In business activities, there is an interesting phenomenon sometimes, that is, although the providers of goods or services use their standardized and formal registered trademarks (referred to as "official trademarks"), some people still use the abbreviations, nicknames, translated names or jokes of official trademarks (referred to as "informal appellations") to refer to the official trademarks or their goods or services. For example, "Viagra" used in Pfizer, USA, is called "Weige" by some Chinese people. For Sony Ericsson and Sony Ericsson, some Chinese people call them Sony Ericsson. For the cosmetics brand "LANCOME", some Chinese people call it "Little Black Bottle". KFC is called "Kaifeng Cuisine" by some Chinese people. "Twitter" is called "Tuite" by some Chinese people.

When the above informal appellation can distinguish the source of goods or services, to whom should the rights similar to unregistered trademarks belong? Under what circumstances does the trademark rights of informal appellation belong to or not belong to the right holder of the official trademark? When discussing the above problems, should we consider different situations of informal appellation, that is, distinguish different categories such as nicknames, abbreviations or jokes? This paper intends to discuss these issues.

Two factors affecting the ownership of trademark rights in informal appellation

When deciding the trademark rights and interests of informal appellation, we should mainly consider the following two factors: first, for the relevant public, whether the informal appellation plays the same role as the official trademark in distinguishing the sources of goods or services, and plays the same role as the official trademark in indicating the sources of goods or services, and whether the informal appellation will cause confusion and misidentification if used by others other than the official trademark holder; second, whether the holder of a formal trademark has the subjective intention of using the informal appellation as a trademark or whether he has the objective behavior of using the informal appellation as a trademark.

Whether the holder of the official trademark have subjective intention and objective behavior to use an informal appellation

According to the views of some scholars and previous judicial precedents, the subjective intention and objective behavior of using commercial marks are the prerequisites for the rights and interests of unregistered trademarks. Therefore, only when the holder of the official trademark has the subjective intention and objective behavior of using the informal appellation, the unregistered trademark rights of the informal appellation can be attributed to the holder of the official trademark. For example, Professor Kong Xiangjun thinks: "If the obligee claims for an unregistered trademark, he must use the logo claimed as a trademark, that is, he has the meaning of using it as a trademark. If another person refers to his specific commodity with a certain logo, and I have no intention of using it as a trademark, that is, I have not used it as a trademark, the allegation of another person does not of course make the alleged person enjoy trademark rights. In short, the behavior of others' alleged trademark is only an objective fact, and only when I have the intention and use behavior of enjoying the right can I create the right ". [1] Other scholars have expressed the same view, saying that trademark use is a legal act, and should emphasize the free will and inner meaning of trademark users. [2]

Relevant case rules also hold that the premise of generating unregistered trademark rights is the subjective intention and objective behavior of use. In the case of the trademark administrative dispute between Sony Ericsson Mobile Communication Products (China) Co., Ltd. and the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce and Liu Jianjia, the Supreme People's Court (2010) No.48, the court held that the relevant reports of relevant media could not create civil rights and interests protected by law for Sony Ericsson. In the case of the Supreme People's Court (2009) No.312 Pfizer Co., Ltd., Pfizer Pharmaceutical Co., Ltd. and Jiangsu Lianhuan Pharmaceutical Co., Ltd., and other disputes over unfair competition and infringement of unregistered well-known trademark rights, Pfizer claimed that Viagra was the unregistered well-known trademark of its Viagra products, but the Supreme People's Court held that Pfizer and others had no intention or behavior of using Viagra as a trademark, so they could not claim their rights to an unregistered trademark.

Whether the use of informal appellations by others lead to confusion, misunderstanding or damage to legitimate rights and interests

Although the holder of the official trademark has no subjective intention or objective behavior to use the informal appellation, if the use of the informal appellation by others will lead to confusion and misidentification, or damage the legitimate rights and interests of the holder of the official trademark or others, then others cannot use or register the informal appellation. On the contrary, if the use of informal appellation by others will not lead to confusion and misidentification, it is possible to obtain the legitimate rights and interests of the informal appellation by using it.

