“Ximei”’s use of “Dong’e Ejiao” was ruled as non-infringing.

　　When describing donkey-hide gelatin products from Dong'e County, Shandong Province, does the use of the phrase "Dong'e Donkey-hide Gelatin" constitute infringement of another party's exclusive right to the registered trademark "Dong'e Donkey-hide Gelatin"? Dissatisfied with Beijing Zimeitang Biotechnology Co., Ltd. (hereinafter referred to as Zimeitang Company) using the phrase "Dong'e Donkey-hide Gelatin" in its website sales, Shandong Dong'e Donkey-hide Gelatin Co., Ltd. (hereinafter referred to as Dong'e Donkey-hide Gelatin Company) sued Zimeitang Company on grounds of trademark infringement and unfair competition, requesting the court to order Zimeitang Company to cease its infringing activities and compensate for its economic losses and reasonable expenses of over 200,000 yuan.

　　Recently, according to the final judgment of the Beijing Intellectual Property Court, the court of second instance determined that Zimeitang Company's use of the phrase "Dong'e Donkey-hide Gelatin" was a legitimate use of descriptive information in the trademark, did not infringe on the exclusive right to the registered trademark of Dong'e Donkey-hide Gelatin Company, and did not constitute unfair competition. Therefore, the final judgment upheld the original judgment, dismissing Dong'e Donkey-hide Gelatin Company's lawsuit.

　　Product description sparks infringement dispute

　　It is understood that in February 2002, Huarun Dong'e Donkey-hide Gelatin Co., Ltd. was approved to register trademark No. 1708470 "Dong'e Donkey-hide Gelatin" (hereinafter referred to as the trademark in question), designated for use on Class 5 donkey-hide gelatin products.

　　In November 2012, Huarun Dong'e Donkey-hide Gelatin Co., Ltd. and Dong'e Donkey-hide Gelatin Company signed a "Trademark License Agreement," granting Dong'e Donkey-hide Gelatin Company the exclusive right to use the trademark in question from February 2012 to February 2022. Both parties filed the trademark license agreement with the Trademark Office of the State Administration for Industry and Commerce.

　　In June 2014, Dong'e Donkey-hide Gelatin Company discovered that when searching for "Dong'e Donkey-hide Gelatin" as a keyword on JD.com, the results showed that Zimeitang Company had set "Shandong Dong'e Donkey-hide Gelatin Block Ximei Donkey-hide Gelatin Tablets 240g Tin Box..." as the product name. Searching with "Dong'e Donkey-hide Gelatin" as a keyword yielded search results including Zimeitang Company's products, and the product page also displayed the above description.

　　Dong'e Donkey-hide Gelatin Company believes that "Dong'e Donkey-hide Gelatin" is both a registered trademark with exclusive licensing rights and the company's business name. For commercial purposes, when Zimeitang Company opened its "Zimeitang flagship store" on JD.com to sell products, it used the phrase "Dong'e Donkey-hide Gelatin" without authorization, aiming to mislead consumers into believing that the product was produced by Dong'e Donkey-hide Gelatin Company or had a necessary connection with it.

　　Therefore, Dong'e Donkey-hide Gelatin Company sued Zimeitang Company to the Haidian District People's Court of Beijing, claiming that Zimeitang Company's deliberately misleading false advertising infringed on its exclusive right to the registered trademark and constituted unfair competition. It requested the court to order Zimeitang Company to cease its infringing activities and compensate for its economic losses and reasonable expenses totaling over 200,000 yuan.

　　A relevant person in charge of Zimeitang Company stated that the company's products are "Ximei" brand donkey-hide gelatin tablets, not "Dong'e Donkey-hide Gelatin" brand donkey-hide gelatin tablets. Although the title on the sales website in question uses the words "Shandong Dong'e Donkey-hide Gelatin Block Ximei Donkey-hide Gelatin Tablets," this usage aims to indicate that the product originates from Dong'e County, Shandong Province, and does not infringe on Dong'e Donkey-hide Gelatin Company's registered trademark or constitute unfair competition.

