Shanghai Bili Cosmetics Co., Ltd. registered address, the factory building has been rented out by others. (Southern Weekend reporter Wei Cuicui/photo)
From the end of 2018 to the present, Shanghai Bili Cosmetics Co., Ltd. (hereinafter referred to as Bili), the owner of the "Honeyopea" trademark, has successively sued more than 100 honeysuckle flower dew water production companies, with the amount of compensation reaching tens of millions of yuan. Public data from
shows that from December 2018 to August 2022, there were 122 trademark infringement disputes related to Bili. The Judgment Documents Network searched with the keyword "Shanghai Bili Cosmetics Co., Ltd." and after 2019, there were 101 Judgment Documents.
Bili believes that the three words "honeysuckle" are registered trademarks approved by the Trademark Review and Adjudication Committee of the State Administration for Industry and Commerce. The company is the holder. The calories produced by the peers used the three words "honeysuckle" in outer packaging and other places, which is a trademark infringement.
It is worth noting that the trademark "honeysuckle" was revoked, but the revocation was not implemented. Despite this, almost all the companies sued lost the case before June 2022.
turns occurred on June 24, 2022. Bili suffered two consecutive defeats in the Zhongshan Intermediate People's Court of Guangdong Province. The court did not support the company's claim on trademark rights. The attorney of the company involved in the lawsuit believes that these two judgments have "barometer significance."
At present, multiple companies sued have received notices from the court, saying that Bili has withdrawn the lawsuit. So, was Bili’s previous behavior “legal rights protection” or “malicious litigation”?
The company was sued for losing streak
Jiangxi Evergreen Industrial Co., Ltd. (hereinafter referred to as Evergreen Company) is one of the companies sued by Bili for infringing its trademark rights.
Evergreen's attorney Ma Shihui said that Evergreen was sued by Bili for highlighting the use of the three words "honeysuckle" on the bottles of the flower aquatic products it produced. In this case of infringement of trademark rights, Bili believes that the "honeysuckle" flower dew produced by Evergreen Company infringes on its exclusive right to registered trademark No. 603857.
"Evergreen Company has its own trademark. Honeysuckle is the common name of the product. Evergreen Company's products contain honeysuckle ingredients. The three words "honeysuckle" are used only to describe the product ingredients." Ma Shihui said.
However, the Xuhui District People's Court of Shanghai held that the exclusive right to register trademarks is protected by law, and Evergreen Company's claim has no factual or legal basis and will not be adopted.
On December 4, 2020, the Xuhui District People's Court of Shanghai ruled that Evergreen Company had infringed Bili's exclusive trademark rights in the first instance, and ordered that the production and sales of infringement of Bili's exclusive trademark rights be immediately stopped, and compensate Bili Company for 100,000 yuan.
Evergreen Company dissatisfied with the first-instance judgment and appealed to the Shanghai Intellectual Property Court. "The key issue is the court's determination of descriptive use and trademark use, as well as the determination of boundaries in the public sphere." Ma Shihui said, but on December 23, 2021, the Shanghai Intellectual Property Court upheld the first-instance judgment.
is dissatisfied with the final judgment, and Evergreen Company applies for a retrial to the Shanghai Higher People's Court. On June 20, 2022, the Shanghai Higher People's Court made a ruling to reject Evergreen Company's application for retrial.
Evergreen Company has stopped producing flower dew water. Judgment Documents Network shows that in the 122 lawsuits filed by Bili in more than three years, the companies sued were mainly distributed in Jiangxi, Jiangsu and Guangdong where Evergreen Company is located. These areas are also the main gathering places for enterprises producing honeysuckle flower dew.
Secretary-General of Jiangxi Health and Disinfection Products Industry Association, Standing Committee Member Wu, told Southern Weekend reporters that more than 30 companies in Jiangxi were sued in June 2020, and now it has increased to more than 70.
Southern Weekend reporter sorted out several documents and found that Bili sued other flower water manufacturers, and the lawsuit requests, facts and reasons, and evidence collection process are roughly similar.
Bili Company believes that the company accused of "selling goods that are the same or similar to the registered trademark of the plaintiff 'Honeysuckle' without permission, infringing on its own exclusive trademark rights."
Bili's lawsuit filed includes requiring the company to stop the production and sale of honeysuckle flower water, destroy the infringing products, and compensate for losses. The amount of claims for each lawsuit ranges from RMB 100,000 to RMB 500,000.
all the companies sued denied the infringement. They all claimed that they had their registered trademarks, honeysuckle flower water is the common name, and the plaintiff Bili's trademark should be invalid.