The most important function of a trademark is to indicate the source of goods or services, and the main purpose of protecting a trademark is to avoid confusion and misidentification by the relevant public. If an informal appellation can play the same role as a formal trademark, the use or trademark registration of the informal appellation by others may cause confusion and misunderstanding. In Beijing High People's Court (2019) No. 522, the court held that the trademark use of the informal appellation "Twitter" by others also had the same effect on the formal trademark "TWITTER". The court held that the use of the informal term "Twitter" by others may also constitute trademark infringement of the official trademark "TWITTER". Conversely, if the use of an informal term does not create confusion or misunderstanding, the civil rights and interests arising from the use or registration of the informal term by others may be attributed to the user, rather than the owner of the informal trademark.

In the administrative dispute case of trademark objection review between Guangzhou Linye Electromechanical Technology Co., Ltd. and the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce and Guangzhou Automobile Honda Motor Co., Ltd. No.23 (2013) of the Supreme People's Court, the Supreme People's Court held that "Guangben" was the abbreviation of the enterprise name of Guangzhou Automobile Honda Motor Co., Ltd., and Guangzhou Linye Electromechanical Technology Co., Ltd. applied to register it on a product similar to the main product "Automobile" of Guangzhou Automobile Honda Motor Co., Ltd., to the detriment of the prior legitimate interests of Guangzhou Automobile Honda Motor Co., Ltd., and thus denied the registration of the trademark in dispute.

Category of informal appellation has an important influence on the ownership of trademark rights and interests

Classification of informal appellations

Informal appellation is a superior concept, which includes nicknames, abbreviations, jokes and so on. When analyzing the attribution of trademark rights of informal appellations, we should consider the different influences of different types of informal appellations on the attribution of trademark rights. Generally speaking, informal appellations can be divided into three categories:

The first category is nickname, abbreviation or translation, such as "Guangben" and "Twitter". Generally speaking, the holder of the official trademark does not object to and may take the initiative to use such appellations. For the relevant public, if others use this appellation, it is easy to cause confusion and misunderstanding. For such informal appellations, the court generally thinks that their trademark rights belong to the holder of the official trademark, and it is easy for others to use or register such appellations to cause confusion and misunderstanding or damage the prior legal rights and interests of the holder of the official trademark.

The second category is neutral appellation with neither positive nor negative meaning, such as "Little Black Bottle". Although the obligee of a formal trademark generally does not have subjective intention or objective behavior to use such appellations, he usually does not dislike or object. Therefore, on the one hand, the holder of the official trademark does not of course have the trademark rights of the informal appellation; On the other hand, if the neutral appellation is used in a large group, the use of the informal appellation by others may also lead to confusion and misunderstanding, which may damage the prior legitimate rights and interests of the official trademark holder.

Third, there are critical, funny, demeaning, joking or other negative jokes, such as "KFC" as "Kaifeng cuisine". This kind of informal appellation often has non-trademark function or literary function, and some experts call it literary parody. Literary parody is a unique creative form that imitates, ridicules or comments on the original work through funny parody. [3] This kind of informal appellation is quite special. On the one hand, the obligee of a formal trademark has no subjective intention or objective behavior to use such appellation, so he often should not enjoy trademark rights. On the other hand, if others use or register it, it is not easy to confuse the relevant public, so it is possible to obtain trademark rights through use or registration. The following is a detailed analysis of this kind of informal appellation

Obligee of a formal trademark may not enjoy the trademark rights of parody informal appellation

Unlike informal appellations such as nicknames and abbreviations, and neutral informal appellations, the obligee of a formal trademark often has no subjective intention or objective behavior to use parody informal appellations, so such informal appellations should not enjoy trademark rights.

First of all, as mentioned earlier, the third categirt if informal appellations often has the effect of criticizing, making fun of, belittling and joking about official trademarks or corresponding goods or services. Under normal circumstances, the obligee of a formal trademark may dislike or reject the parody informal appellation, and does not want his trademark, goods or services to be connected with the appellation.

Secondly, the "passive use" of parody informal appellations does not play the role of trademark, and its use is generally not considered as trademark use. If the relevant public uses parody informal appellations for the purpose of criticism, satire, belittling or playing, the use scenario is generally not commercial activities, but civil activities or literary activities. In such use scenarios, parody informal appellation generally does not play the role of distinguishing the source of goods or services of trademarks, and does not constitute the use in the sense of trademark law. In addition, the frequency of such usage scenarios is not high, so the frequency and scope of parody informal appellation are not very large. Therefore, the actual use of parody appellation generally does not constitute trademark use, let alone trademark use by the official trademark holder.

