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Trademark infringement is prevalent in the catering and entertainment industries. This article examines common methods of trademark infringement as well as preventive measures within the sector to provide practical insights for industry stakeholders.

Direct copying

According to article 57 of the Trademark Law, there are various forms of infringement of the exclusive right to use a registered trademark. Most notably, direct copying infringement typically involves the unauthorised use of trademarks, logos or names identical or highly similar to those of well-known brands.

In one typical case, the key issue was that company A, as exclusive owner of a registered word trademark, had established significant distinctiveness in the hotpot catering sector through long-term use. Company B then used a mark in the same field that, despite minor differences, was insufficient to distinguish it from company A¡¯s mark, thus constituting infringement.

Confusion over trademarks

Infringement by confusingly similar trademarks refers to the use of marks that are similar in sound, appearance or meaning to well-known brands, leading to consumer confusion. Cases cited by DeepSeek fall under unfair competition disputes, which are distinct from trademark infringement disputes.

Both the Trademark Law and Anti-Unfair Competition Law regulate and protect trademark rights, with overlapping areas of protection. However, due to their respective legal characteristics, the choice of applicable law in specific cases should be determined based on the circumstances, and both may be applied concurrently.

There have been numerous cases where infringers register trademarks similar to those being infringed, and mix or cross-use elements of the infringed mark in practice.

The three characteristics of similar trademarks are: similarity of signs, substantive distinctiveness, and difference in effect. These criteria help determine whether a similar mark is substantively different from a registered trademark, assisting courts in making reasonable judgments.

Retaining exclusive rights

In a trademark infringement case handled by the author, the registered trademark in question was cancelled by the China National Intellectual Property Administration for non-use over three consecutive years. Although the trademark had been cancelled, the court held that it was still valid at the time of the alleged infringement and the plaintiff retained exclusive right to use it ¨C so was entitled to bring an action for infringement.

However, as the plaintiff had not actually used the trademark and could not prove any loss resulting from the infringement, the defendant was not required to pay damages.

Nevertheless, the defendant could not claim the plaintiff¡¯s non-use for three years as a valid defence against infringement, and was still required by law to bear reasonable costs incurred by the plaintiff in protecting its rights.

Therefore, if a registered trademark has not been used, claims for damages by the exclusive rights holder are unlikely to be supported by the court. But reasonable expenses for rights protection may be awarded.

This approach encourages trademark owners to actively use their marks and promotes market development, while also deterring infringement while safeguarding legal rights and order.

Preventive measures

(1) Comprehensive trademark registration. In addition to registering core categories, related categories should also be protected to prevent others from using identical or similar marks for different goods or services.

(2) Proper use of trademarks. As noted, a registered trademark may be cancelled for non-use over three consecutive years. It is therefore necessary to ensure the trademark is used and retain evidence of such use.

(3) Preservation of prior use evidence for unregistered trademarks. This is essential to guard against malicious registration. The increasing prevalence of malicious registration and trademark hoarding infringes the legitimate rights of prior users and wastes trademark resources.

(4) Immediate action against infringement. On discovering infringement, measures such as photographing, video recording and sealing infringing products should be taken to preserve evidence and prevent its destruction or tampering. Notarised evidence collection should be conducted promptly.

(5) Timely renewal before trademark expiry. Renewal procedures should be completed before the trademark expires to avoid invalidation.

(6) Systematically organise the basic information of an enterprise¡¯s trademarks and assess their value. The value and reputation of a trademark are closely linked to the geographical scope of the enterprise¡¯s product sales.

In judicial decisions, it is common for judgments on statutory damages to include the following reasoning: ¡°The court will comprehensively consider factors such as the reputation of the trademark in question, the defendant¡¯s degree of subjective fault, the type of infringing act, the sales amount of the infringing goods and reasonable profit, in order to determine the amount of compensation at its discretion.¡±

Statutory damages allow judges a degree of discretion, whereas actual losses are primarily determined based on the calculation formula for actual losses set out in judicial interpretations. When evidence is insufficient, the presiding judge will typically assign zero probative value to the evidence and apply statutory damages.

Takeaway

At a macro level, it is necessary to reduce infringement cases through judicial adjudication and legal education, regulate the business conduct of market participants, and optimise the rule of law business environment. At the same time, protection of registered and well-known trademarks should be strengthened to enhance the core competitiveness of brands.

Liang Kaiqi is an associate at ETR Law Firm