In the dispute of trademark infringement between "Big Walnut" and "Six Walnuts", the court ruled that: at a glance, the packaging is similar to the well-known trademark, which constitutes infringement!

"Always use your brain and drink six more walnuts." This easy to understand advertising language makes the walnut milk beverage brand "Yangyuan Six Walnuts" widely known.

The packaging of "Big Nuts" is similar to that of "Six Nuts", so its manufacturers and distributors were sued to the court for compensation.

After the first and second trials, the case of infringement of trademark rights and unauthorized use of special packaging and decoration of well-known goods was finally settled.

"Big Walnut" Comes into the Market

Yangyuan Company was established in Hengshui City, Hebei Province. The "six walnuts" walnut milk protein drink produced and sold by the company is a well-known brand.

Aohua Food Factory was established in Shaoyang City, Hunan Province. It produces and sells drinks such as "Big Walnut" and has applied for the registration of the trademark of "Big Walnut".

A grocery store located in Luocheng County, Hechi City is the distributor of the "Big Nuts" drink of Aohua Food Factory. It sells the "Big Nuts" drink in the store.

On September 26, 2018, Yangyuan Company entrusted the investigation on the infringement of its registered trademark rights in the market. After investigation, it was found that the "Big Nuts" drink sold by this grocery store was suspected of infringing the registered trademark right of "Six Walnuts", so it applied to the Notary Office of Haicang District, Xiamen City for notarization of evidence preservation.

On the morning of September 28, the notary of the notary office came to the grocery store to take a photo, bought a box of "Big Nuts" as a consumer, and made a notarial certificate on the purchase.

The photo of the "Big Fruit Walnut" product attached to the notarial certificate shows that the packaging of the product is mainly blue and white, which is basically the same as the packaging color of the products of Yangyuan Company.

The white words of "Big Fruit Walnut" on the product package of "Big Fruit Walnut" and the colors and patterns surrounding the white words are similar to the pattern of the registered trademark of Yangyuan Company.

"Six Walnuts" sued for rights protection, claiming 150000 yuan

The brand "Six Walnuts" of Yangyuan Company has been advertising on many channels of CCTV for many years, and has won many honors such as "Hebei Famous Brand", "Famous Brand Trusted by Consumers", and "Well known Brand", which is very famous in the market.

"Big Fruit Walnut" confuses consumers' cognition with similar trademark design, and infringes on our legitimate rights and interests. " Yangyuan Company sent a lawyer's letter to Aohua Food Factory and grocery store.

Since then, Yangyuan Company has sued Aohua Food Factory and grocery store to Hechi Intermediate People's Court, requesting the court to order the grocery store to immediately stop selling products that infringe the exclusive right of Yangyuan Company to register trademarks, and compensate Yangyuan Company for economic losses and reasonable expenses totaling 2000 yuan; Aohua Food Factory immediately stopped producing and selling products that infringed the exclusive right to use the registered trademark of Yangyuan Company, immediately stopped using unfair competition behaviors similar to the packaging and decoration of Yangyuan Company on its products, and compensated Yangyuan Company for economic losses and reasonable expenses totaling 150000 yuan.

Hechi Intermediate Court determined that the infringement was constituted in the first instance

After hearing, Hechi Intermediate People's Court held that, by comparison, the packaging form of "Big Fruit Walnut" products with blue and white dominant colors is basically the same as that of "Six Walnuts". The white words of "Big Fruit Walnut" on the packaging and the patterns and colors surrounding these white words are similar to the patterns of the registered trademark of Yangyuan Company.

The court confirmed that the "Big Fruit Walnut" product constituted a trademark infringement.

Six Walnuts

Juglans regia

The fact that "Big Fruit Walnut" is similar to the well-known trademark "Six Walnuts" of Yangyuan Company can be seen by normal people at a glance. The grocery store still sells infringing "Big Fruit Walnut", which should also bear the corresponding civil liability for infringement.

There is no evidence to prove the actual loss of Yangyuan Company, the infringer's profit from infringement and the license fee of the registered trademark. Therefore, the court supported the claim of Yangyuan Company that Aohua Food Factory should compensate the economic loss of 150000 yuan and Japanese grocery store should compensate the economic loss of 2000 yuan according to the actual situation of the case and the judgment of similar cases.

The Hechi Intermediate People's Court made a judgment of first instance: the grocery store immediately stopped selling products that infringed the exclusive right to use the registered trademark of Yangyuan Company, and compensated the company with 2000 yuan of economic losses within 15 days after the judgment came into effect; Aohua Food Factory immediately stopped producing and selling products that infringed the exclusive right to use the registered trademark of Yangyuan Company, stopped using the unfair competition behavior of packaging and decoration similar to those of Yangyuan Company on its products, and compensated Yangyuan Company for the economic loss of 150000 yuan within 15 days from the effective date of the judgment.

