In recent years, high-end membership stores have been favored by more and more young people.

Comfortable environment, complete variety, thoughtful service and pleasant shopping experience become the first choice of leisure shopping nowadays, and "Sam member store" is the hot choice.

But have you ever found that the SAM member store around you may not have been opened by Wal Mart?

Unfair competition dispute case caused by "Sam" name

Case details

The Wal-Mart Store Inc was founded in 2003 as a wholly owned foreign legal entity. Chinese mainland has opened 15 "Sam member stores". Among them, the earliest Shenzhen Sam member store opened in 1996. After that, Sam member stores were opened in Fuzhou, Beijing and Shanghai, and the Tianjin Sam membership store was established in 2016.

Sam member stores adopt the same operation mode, and Wal Mart Company is the shareholder to establish a company, and the company or its branches and branches run Sam member stores.

Over the years, Wal-Mart Store Inc has continued to publicize "Sam's member stores" through its portal website, micro-blog, WeChat official account and so on. It refers to the "Sam" member store with "Sam", "place name + Sam".

Sam's member store has been registered as a trademark by Wal Mart's U.S. parent company in China.

Uncle Sam was founded in 2015, and operates frozen meat, aquatic products wholesale and retail.

Sam import and export company was established in 2015, and its business scope is import and export of goods and technology.

Darrendo company was established in 2015, and its business scope is import and export of goods and technology, site leasing, etc.

In 2016, darrendo signed the service agreement of "darrendo" Tianjin (Wuqing) cross-border direct purchase experience center with Sam import and export company, which stipulated that the e-commerce platform and shopping mall developed by darrendo company provide Sam import and export company with internet information release and commercial promotion.

The "Sam", "Tianjin Sam", "Sam safe food" and "Sam cross-border commodities" are highlighted in the online and offline experience stores and online promotion platforms of Sam safety food stores to publicize the products sold by them.

Wal Mart sued Sam uncle trading company Sam import and export company and darrendo company to stop infringement, eliminate influence and compensate for losses.

The court held that

Under the condition of long-term use and promotion of Wal Mart, Sam has established a specific relationship with the "commodity retail" service provided by Sam member stores invested and operated by Wal Mart, which constitutes the service name with certain influence on the commodity retail service.

Where the trademark law has been stipulated, the Anti Unfair Competition Law shall not be extended in principle. But in the specific scope permitted by the legislative policy, according to the principle of honesty and credit and the specific case, the anti unfair competition law can be applied to supplement the protection from the angle of stopping unfair competition.

Uncle Sam commerce and trade company and Sam import and export company improperly use the "Sam" mark in the market operation, which may cause confusion or misunderstanding of the source of goods or services, which constitutes unfair competition, and shall bear civil liability such as stopping infringement, eliminating influence and compensation for losses. Subsequently, the court made a decision according to law.

Court decision

The third defendant immediately stopped using the service name "Sam" enjoyed by Wal Mart on the online and offline platforms of Sam's safety food store.

The three defendants jointly compensate Wal Mart for its economic losses of 200000 yuan and the reasonable expenses incurred for the maintenance of rights of RMB 104000.

The third defendant published a statement of infringement in the tonight newspaper to eliminate the impact.

Other claims from Wal Mart were rejected.

Interpretation of judges

There are still some disputes in the theoretical and judicial practice about whether the mark that has become a registered trademark can obtain the protection of anti unfair competition law through the "name of the commodity with certain influence".

In this case, Wal Mart, when "Sam member store" has been registered as a trademark, does not choose trademark law protection, but advocates seeking protection through anti unfair competition law.

The effective judgment fully discusses the focus of the dispute, points out the relationship between trademark law and special law of anti unfair competition law. Generally, the law of knowledge products has been protected in the field. Generally, the anti unfair competition law no longer gives it the overlap protection. However, when the trademark owner who has already registered a trademark claims the protection of anti unfair competition law only through "the special name of famous goods", within the specific scope permitted by the legislative policy, the people's court shall, in accordance with the principle of honesty and credit, combine the specific case, especially when the obligee fails to seek trademark law protection or the trademark law can not fully and completely protect its rights and interests, The relevant obligees choose to apply the anti unfair competition law to protect the "commodity names with certain influence". The people's court should apply the anti unfair competition law to supplement the protection from the angle of stopping unfair competition.

The decision is helpful to explore whether the mark that has become a registered trademark can be protected by anti unfair competition law as "the name of the commodity with certain influence", and provides guidance for the similar cases.

[warm tips] source: Tianjin Gaofa. Copyright belongs to the original author. If there is any improper, please contact us for modification or deletion. Thank you.