Keywords: Trademark rights; distinctiveness and reputation; likelihood of confusion

Counseling Attorney: Qiu Na

Basic Facts of the Case: Shenyang [Company Name] Cold Drinks and Food Co., Ltd. is the owner of the “Daban” trademark, which is approved for use on goods in Class 30, including ice cream bars, popsicles, and ice cream. The company’s product line has repeatedly received prestigious awards and is a well-known brand.

Shenyang Certain Frozen Food Co., Ltd. discovered that, starting from May 2013, Daqing Certain Ice Cream Co., Ltd. has been manufacturing and selling a frozen food product labeled “Dongbei Daban,” which closely resembles the commonly known “ice pops” and “popsicles” in appearance. This product is part of a series offering several different flavors; each product comes with an outer package that must be removed before consumption. On the front center of the outer packaging of this product series, the four characters “Dongbei Daban” are prominently displayed along the length of the package. The font used for these “Dongbei Daban” characters is identical to the bold black typeface of the registered trademark “Daban.” To the left of the “Dongbei Daban” characters, when viewed head-on, appears the “Certain” trademark owned by the defendant, Certain Company. Moreover, the size of the “Dongbei Daban” characters is larger than that of any other text or graphic elements on the packaging.

Shenyang [Company Name] Cold Drink and Food Co., Ltd. alleges that Daqing [Company Name] Ice Cream Co., Ltd. has infringed upon its exclusive trademark rights by prominently using the term “Daban” on the outer packaging of its cold drink products. Consequently, Shenyang [Company Name] Cold Drink and Food Co., Ltd. has filed a lawsuit against Daqing [Company Name] Ice Cream Co., Ltd., demanding that the latter cease its infringing activities.

In the first instance, the Shenhe District People's Court of Shenyang City ruled that Daqing City [Company Name] Ice Cream Co., Ltd. must cease its infringing activities. Dissatisfied with this judgment, Daqing City [Company Name] Ice Cream Co., Ltd. appealed to the Shenyang Intermediate People's Court. During the second-instance proceedings, the two parties reached a mutually agreed-upon mediation settlement: Shenyang [Company Name] Cold Drinks and Food Co., Ltd. transferred the “Daban” trademark to Daqing City [Company Name] Ice Cream Co., Ltd. for a fee.

Case Highlights: Although Shenyang Certain Cold Drink and Food Co., Ltd. filed a lawsuit requesting Daqing Certain Ice Cream Co., Ltd. to cease its infringing activities, the parties involved in the case did not focus solely on infringement and obtaining compensation. Instead, they found a new balance through negotiation and, beyond the scope of their original claims, reached a mutually agreed-upon settlement.

Typical significance: As an intangible asset of a company, a trademark is an important competitive tool in the marketplace. Daqing City [Company Name] Ice Cream Co., Ltd., established in 1992, primarily manufactures and sells ice cream under the “[Company Name]” brand. The company boasts first-class equipment domestically and, since its inception, has consistently adhered to the principle of "Building a Century-Long Brand with Integrity and Conscience," thereby establishing the well-known image of the “[Company Name]” brand and earning the trust and support of a wide range of consumers. As the company’s production scale continues to expand and its market share rises, in November 2012, the “[Company Name]” trademark was recognized as a renowned brand of Heilongjiang Province. The infringing products involved in this case were the flagship products launched by Daqing City [Company Name] Ice Cream Co., Ltd. in May 2013, with sales covering regions including the three northeastern provinces, Inner Mongolia, Beijing, Shanghai, Tianjin, Shijiazhuang, Zhengzhou, Nanjing, Taiyuan, Wuxi, Suzhou, Hefei, Jinan, Hangzhou, Changzhou, Tangshan, Wuhan, Changsha, Xuzhou, Yangzhou, Jingzhou, Ningbo, Yiwu, and Baoding, among many others. The court’s ruling that Daqing City [Company Name] Ice Cream Co., Ltd. has infringed upon the trademark rights undoubtedly represents a severe blow to its goodwill. Moreover, if Daqing City [Company Name] Ice Cream Co., Ltd. complies with the judgment and ceases using the “Daban” mark—meaning it stops producing and selling products bearing the “Daban” logo—the resulting losses would be immeasurable, plunging the company’s operations into serious difficulties. Although Shenyang [Company Name] Cold Drinks and Food Co., Ltd., as the rightful owner of the trademark, also enjoys considerable recognition, it has recently ceased using the “Daban” trademark to produce and sell its products.

Therefore, although both parties remained grounded in the specifics of the case, they ultimately transcended the case itself. Through the joint efforts of both parties and the court, the case was finally resolved through mediation: Shenyang [Company Name] Cold Drinks & Food Co., Ltd. transferred the “Daban” trademark to Daqing [Company Name] Ice Cream Co., Ltd. for a fee. This not only safeguarded the legitimate rights and interests of Shenyang [Company Name] Cold Drinks & Food Co., Ltd., but also protected the goodwill of Daqing [Company Name] Ice Cream Co., Ltd., thereby minimizing its losses and enabling the enterprise to continue operating more effectively. At the same time, It has saved trademark resources, prevented trademarks from lying idle and unused, and achieved an organic integration of legal and social effects.