Consumers reported that hundreds of toilet water manufacturers became defendants, and the words “honeysuckle” were used carefully in packaging
“Honeysuckle” has obtained trademark registration in the commodity classification where the toilet water is located, and relevant enterprises have the obligation to actively avoid when designing product packaging.
Recently, Jiangxi health care and disinfection products industry association (hereinafter referred to as the “association”) reported to a number of media that 60 enterprises of its association were sued by Shanghai Bili Cosmetics Co., Ltd. (Shanghai Bili), the trademark holder of “honeysuckle”, for the production of honeysuckle related products, with a total amount of about 12 million yuan. In most judgments, enterprises were sentenced to constitute infringement and compensation.
Therefore, the Association issued an early warning to all member units and relevant enterprises on April 28, 2021, suggesting that enterprises take the products named “honeysuckle” off the shelves temporarily and sell them on the market after the honeysuckle trademark case is clarified.
Shanghai Bili was founded in September 1995. China Trademark network information shows that its 603857th “honeysuckle” trademark registration date is July 30, 1992, the registration period is valid until July 29, 2022, and its approved commodity is third categories, including cosmetics, moisturizing liquid, perfume, talcum powder, beauty cream.
Source: China Trademark network
Tianyancha app shows that Shanghai Bili’s “honeysuckle” trademark rights protection actions across the country have begun since 2019. As of January 13, 2022, the company had 123 court announcements and 79 legal proceedings, all of which were trademark infringement disputes.
The core content of Shanghai Bili’s appeal is that the defendant produced and sold goods with the same logo as the plaintiff’s registered trademark without permission, which constituted an infringement on the plaintiff’s exclusive right to use the trademark, seriously infringed on the plaintiff’s legitimate rights and interests, encroached on the plaintiff’s market share, caused great economic losses to the plaintiff, and demanded compensation.
Honeysuckle is the name of traditional Chinese medicine. It is the dry bud of honeysuckle or the flower with initial opening. It is named after the winter flower turns white at first and then yellow.
According to Ji Dongling, President of Jiangxi health care and disinfection products industry association, “It is industry practice to highlight the name of traditional Chinese medicine raw materials in disinfection products, such as wormwood lotion, Sophora flavescens antibacterial solution, etc. honeysuckle is Lbx Pharmacy Chain Joint Stock Company(603883) It is a well-known medicinal plant with heat clearing and detoxification effect. It is an important raw material of toilet water. If someone else has registered the ‘honeysuckle’ trademark, our products cannot be called ‘honeysuckle toilet water’, which will have a subversive impact on the whole industry. “
In fact, paragraph 1 of Article 59 of the trademark law stipulates that the exclusive right holder of a registered trademark has no right to prohibit others from using the general name, graphics and model of the commodity contained in the registered trademark, or directly indicating the quality, main raw materials, function, purpose, weight, quantity and other characteristics of the commodity, or the place name contained in the registered trademark.
Therefore, the sued enterprise often cites the above provisions as an important defense for its proper use of the name “honeysuckle”. However, in all cases up to now, except one case, the others have been ruled against.
Wu Meng, director of Beijing today’s law firm, told the interface news that as for the word “honeysuckle”, the “proper use” in paragraph 1 of Article 59 of the trademark law is to use the word when it is necessary to express this medicinal material, and avoid misunderstanding as a trademark in the way of use.
From the relevant judgment documents, the court recognized honeysuckle as an herb, which is indeed the raw material of toilet water. However, it also pointed out that “market entities have honeysuckle raw materials in the ingredients of the produced toilet water. They can use the word ‘honeysuckle’ on the toilet water products for the purpose of describing the specific raw material ingredients of the products, but they shall not use the above words as trademarks.”
Take tihuazhixiu as an example. In July 2021, Mingchen company was sentenced to stop production and sales of its tihuazhixiu “honeysuckle cool toilet water” for infringing the trademark right of Shanghai Bili “honeysuckle”, and compensate Bili company for 150000 yuan.
Mingchen company said that there is a trademark name of “Di Huazhi Xiu” on the toilet water package, while honeysuckle is only a commodity component. “Honeysuckle toilet water” is a general commodity name and does not use “honeysuckle” as a trademark, which will not cause confusion among consumers and naturally does not constitute infringement. In addition, the trademark of Bili company is designed artistic characters, which are arranged vertically as a whole, and the strokes are connected with each other, which is full of aesthetic feeling. The words of honeysuckle on the beautiful flower dew are similar to official script fonts, and there is no intention of deliberate imitation.
According to the relevant judgment published on the China judicial documents network, the court held that the word “honeysuckle” on the above toilet water packaging was located in a significant part of the front of the bottle body, using black bold artistic characters, which was clearly distinguished from the word “toilet water”. Judging by the proportion of size, the use of Mingchen company would confuse the public and infringe the trademark right of Bili company, Occupy the market share of Bili company, resulting in negative impact.
Wu Meng told interface news that “honeysuckle” has obtained trademark registration in the commodity classification of toilet water, which is a reality. There is no problem for the court to respect this fact and make a judgment.
In addition, the enterprises involved should also recognize this reality and have the psychology of taking the initiative to avoid risks. If you take chances, it will lead the judge to make a “subjective non goodwill” judgment. Because the suspected infringing party is a relevant product enterprise (or toilet water enterprise), it should know that “honeysuckle” is a trademark and have the obligation to actively avoid when designing product packaging.
If your product does not contain honeysuckle, do not use the word “honeysuckle”. If your product contains honeysuckle instead of main raw materials, don’t highlight the font of “honeysuckle”. If the main raw material of your product is honeysuckle, when highlighting this word, you should avoid other people’s prior trademarks and avoid public misunderstanding (for example, use one sentence, but do not use this word alone).
According to surging news reports, Ma Shihui, a lawyer of Shanghai Chuangyuan law firm, counted 111 judgment documents in which Shanghai Bili was the plaintiff. Between 2020 and 2021, enterprises sued by Shanghai Bili were awarded a maximum compensation of 165000 yuan and a minimum compensation of 15000 yuan. “It is estimated that Bili has claimed more than 10 million yuan in hundreds of lawsuits.”
