Perspective | Does marking multiple other trademarks on goods for decoration constitute infringement?
Published:
2025-03-26
In practice, we sometimes encounter a situation where a company's products bear the trademarks of several companies that have no actual relationship with it. Does this constitute infringement? If so, is it trademark infringement or unfair competition? The author would like to share his opinion on this issue, purely as a starting point for discussion.
In practice, we sometimes encounter a situation where a company's products are marked with trademarks of multiple companies that have no actual relationship. Does this constitute infringement? If it constitutes infringement, is it trademark infringement or unfair competition? I would like to express my opinion on this situation, only as a starting point for discussion.
For example: Company A, in addition to marking its own trademark A on its products, also marks Company B's legally registered trademark B, Company C's legally registered trademark C, and Company D's legally registered trademark D. Company A's products can be used with products produced by Companies B, C, and D, meaning there is a certain relationship between the two products. In addition, trademarks B, C, and D are more well-known than trademark A. Company A's way of marking B, C, and D is not as prominent as A, but it can still attract the attention of relevant consumers. Regarding Company A's use, whether it constitutes infringement has resulted in the following three different opinions in practice.
First ViewThis use does not constitute infringement because Company A's products do not prominently use trademarks B, C, and D. Given the applicable relationship between Company A's products and the products of Companies B, C, and D, Company A's use is merely descriptive and will not cause consumer confusion, thus being a legitimate descriptive use and not constituting infringement.
Second ViewThis use constitutes unfair competition because Company A prominently uses its own trademark A on its products, while the use of trademarks B, C, and D is merely descriptive. This use cannot identify the source of the goods, but given the high recognition of trademarks B, C, and D, this use attracts the attention of relevant consumers, clearly leveraging the recognition of trademarks B, C, and D. According to Article 6, Paragraph (4) of the Anti-Unfair Competition Law, "Other confusing acts that may mislead people into believing that they are the goods of others or have a specific connection with others," it can be determined to constitute unfair competition.
Third ViewThis use constitutes trademark infringement because trademarks B, C, and D, as legally registered trademarks, should be protected by law. Without the authorization of the rights holder, no one may use them without authorization. Company A, without the permission of Companies B, C, and D, used trademarks B, C, and D on its products. Although the use is not as prominent as its own trademark, it can still attract the attention of consumers and plays a role in "identifying the source of goods," constituting trademark infringement.
Of the three views above, I am more inclined towards the third view, that is, this use constitutes trademark infringement. According to Articles 3, 48, and 57 of the Trademark Law, trademarks approved for registration by the Trademark Office are registered trademarks, and the trademark registrant enjoys exclusive rights to the trademark, which are protected by law. The use of a trademark refers to using the trademark on goods, packaging or containers, and commercial documents, or using it in advertising, exhibitions, and other commercial activities to identify the source of goods. Without the permission of the trademark registrant, using a trademark similar to its registered trademark on the same type of goods, or using an identical or similar trademark on similar goods, is likely to cause confusion and constitutes infringement of the exclusive right to a registered trademark. According to Article 57 of the Trademark Law Implementation Regulations, using a mark identical or similar to another's registered trademark as a product name or decoration on the same or similar goods and misleading the public constitutes infringement of the exclusive right to a registered trademark as stipulated in Article 57, Paragraph 2 of the Trademark Law.
In this case, Companies B, C, and D, as the owners of trademarks B, C, and D, legally enjoy exclusive rights to their registered trademarks, which are protected by law during their validity period. First, Company A's use of trademarks B, C, and D on its products constitutes the use of another's trademark. Second, Company A's use of trademarks B, C, and D on its products is not legitimate. Even if Company A argues that its products are applicable to the products of Companies B, C, and D, and there is a close relationship between them, this use is still not legitimate. Because Company A does not only have one choice, i.e., using other people's trademarks to describe the "applicable" relationship, it can still use other methods to explain this "applicable" relationship, such as using text. Therefore, Company A's use of other people's trademarks does not have good faith. Finally, Company A's use of trademarks B, C, and D is essentially borrowing the reputation of these trademarks to promote its products, damaging the rights of these trademarks. The function of a trademark is not only to identify the source of goods but also, in the course of long-term use, consumers closely associate the trademark with the goods using the trademark and the owner of the trademark, and the trademark increasingly has the function of bearing goodwill. Although Company A's use of trademarks B, C, and D on its products is not prominent, relevant consumers can still notice it. Given the certain recognition of trademarks B, C, and D, these trademarks will influence consumers, thereby prompting relevant consumers to purchase the goods. Therefore, Company A improperly borrowed the goodwill of these trademarks, and this use may also, to a certain extent, sever the correspondence between the trademark and the owner, hindering the complete fulfillment of the trademark's function, thus causing undue harm to these trademarks. Therefore, for this situation, we can apply Article 57 of the Trademark Law Implementation Regulations, where using a mark identical to another's registered trademark as product decoration on similar goods and misleading the public constitutes infringement of the exclusive right to a registered trademark as stipulated in Article 57, Paragraph 2 of the Trademark Law.
So, does Company A's conduct constitute unfair competition? Given that trademarks B, C, and D have been registered and the product categories are similar, we cannot apply Article 6, Paragraphs (1), (2), and (3) of the Anti-Unfair Competition Law. As the second view states, applying Paragraph (4) "Other acts that may mislead people into believing that they are the goods of others or have a specific connection with others," according to Article 13 of the Judicial Interpretation of the Anti-Unfair Competition Law, it gives a restrictive interpretation to Article 6, Paragraph (4) of the Anti-Unfair Competition Law, namely, the first situation is the unauthorized use of "certain influential" marks other than those stipulated in Paragraphs (1), (2), and (3) of Article 6 of the Anti-Unfair Competition Law; the second situation is using another's registered trademark or unregistered well-known trademark as the name in the company name and misleading the public. Obviously, Company A's conduct does not meet the above situations, so I believe that Company A's conduct cannot be regulated by Article 6, Paragraph (4) of the Anti-Unfair Competition Law.
In conclusion, I am more inclined to believe that Company A's conduct constitutes trademark infringement, that is, it infringes on the exclusive rights to registered trademarks of Companies B, C, and D respectively.
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