The company was sued for compensation mostly ranging from 30,000 to 100,000 yuan. The one who compensated the most was Jingzi Daily Cosmetics Factory located in Linyi, Shandong, and was sentenced to compensation of 260,000 yuan in the second instance.
The series of disputes over the "honeysuckle" trademark are mainly two points: Can "honeysuckle" be used as a trademark? Is the company being sued "trademark use" or "descriptive use"?
"Honeycrabaceae" can be used as a trademark? This is also the doubts of many companies being sued.
They believe that "honeysuckle" is the common name of the flower dew water product and the main raw material and cannot be registered as a trademark. However, the fact found by most courts is that the trademark No. 603857 "Honeysuckle" approved by the former Trademark Review and Adjudication Committee of the State Administration for Industry and Commerce is still under the registration validity period. What is the difference between "trademark use" and "descriptive use"?
Multiple heads of the companies sued told Southern Weekend reporters that before they were sued, they did not know that "honeysuckle" was a separate trademark. They marked "honeysuckle" on the outer packaging just to emphasize that honeysuckle is added to the product.
, but the court supporting Bili believes that although the company accused of labeling its own trademark, "the degree of significance of the labeling position and size is not as significant as the 'honeysuckle' text logo."
Therefore, even if the fonts are different, the court still determines that "the pronunciation, text, meaning, arrangement order, arrangement direction are the same, and the overall structure and visual effects are similar", "will cause confusion and misunderstanding of the public", constitute an approximate trademark, which is a "trademark use" rather than a "descriptive use".
On this basis, the company sued was defeated steadily.
However, the series of cases of the "honeysuckle" trademark have also attracted the attention of Supreme People's Court .
In February 2021, Jiangsu Shiyan Bio-Daily Chemical Co., Ltd. lost the case in the first and second instances one after another, and was dissatisfied with the verdict of the Jiangsu High Court and applied for a retrial to the Supreme People's Court. In July 2021, the Supreme People's Court accepted the case.
On March 24, 2022, the Supreme People's Court ruled to interrogate the "Honeysuckle" trademark case applied for retrial by Shiyan Company, and the execution of the original judgment was suspended during the retrial.
Replaced many times
Where did Bili’s honeysuckle trademark come from? This starts with Bili’s predecessor, Shanghai Hongxing Daily Chemicals Factory (hereinafter referred to as “Hongxing Daily Chemicals”).
Hongxing Daily Chemical was established in the early 1970s. Its address is located in Hongxing Farm in Chongming County. It is a subsidiary of Hongxing Corporation of Shanghai Agricultural and Industrial and Commercial Group. It is a state-owned enterprise and mainly specializes in daily chemical products such as head oil, rouge powder, tooth powder, , etc. The registered trademark registration form in
industrial and commercial information shows that Hongxing Daily Chemical began applying for trademarks in the late 1970s.
"Honeysuckle" trademark was applied for registration by Hongxing Daily Chemical in 1991, with registration number 603857. The registration category is the third category, including cosmetics, emollients, perfumes, talc powders, and beauty creams.
Southern Weekend reporter came to Hongxing Farm on September 1, 2022. The factory buildings of the past have been turned into farmland and woods.
79-year-old old employee of Hongxing Farm Wu Wei was once a middle-level cadre in the factory. According to him, in early 1994, the name of Hongxing Daily Chemical Company became "Shanghai Bili Cosmetics Company" and was still a state-owned enterprise.
Wu Wei recalled that Song Zhencai, who was once the deputy director of Bili Finance, established a private enterprise in 1997-Shanghai Caidie Cosmetics Co., Ltd. (hereinafter referred to as Shanghai Caidie).
Industrial and commercial data show that in 1997, Shanghai Bili was reorganized into a private joint-stock enterprise. The capital structure of the reorganized company is divided into three parts: Hongxing Corporation contributes in physical capital in the factory, and some employees of Shanghai Caidie and Shanghai Bili contribute in cash, each accounting for 1/3.
Song Zhencai is the actual controller of Caidie Company, holds the most shares and is the legal representative of Shanghai Bili. Wu Wei recalled that in 2008, the elderly Song Zhencai decided to sell the company. During the operation of
, Song Zhencai met Song Yong from Northeast China through Bili's sales staff, who was working as a cosmetics agent at the time.
Wu Wei told Southern Weekend reporters that in 2008, Song Zhencai sold Shanghai Bili to Song Yong for 4.2 million yuan, including more than 100 trademarks originally belonged to Hongxing Daily Chemical, and the honeysuckle trademark was also included.