"Big Fruit Walnut" appealed against the judgment of first instance

Aohua Food Factory refused to accept the first instance judgment and appealed to the Higher People's Court of the Autonomous Region, requesting the Higher People's Court of the Autonomous Region to revoke the first instance judgment and change the judgment according to law.

Aohua Food Factory said that the "Big Nuts" series of products it produced and sold were all legal products with its own trademark rights. The packaging and decoration of this series of products were also significantly different from the "Six Nuts" products of Yangyuan Company. It did not infringe the exclusive right of Yangyuan Company to use its registered trademark, nor did it use packaging and decoration similar to those of Yangyuan Company to form unfair competition.

Aohua Food Factory also said that Yangyuan Company and it had confirmed in the mediation statement of Shaoyang Intermediate People's Court that after Aohua Food Factory had paid 50000 yuan for mediation, Yangyuan Company would not pursue its tort liability for the infringing products of "Big Nuts" produced by Aohua Food Factory before the date of signing the mediation agreement.

Aohua Food Factory has fulfilled the payment obligations specified in the mediation statement, so Yangyuan Company sued Aohua Food Factory based on the facts of the case, which is a repeated lawsuit.

Yangyuan Company argued that Aohua Food Factory claimed that its "Big Fruit Walnut" series of products were products with its own trademark rights, but in the first instance, it only provided evidence for the ownership of the "Big Fruit" character trademark, and did not provide evidence for the ownership of the trademark rights of the graphics used in the product packaging and decoration.

The infringement in this case is that Aohua Food Factory used packaging similar to the trademark of Yangyuan Company, including graphic trademark and three-dimensional trademark, rather than literal trademark infringement.

The fact that Aohua Food Factory has the "Big Fruit" written trademark does not contradict the fact that it has infringed the trademark of Yangyuan Company. The case previously handled by Shaoyang Intermediate People's Court is inconsistent with the litigation object of this case, so this case does not belong to repeated prosecution.

Guangxi High Court rejected the appeal and upheld the original judgment

In the opinion of the Higher Court of the Autonomous Region, if a party sues again in the course of litigation or after the judgment becomes effective on a matter that has already been sued, and the following conditions are met at the same time, it will constitute a repeated prosecution: (1) The parties involved in the subsequent litigation are the same as those involved in the previous litigation; （2） The object of action of the subsequent action is the same as that of the previous action; （3） The claims of the subsequent litigation are the same as those of the previous litigation, or the claims of the subsequent litigation substantially negate the judgment results of the previous litigation.

By comparing this case with the previous cases handled by Shaoyang Intermediate People's Court, although the parties involved in the previous and subsequent litigation are the same, it can be seen from the litigation claims and factual reasons of Yangyuan Company that in the previous litigation, Yangyuan Company claimed that Aohua Food Factory infringed its exclusive right to use registered trade marks No. 5127315, No. 10833322 and No. 13777351, and requested Aohua Food Factory to immediately stop the infringement of the above three trademarks and compensate for losses; However, in the subsequent lawsuit, Aohua Food Factory claimed that it infringed the exclusive right to use its registered trademarks No. 13777350, No. 13777351, No. 16130851 and No. 18421831, which constituted unfair competition, and requested that Aohua Food Factory immediately stop the infringement of the above four trademarks and the unfair competition of using packaging and decoration similar to those of Yangyuan Company on its products, and compensate for the losses.

Since the trademark owner claimed that three of the infringed registered trademarks in the later lawsuit were different from the previous lawsuit, and that Aohua Food Factory had conducted unfair competition in the later lawsuit, the object of action in the later lawsuit was different from that in the previous lawsuit. The case filed by Yangyuan Company in the first instance does not constitute repeated prosecution.

It is correct that the court of first instance held that Aohua Food Factory should bear the corresponding civil liability for infringement.

The court of first instance decided that it was not improper for the Aohua Food Factory to compensate for the economic losses and reasonable expenses of 150000 yuan in combination with the popularity of the "six walnuts" registered trademark of Yangyuan Company, the subjective fault degree of the Aohua Food Factory, the nature and circumstances of the infringement, the sales scope and quantity of the infringing products, and the reasonable expenses paid by Yangyuan Company to stop the infringement.

The higher court of the autonomous region made a final judgment of "rejecting the appeal and maintaining the original judgment".

Note: Source: "Guangxi High Court"