December 18,2018 People’s Court Daily Page 3 85℃ believed that Bright Dairy’s act of marking “85℃” on several Bright milk boxes infringed upon its exclusive right to use registered trademark, is that the case? On December 14, Shanghai Intellectual Property Court made the second-instance judgment on the dispute over trademark infringement between Bright Diary & Food Co., Ltd (hereinafter referred to as “Bright Diary”) vs. Comestibles Master Co., Ltd (hereinafter referred to as “Comestibles Master”), ruling to reject all claims of Comestibles Master in the first instance. Comestibles Master established the brand “85℃” in 2003 and obtained four “85 ℃” registered trademarks successively, all of which are within their validity. Through many years of publicity and use, registered trademarks approved for Class 43 cafes and cake shops, etc. have been recognized as well-known trademarks by China Trademark Office. In May 2016, Comestibles Master found that at the prominent position in the outer packaging of UBEST Fresh Milk produced by Bright Diary and sold in Laoximen store of Shanghai E-mart Supermarket Co., Ltd (hereinafter referred to as “E-mart”), a mark “85 ℃” identical or similar to its registered trademark was used, and Bright Diary also highlighted “85 ℃” in its advertising. Believing that Bright Diary’s act is very likely to cause confusion among the relevant consumers, Comestibles Master sued to the court for trademark infringement, requesting that Bright Diary and E-mart stop the infringement immediately, whereas Bright Diary compensate for its economic losses of RMB 5 million and reasonable expenses totaling RMB 59,500. Bright Diary argued that it has used pasteurization technology in the production and processing of UBEST Fresh Milk, in which process a parameter is 85 ℃. Therefore, marking 85℃on the packaging box of milk products can be deemed as a descriptive fair use in good faith. 85 ℃ is just a temperature value and used as per its literal meaning, which describes the characteristics of commodity processing technology and is not used as a trademark. The alleged infringing products also bear their own trademarks. Hence, it didn’t infringe upon Comestibles Master’s exclusive right to use the registered trademark, and the court was requested to dismiss all the claims of Comestibles Master. After the trial, the court of first instance ruled that Bright Diary should immediately stop infringing upon Comestibles Master’s exclusive right to use registered trademark and should compensate for Comestibles Master’s economic losses of RMB 400,000 and reasonable expenses of RMB 59,500. Bright Diary appealed to Shanghai Intellectual Property Court against the first-instance judgment. After the trial, Shanghai Intellectual Property Court held that Comestibles Master registered the mark “85℃” successively by arranging the elements thereof, which constitute the standard expression of temperature, in different typography, which enhanced its distinctiveness objectively but also limited the extent to which it is protected. In view of Bright Diary’s use of the alleged infringing mark “85℃” on the outer packaging of the alleged infringing products with the caption such as “85 ℃ pasteurized fresh milk” “drink fresh milk pasteurized at 85℃,” etc., Shanghai Intellectual Property Court deemed that “85℃” was used for the purpose of explaining to the relevant public the characteristics of pasteurization technology, which fairly described the characteristics of Bright Diary’s own products. It’s used as a proper expression of temperature rather than Comestibles Master’s registered trademark. As Comestibles Master has never produced the alleged infringing product (milk) nor used the trademark involved on milk products, milk consumers are less aware of Comestibles Master. On the contrary, Bright Diary’s “bright” trademark used for milk and other dairy products is a well-known trademark. So, even if the relevant public who are familiar with Comestibles Master’s registered trademark pay general attention to the outer packaging of the alleged infringing products, they will take it for granted that 85℃marked on the outer packaging is the temperature Bright Diary employed for pasteurization rather than indicate the source of the alleged infringing products - Comestibles Master or related to Comestibles Master. Therefore, Bright Diary’s use of the alleged infringing mark on the alleged infringing products can be regarded as a proper and fair use of temperature indicating mark that doesn’t cause confusion and misunderstanding among the relevant public nor constitute infringement upon Comestibles Master’s exclusive right to use the registered trademark. (Chen Yingying)
