As online sales continue to grow, the issue of trademark infringement has become increasingly significant due to advancements in internet technology. Many businesses rely on online sales, which has unfortunately led to some dishonest sellers taking advantage of others' trademark rights. This raises the question: how should trademark infringement be assessed in the realm of online sales? A recent retrial case for trademark infringement provides insight into this issue.
What are the circumstances of trademark usage?
Determining whether a trademark has been used is crucial in assessing trademark infringement. According to Article 48 of the Trademark Law, trademark use falls into two categories:
1. Using the trademark on goods, packaging, or containers, as well as on transaction documents;
2. Using the trademark in advertising, exhibitions, and other commercial activities. In the context of online sales, consumers often rely on sellers' descriptions and promotional content to understand a product's brand and origin.
Therefore, even if a product does not display a trademark label, using a registered trademark on an online sales page is equivalent to using it on the physical product, thus constituting trademark use. In this case, Fang included the "Qiao's" mark in the title of his product link, which served to identify the goods' source, qualifying as trademark use in advertising and other commercial activities. The "Qiao's" mark closely resembles the plaintiff's trademark, and using it on similar goods without permission from the plaintiff constitutes a violation of trademark rights.
Is purchasing the physical product necessary to establish trademark infringement?
Typically, trademark infringement is assessed by comparing physical products to identify counterfeits. In the initial ruling of this case, the court favored the defendant because the plaintiff did not present the allegedly infringing product for comparison. However, not all cases necessitate purchasing the infringing products.
As previously mentioned, if a trademark is used solely in advertising and other commercial activities, and the product itself does not infringe, a purchase may not be required. The use of a trademark on a webpage and on a product can be viewed as distinct actions. If a trademark's use on a webpage can be visually recognized as counterfeit through promotional images, it can independently constitute trademark infringement without needing to purchase the product; conversely, if it cannot be clearly identified, a purchase is necessary.
In this case, through notarized video and photo comparisons, the plaintiff's authentic billiard tables displayed "JOY Qiao's" markings and contact information, while Fang's products lacked any clear markings or text, and Fang did not provide evidence of legitimate sourcing. Consequently, the appellate court determined that Fang was liable for infringement.
Conclusion
In conclusion, when assessing trademark infringement in the online sales environment, it is essential first to evaluate whether the behavior constitutes trademark use, and then to determine if purchasing the physical product for comparison is necessary based on the webpage display. If the counterfeit can be clearly identified from the page, the notarized purchase of the product is not required.