　　To prove this claim, Zimeitang Company submitted its products sold on JD.com during the first-instance trial. The product packaging shows the "Ximei" word mark and the "Ahui and graphic" trademark. The back of the product packaging shows the product name as "Ahui" brand donkey-hide gelatin tablets, with the place of origin as Dong'e County, Liaocheng City, Shandong Province, and the manufacturer as Shandong Dong'e Gujiao Donkey-hide Gelatin Series Products Co., Ltd., located in Chenji Township, Dong'e County.

　　Final judgment determines it as fair use

　　After trial, the court of first instance held that "Dong'e" is the abbreviation of Dong'e County, Liaocheng City, Shandong Province, a place name, and also the main producing area of donkey-hide gelatin and its series of products. Since the products in question originate from Dong'e County, Zimeitang Company's use of the phrase "Shandong Dong'e" reflects the inherent connection between its products and their place of origin, and is not used to distinguish the source of the goods, nor does it in fact serve to distinguish the source of the goods.

　　Regarding Zimeitang Company's use of "Dong'e Donkey-hide Gelatin," the court of first instance held that Zimeitang Company did not prominently use the phrase "Dong'e Donkey-hide Gelatin," nor did it use the same font as the trademark in question to describe the origin of its products. Subjectively, there was no malicious intent to ride on the fame of the "Dong'e Donkey-hide Gelatin" trademark. At the same time, Zimeitang Company clearly stated this in the title on its sales website page, thereby enhancing the connection between its products and their place of origin, attracting the attention of many consumers. This method conforms to the practice of sellers using product characteristics to promote their products during sales and does not exceed the limits of fair use.

　　Without prominent use of the phrase "Dong'e Donkey-hide Gelatin" by Zimeitang Company, consumers would not mistakenly believe that the product originates from Dong'e Donkey-hide Gelatin Company or has any connection with it simply because the title contains the phrase "Dong'e Donkey-hide Gelatin Block." Therefore, Zimeitang Company's use of the phrase "Dong'e Donkey-hide Gelatin" is considered fair use and does not constitute infringement of Dong'e Donkey-hide Gelatin Company's registered trademark.

　　Furthermore, Zimeitang Company's use of the phrase containing "Dong'e Donkey-hide Gelatin" would not cause consumer confusion or misidentification, nor did it make false representations about the product's origin, and therefore did not constitute unfair competition.

　　In summary, the court of first instance dismissed Dong'e Donkey-hide Gelatin Company's lawsuit.

　　Dong'e Donkey-hide Gelatin Company appealed to the Beijing Intellectual Property Court, dissatisfied with the first-instance judgment.

　　The court of second instance held that for ordinary consumers, they would not mistakenly believe that the corresponding product is provided by Dong'e Donkey-hide Gelatin Company simply because the search results and webpage information contain the phrase "Dong'e Donkey-hide Gelatin." Instead, they would determine that the product in question is "Ximei brand" donkey-hide gelatin based on the product name, description, and images displayed on the product page. Describing donkey-hide gelatin products from Dong'e County, Shandong Province, inevitably requires the use of the words "Dong'e" and "donkey-hide gelatin." When used in the product name, due to the limited number of characters in the description, it is reasonable to use "Dong'e" and "donkey-hide gelatin" together. Moreover, Zimeitang Company also used descriptive words such as "Shandong" and "block," clearly indicating its description of the product's origin and nature. Therefore, the court of second instance determined that Zimeitang Company's use of the phrase "Dong'e Donkey-hide Gelatin" was a legitimate use of descriptive information in the trademark and did not infringe on Dong'e Donkey-hide Gelatin Company's registered trademark.

　　Regarding whether Zimeitang Company's actions constituted unfair competition, the court of second instance held that "Dong'e Donkey-hide Gelatin" is only the business name of Dong'e Donkey-hide Gelatin Company, and this name has other meanings, indicating the nature and origin of a certain type of product. Zimeitang Company did not use the business name of Dong'e Donkey-hide Gelatin Company, and its use of the phrase "Dong'e Donkey-hide Gelatin" would not mislead consumers into believing that its products are those of Dong'e Donkey-hide Gelatin Company, therefore not constituting unfair competition against Dong'e Donkey-hide Gelatin Company.

　　In summary, the Beijing Intellectual Property Court issued the above final judgment. (Reprinted from China Intellectual Property News)