[author: Lili Wang]

Preface

In recent years, the forms of trademark infringement have become more and more diverse. The Trademark Law, the Regulations for the Implementation of the Trademark Law and judicial interpretations have clearly stipulated that misleading the public by using a sign identical with or similar to another person's registered trademark as an enterprise trade name, product name or product decoration on the same or similar goods shall constitute trademark infringement. Similarly, misleading the public by using a sign identical with or similar to another person's registered trademark as a product model on the same or similar goods should also constitute trademark infringement. However, a registered trademark needs to possess the distinctiveness to identify the source of the goods, and usually, the product model is mostly a simple combination of numbers or letters, which lacks the distinctiveness as a trademark. Therefore, compared with the marks of enterprise trade name and product name, there are not many cases of disputes between product models and registered trademarks, but they may occur. How to protect the rights and interests of product models in actual use, and how to avoid or minimize the risk of trademark infringement? This article attempts to analyze this issue.

1. The Relationship between the Product Model and the Registered Trademark

As we all know, registered trademarks have the function of identifying the source of goods and are usually signs attached to products. Product models are the numbers used to identify the product, and usually refers to the codes used by manufacturers to identify their different products, marked with numbers or letters respectively for distinguishing purposes, and plays the role of product description to a certain extent.

Pursuant to Article 11 of the Trademark Law, signs merely composed of the generic name, figure or model of the product are generally considered to lack distinctiveness and shall not be registered as a trademark. Of course, if it acquires distinctive features through use and is likely to be identified, it can be registered as a trademark.

In addition, pursuant to Article 59 of the Trademark Law, if a registered trademark includes therein a generic name, figure or model of the designated goods, or composing elements directly indicating the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods, or the geographical names, the exclusive right owner to use the registered trademark shall not have the right to prohibit others from fairly using the above elements.

It can be seen that the generic product model should be commonly used in the country or a certain industry, and usually cannot be registered as a trademark, and even if it is registered, it cannot prohibit the fair use of others. Therefore, there is little chance that a generic product model will conflict with a registered trademark. However, if a non-generic product model is identical with or similar to the registered trademark of others, there is a risk of trademark infringement.

2. Factors to Determine whether a Product Model Constitutes Trademark Infringement

The following is an analysis of the factors to determine whether the use of non-generic product models constitutes infringement based on legal provisions and judicial cases.　　　　

• Cases where the court found that the use of product models constituted trademark infringement

• Cases where the court found that the use of product models is not use as a trademark and does not constitute trademark infringement

It can be seen from the above cases that in cases where the product model conflicts with the registered trademark, the fundamental criterion for judging whether it constitutes infringement is still whether it will cause confusion and misidentification among consumers. Specific factors for consideration include the following.

1. The distinctiveness and popularity of the plaintiff's trademark. The distinctiveness includes both the inherent distinctiveness and distinctiveness acquired through use. In particular, when the composing elements of the plaintiff's trademark are relatively simple and the inherent distinctiveness is weak, the distinctiveness acquired through use and promotion will be more important. This requires the plaintiff not to settle with the registration of the model as a trademark, but to regulate the use of the trademark in business activities, accumulate goodwill and enhance the distinctiveness of the trademark. Otherwise, as in the above Case No. 5, even having a registered trademark does not prohibit others from using the same or similar model.
2. The time, intention, way and effect of the defendant's use. Among the above, whether the defendant has the intention to free ride, although subjective, can usually be examined from whether the popularity of the plaintiff's trademark has extended to the defendant, that is, whether the defendant is aware of the existence of the plaintiff's trademark, whether the defendant highlights its own trademark or a sign similar to the plaintiff's trademark when indicating the source of the product, and whether there are other acts of infringement or unfair competition. In addition, if the defendant started using the product model even prior to the registration and application date of the plaintiff's trademark, it can also show to a certain extent that there is no intention of infringement.
3. How to Protect the Rights and Interests of Product Models

As mentioned above, in addition to playing a descriptive role, if some product models acquired or enhanced its distinctiveness through use, they will also play a certain function of identifying the source of the product, and enterprises can strengthen the protection of product models by filing for registration as trademarks in time. However, when another person registers the same trademark, the enterprise may claim that pursuant to Article 32 of the Trademark Law, the priorly used product model is an unregistered trademark with certain influence, and file an opposition or invalidation action to prevent others from registering the mark as a trademark.

In judicial practice, there are also cases where the "unique name of a well-known product" in Article 5, Paragraph 2 of the original Anti-Unfair Competition Law (currently "name of a product with certain influence" in Article 6, Paragraph 1 of the Anti-Unfair Competition Law) are applied, that is, the product model is recognized as the unique name of the product. For example, in the case (2011) Hebei Civil No. 3 Final No. 9, the defendant used another person's low-voltage electrical product model "BK" on the same product, and the court found that the low-voltage electrical product model "BK" constituted the unique name of a well-known product, and the defendant's conduct was an act of unfair competition. Therefore, if an enterprise found that others are preemptively registering or using product models with a high reputation of the enterprise and can be solely connected to the enterprise, it can also attempt to actively protect its rights by claiming its product models constitute a product name with certain influence.

Conclusion

Although the product model is different from the general commercial marks, there may also be a legal risk of infringement when used. When using a product model, in order to minimize the risk of infringement, an enterprise should search whether the model to be used is registered by others, and file for registration as a trademark on trial basis. If it can be registered as a trademark, attention should also be paid to regulating the use to ensure the validity of the trademark, which not only reduces the risk of infringement by oneself, but also prevents others from using it fraudulently. However, if it is found through search that the model to be used has been filed or registered by another person, it is necessary to avoid using the same or similar marks, or consider filing an opposition or invalidation action against the application or registration of others.

【Reference Cases】

1. (2019) Zhejiang 04 Civil Final No. 3299 Civil Judgment, Jiaxing Intermediate People's Court of Zhejiang Province

2. (2019) Guangdong Civil Final No. 3210 Civil Judgment, the High People’s Court of Guangdong Province

3. (2022) Shanghai 73 Civil Final No. 642 Civil Judgment, Shanghai Intellectual Property Court

4. (2017) Guangdong 03 Civil Final No. 9597 Civil Judgment, Shenzhen Intermediate People's Court

5. (2014) Yongci IP First Instance No. 96 Civil Judgment, the Primary People’s Court of Cixi City of Zhejiang Province

6. (2011) Hebei Civil No. 3 Final No. 99 Civil Judgment, the High People’s Court of Hebei Province