To sum up, the characteristics of parody informal appellations determine that the obligee of formal trademark often has neither subjective intention nor objective behavior of using such appellations. However, trademark rights can only be generated by subjective intention or objective behavior. Therefore, the obligee of a formal trademark often should not enjoy trademark rights for parody appellations.

Others may enjoy trademark rights independent of official trademarks for parody informal appellations through use or registration

First of all, if the similarity between parody informal appellation and formal trademark is relatively low, it is not easy to cause confusion and misunderstanding. Generally speaking, the informal appellation of short name is similar to the official trademark, for example, "SUOAI" vs. "Sony Ericsson", "TUITE" vs. "Twitter", etc., and it is easy for consumers to confuse and misunderstand when the goods or services they use are the same or similar. As for parody informal appellation, if it is quite different from formal trademark, it is generally not easy to cause confusion and misunderstanding. For example, "Kaifeng Cuisine" is less similar in sound, form and meaning than "KFC", and from the perspective of public cognition, the former refers to Chinese food, while the latter refers to Western food, which is not easy to be confused and mistaken. In addition, parody informal appellation sometimes has a certain degree of originality or creativity, and it coexists with official trademarks, which is less likely to lead to confusion and misidentification of the relevant public. In this respect, the United States has some previous cases for reference. In Jordache case [4], the judge pointed out that the intention of parody is not equal to the intention of creating confusion, and effective parody depends on the difference between it and the original trademark, especially the humorous difference. In addition, in addition to trademark similarity, commodity similarity also has an important influence on the possibility of confusion. If others use parody informal appellation which is not similar to the official trademark on different goods or services, it is less likely to lead to confusion and misidentification.

Secondly, because of its funny, derogatory or playful attributes, parody informal appellations are generally not used in a wide range, but only in informal and non-commercial occasions, and are not used as trademarks, and users will not confuse them with official trademarks. At this time, such parody informal appellations are difficult to distinguish the trademark functions of goods or services. For example, in the L.L.Bean case [5], because the defendant's parody of the plaintiff's trademark belongs to non-commercial use, the judge determined that the defendant's parody of trademark did not constitute trademark infringement.

Finally, the popularity of official trademarks and parody informal appellations will also affect the possibility of confusion and misidentification. If the official trademark is well-known, the relevant public can easily distinguish the official trademark from other trademarks. When joking and funny jokes appear, the relevant public can recognize the difference between them and official trademarks. Moreover, the concept, value and image conveyed by parody informal appellation are often different from formal trademarks. If others use or register this parody informal appellation with obvious differences, it is not easy to cause confusion and misunderstanding, and may enjoy trademark rights independent of official trademarks because of their use or registration. In LV case [6], the judge held that although the parody trademark "CV" was actually used in commercial activities and was similar to the original trademark LV, because the original trademark had high popularity, and the market positioning between the original trademark and the parody trademark was quite different, and there were huge differences in the products used, it would not make consumers use the original trademark "LV" (a famous luggage brand) as "CV" for pet dog chewing toys.

To sum up, considering the particularity of parody informal appellation, if others use or register parody informal appellation, they can enjoy trademark rights independent of official trademarks without causing confusion and misunderstanding among the relevant public.

Summary

The analysis of this paper shows that there are two main factors that affect the ownership of trademark rights of informal appellation: one is whether the holder of formal trademark has subjective intention and objective behavior to use informal appellation, and the other is whether the use of informal appellation by others will lead to confusion and misunderstanding or damage the legitimate rights and interests of the holder of formal trademark. On this basis, when analyzing the trademark rights and interests of informal appellation, we should further realize that the different situations and categories of informal appellation have an important impact on the trademark rights and interests. Parody informal appellation, i.e., jokes with criticism, satire, belittle, banter or other negative influences, is often not close to official trademarks, and it is not widely used and has low popularity, and consumers are not easy to confuse and misunderstand them. At this time, others can obtain trademark rights independent of official trademarks by using or registering parody informal appellations.

 

References:

1. Kong Xiangjun: General Principles of Anti-Unfair Competition Law, Law Press, 2019, pp. 308-309.

2 Huang Hui and Xie Shenwen: On the Protection of Passive Use of Refusal Trademarks, Intellectual Property, No.7, 2012.

3. Chen Hu: On the Legal Nature of Trademark Parody, Intellectual Property, No.12, 2018.

4 Jordache Enterprises v. Hogg Wyld, Ltd., 828 F. 2d 1482 (10th Cir. 1987).

5 L.L.Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26(1st Cir. 1987).

6 Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007).