Shortly after Song Yong bought the company, Li Xinglong became Bili's national salesperson. He recalled to Southern Weekend reporters that from 2008 to 2015, the annual sales of Beli Honeysuckle Flower Dew were between 15 million yuan and 20 million yuan, and the overall operating conditions were acceptable.
But in 2016, a series of accidents put Beli in a dilemma.
Li Xinglong recalled that the first issue of return was the Sichuan Hongqi supermarket chain. Due to problems such as damage to the product, Hongqi Supermarket applied for a return, but was rejected by Bili. "There are about 500 Hongqi chain supermarkets. So far, the 8 million market is gone," said Li Xinglong.
In addition, as the head of Bili's national sales business, Li Xinglong and Song Yong did not reach an agreement due to the share issue, and the two also terminated their cooperation at the end of 2016, and the sales channels of Bili's honeysuckle flower dew were also cut off.
In addition to market factors, daily chemical production does not meet the environmental protection requirements of Chongming to build a world-class ecological island.
In July 2016, Chongming "abolished the county and established a district", requiring vigorous promotion of comprehensive environmental governance, while guiding the differentiated and distinctive development of rural areas and state-owned farms.
Li Xinglong said that after Bili moved out of Hongxing Farm in 2017, Song Yong found two factories to do OEM processing of honeysuckle flower dew. Song Yong himself entrusts a law firm in Shanghai to sue other companies that produce "honeysuckle" flower dew.
revoked and failed to execute
In fact, as early as March 16, 1993, Chongqing Daily Chemical Factory proposed to the former Trademark Review and Adjudication Committee of the State Administration for Industry and Commerce that Hongxing Daily Chemical's "Honeysuckle" trademark registration was improper and applied for a ruling to cancel.
Chongqing Daily Chemical Factory produces Pretty Brand Honeysuckle Flower Dew Water. They believe that "honeysuckle, as a traditional Chinese medicine, is the general name of this product. Adding it to the flower Dew Water is the main raw material."
The application of Chongqing Daily Chemical Factory was supported by the former Trademark Review and Adjudication Committee of the State Administration for Industry and Commerce.
On January 27, 1994, the Trademark Review and Adjudication Committee issued a ruling stating that the trademark No. 603857 "Honeysuckle" registered by Shanghai Hongxing Daily Chemicals Factory with the Trademark Office will be revoked, and the association will transfer it to the Trademark Office for the revocation announcement. Shanghai Hongxing Daily Chemicals Factory should return the No. 603857 " Trademark Registration Certificate " to the Trademark Office within 15 days from the date of receipt of the ruling. The reason for revocation given by the
Trademark Review and Adjudication Committee is that honeysuckle is a common Chinese medicinal material with heat-clearing and anti-inflammatory effects. It is used in cosmetics, perfumes and other products, which can easily make consumers believe that such products contain honeysuckle ingredients and have medicinal effects; if such cosmetics do contain honeysuckle, the applied trademark directly indicates the main raw materials of the product, which violates Article 8 of the " Trademark Law " and is improper registration.
It is worth noting that the revocation document also states that the respondent Shanghai Hongxing Daily Chemicals Factory failed to defend the case within the prescribed time limit.
The lawyer of Shanghai Bili provided a copy of "Defense on the Legality of the Honeysuckle Trademark" by Hongxing Daily Chemical, with the date of signature on December 1, 1993.
defense document shows that the honeysuckle flower dew produced by Hongxing Daily Chemical was successfully developed in 1990 and put into production in 1991. Hongxing Daily Chemical believes that although "honeysuckle" is the common name of medicinal materials, the trademark is not registered and used on the fifth category of medicinal materials. At the same time, regarding whether it is the main raw material, Hongxing Daily Chemical's explanation is that honeysuckle extract only accounts for 0.3%, not the main raw material.
On March 28, 1995, the Trademark Office issued an announcement to revoke the registered trademark. A total of 46 trademarks have been revoked, and Honeysuckle No. 603857 is on the list.
paradoxically, the revocation has not been executed.
and so by July 1999, Hongxing Daily Chemical Factory transferred the trademark to Shanghai Caidie Cosmetics Co., Ltd. In February 2010, it was approved by the Trademark Office and transferred to Bili. This trademark was renewed on May 21, 2002 and November 16, 2021, respectively.
During the trial of the case, the effectiveness of the "Honeysuckle" trademark No. 603857 was always recognized by the court.Gong Dawei, a lawyer in a company sued, also believes that "although there are flaws, the honeysuckle trademark is still valid now."
