncakes,” starting in the Guangdong region.

Second, based on the duration, geographical reach, target market, and continuous promotion of the “Wing Wah Mooncake” brand, as well as the honors received by the product and its recognition as a well-known product, by 1997—when Su obtained  trademark and up to the time of the alleged infringement—Hong Kong Wing Wah’s “Wing Wah Mooncake” had already become a well-known product. The combination of the “Wing Wah Mooncake” text and the “Full Moon and Flowers” design, which Hong Kong Wing Wah and Dongguan Wing Wah Company had used on their packaging for many years, had become a distinctive identifier, clearly indicating the product’s origin. This combination had become a distinctive name and packaging decoration for a well-known product. Moreover,  in the packaging decoration indicates the source of goods and should be objectively considered as a well-known product name.

Third, in the mooncake market, both Hong Kong Wing Wah’s well-known “Wing Wah Mooncake” and products bearing the registered trademarks  owned by Su existed side by side. The public could differentiate between  and  the two brands. Therefore, both parties had an obligation to exercise a higher standard of care and responsibility in conducting their business, respecting the rights of each other and protecting the rights of consumers. Hong Kong Wing Wah should be allowed to continue using the “Wing Wah Mooncake” text in its traditional manner, while Su and Su Wing Wah were required to use their registered trademark  strictly according to its registration, which involved the use of the “Wing Wah” text inside a circle, with the text being a bold, stylized font, and placed within the circle.

In this case, the accused infringing products sold by Su and Su Wing Wah used the traditional Chinese characters for “Wing Wah” and “Wing Wah Mooncake” along with the peony and moon designs on their packaging and decoration, while using their registered trademark  in a less conspicuous location. Although Hong Kong Wing Wah could not invalidate the legitimate use of Su’s registered trademark, Su and Su Wing Wah altered the elements of their registered trademark by using “Wing Wah” or “Wing Wah Mooncake” in a form that was distinctly different from their registered trademark, thus changing the distinctive features of the registered trademark . This improper use constituted imitation of Hong Kong Wing Wah’s well-known product, leading to consumer confusion and causing the public to mistakenly believe that Su Wing Wah’s mooncakes were actually Hong Kong Wing Wah’s “Wing Wah Mooncakes.” Furthermore, the similarity of the peony, moon, and overall composition in Su Wing Wah’s packaging to Hong Kong Wing Wah’s “Full Moon and Flowers” design contributed to the confusion. The use of the registered trademark in an inconspicuous location was insufficient to distinguish the origin of the product. Therefore, the court ruled that Su and Su Wing Wah’s actions constituted unfair competition.

Last, to protect consumer rights and avoid confusion, the court required Su and Su Wing Wah, as operators in the same industry, to follow the principles of good faith, abide by the law, and respect commercial ethics. They were prohibited from using the “Wing Wah” or “Wing Wah Mooncake” text on mooncake products, packaging, or containers, or in mooncake-related transaction documents without adding additional identifiers to clearly distinguish the origin of their products. When referring to their mooncakes in advertising or communications, they must include identifying markers that differentiate their products from those of Hong Kong Wing Wah and Dongguan Wing Wah, ensuring that there is no confusion or association with Hong Kong Wing Wah and Dongguan Wing Wah’s products in the minds of the public.

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