The so-called "flaws" was when a lawyer went to National Intellectual Property Office (after the organization adjustment in 2018, the trademark review and other functions were adjusted to National Intellectual Property Office Trademark Office ) and retrieved relevant documents on the honeysuckle trademark, and learned that the trademark was asked to be revoked in 1994.
withdrawal of the lawsuit
The two highly-watched judgments were made by the Zhongshan Intermediate People's Court of Guangdong on June 24 and June 30, 2022 respectively.
The parties to the case ruled on June 24, 2022 are Bili and Jiangxi Chuangmei Industrial Co., Ltd. (hereinafter referred to as Chuangmei Company). On October 25, 2021, the First People's Court of Zhongshan City ruled in the first instance that Chuangmei Company compensated Bili 60,000 yuan, and at the same time stopped producing and selling the exclusive rights of the plaintiff's registered trademark No. 603857, and destroyed all infringing on all infringing goods.
Chuangmei Company appealed to the Zhongshan Intermediate People's Court, appealing to revoke the first-instance judgment. At the same time, Chuangmei Company proposed that Bili’s indiscriminate lawsuits caused Chuangmei Company to suffer huge losses. According to the 60,000 yuan penalty determined in the first instance, Bili should be ordered to compensate Chuangmei Company for the loss of 60,000 yuan in response to the lawsuit.
The focus of the dispute in the second instance was whether Chuangmei Company infringed on the exclusive right to the registered trademark of Bili Company.
Zhongshan Intermediate People's Court believes that the "Honeysuckle" trademark No. 603857 involved in the case is characterized by the main raw materials that directly represent the product, and the trademark owner cannot exclusively occupy the initial meaning of the trademark logo originally belongs to the public domain.
Gong Dawei believes that "honeysuckle itself is the name of traditional Chinese medicine in the public field and cannot be monopolized." In addition, the Zhongshan Intermediate People's Court held that "'honeysuckle' usually refers to the name of a plant, which has the effect of clearing heat and detoxifying, and the flower dew water is a common product name, and the main ingredient of the flower dew water accused of infringing is the honeysuckle extract."
The court believes that the existing evidence is not enough to prove that Chuangmei Company maliciously uses the "honeysuckle" trademark No. 603857.
On this basis, the court determined that Chuangmei Company's behavior was "descriptive use" rather than "trademark use", which was a legitimate use of the trademark logo, and finally ruled that Chuangmei Company did not constitute infringement of the exclusive right to trademark.
Gong Dawei believes that this judgment has the significance of "weather vane". A reporter from Southern Weekend contacted the Zhongshan Intermediate People's Court, which replied that the cases involving the honeysuckle trademark are relatively complicated, and there are still many cases under trial and will not be discussed for the time being.
At present, the attorneys of many companies sued said that they had received a notice of withdrawal from the plaintiff's lawsuit from the court.
As for the reasons for applying for withdrawal of the lawsuit, Tao Guonan, the attorney of Shanghai Bili, explained, "I waited for the final administrative and judicial determination of the Trademark Office and the Supreme Court of to ensure that the court can make a judgment in accordance with the law without dispute."
But some lawyers said that the accused company did not accept the plaintiff's withdrawal of the lawsuit. Some of the accused companies have sent applications and counterclaims to the court, and the counterclaims have had malicious litigation.
A lawyer Ma Shihui, who represented many companies in question, made a rough statistics, "On average, each company lost 200,000 to 300,000 yuan."
Wu Standing Committee Member believes that "this is a bump-up trademark protection. Bili uses seemingly legal means to protect her rights and interests, seriously damaging the normal market order."
Song Yong told the Southern Weekend reporter on the morning of September 2, 2022 that his original intention was to protect his rights. He also mentioned, "Many factories have produced honeysuckle flower dew for many years, and 80% of the appearance (approximate to the Beli Honeysuckle flower dew)."
Tao Guonan said, "If the Intellectual Property Office determines that the revocation decision was established in 1995, then a series of subsequent trademark transfer, renewal and change procedures must be cancelled, which will inevitably lead to the rights holder's administrative lawsuit; if the Intellectual Property Office determines that the revocation decision in 1995 has not taken effect, It is a relatively large controversy for other defendants."
On September 6, 2022, China Trademark Network issued a delivery announcement, showing that the State Intellectual Property Office had sent a letter to Hongxing Daily Chemical on August 15, 2022, with the document on the decision to revoke the approval of "Honeyday" registered trademark transfer and renewal of .
(At the request of the interviewee, Li Xinglong and Wu Wei are pseudonyms)
Southern Weekend reporter Wei Cuicui
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