Duck neck as a traditional Wuhan snack first entered the public view in 2000. Its popularity was primarily attributed to Chi Li, a famous contemporary Chinese writer. She gave a vivid description of duck neck in her classic novel Living Show. Even today people remain impressed with the actor’s lines “Duck neck goes with wine; life tastes very fine.”
Jingwu duck neck originated from the Jingwu road of Wuhan city in 1990s. It’s reported that in 1991 the duck neck, stewed in a secret recipe by the founder of Jiujiu duck neck Tang Najiu, attracted the majority of consumers and was always in short supply. Two years later, more than thirty shops selling duck neck continuously appeared on the Jingwu road. Since 2003, “汉口精武” (pronounced as Hankow Jingwu) 、“精武路第一家” (pronounced as Jingwulu diyijia) 、“九九精武” (pronounced as Jiujiu Jingwu) and other trademarks related with Jingwu term have secured registration with the State Trademark Office. It’s no exaggeration to say that when people say Wuhan, people think of Jingwu. Wuhan Zero Pollution-free Food Co., Ltd. (Wuhan Zero) as one party involved in the case, specializes in the development, production and marketing service of Wuchang fsh and Jingwu duck neck.
In Tianjin, there is also a famous Jingwu brand which was initially targeted at frozen foods such as meat and fish. The brand is now owned by the Tianjin Jingwu Livestock Breeding Technology Co., Ltd. (Tianjin Jingwu), which is located in the Jingwu Town, Xiqing District of Tianjin. It is well known that Jingwu Town is the hometown of Wushu master Hua Yin-jia, who founded the Jingwu Athletic Association in 1910.
At the beginning, the two companies produced different products. Wuhan Zero produced Jingwu duck neck while Tianjin Jingwu produces frozen meat and fish. In 2007, Tianjin Jingwu’s decision to add duck neck is what caused the dispute.
The First Round: Wuhan Zero’s Objection
The timeline to Wuhan Zero’s first objection is as follows:
On December 7, 1997, Tianjin Xinhong Foodstuffs Factory, also located in Jingwu Town of Tianjin, registered the Jingwu word mark and Jingwu design mark with the registered No. 11336, covering “frozen meat, sausage, fillet…” in class 29.
Then, on March 4, 2005, Xinhong Foodstuffs Factory fled the same “Jingwu word mark and Jingwu design mark”application with the applied No. 4523158, covering “cooked duck neck, cooked duck, cooked viscera of duck…” in class 29.
On December 26, 2010 and February 21, 2007, the registered Jingwu trademark and the new Jingwu trademark under application were respectively assigned to Tianjin Jingwu Livestock Breeding Technology Co., Ltd. In July 2007, the new applied Jingwu trademark entered the notice period.
On September 24, 2007, legal proceedings over the trademark began.Wuhan Zero retained Wen Jun, an attorney from Dewell & Partners, to object. Wuhan Zero filed an opposition against the Jingwu word mark and Jingwu design mark on the grounds that the opposed trademark created the likelihood of confusion with the cited trademarks (Hankow Jingwu, Jiujiu Jingwu and Jingwulu diyijia).
Wuhan Zero based the opposition on the following grounds: first, each opposed mark and the cited marks are all registered in class 29 and contain the term “Jingwu”, thus forming similar marks; second, if any opposed mark was put on the market, it would likely cause confusion among consumers, which constitutes unfair competition and is forbidden; finally, the opposed trademark attempts to make use of the reputation established by Wuhan’s Jingwu, which violates the principle of good faith. Consequently, the registration of the opposed trademark should be cancelled.
On December 10, 2008, the State Trademark Office denied the opposition and ruled that the opposition raised by Wuhan Zero were not tenable on the grounds that the opposed marks and the reference marks did not constitute similarity. However, Wuhan Zero was allowed to use the related trademark by adding a prefix or suffix to the term of “Jingwu.” As mentioned above, before 2005, Tianjin Jingwu and Wuhan Zero both registered the “Jing wu” trademark in class 29, but produced different goods. The problem arose when Tianjin Jingwu tried to add “duck neck” in its coverage. Mi Aqian, counsel for Tianjin Jingwu, argued that “Tianjin Jingwu has the prior right over the Jingwu trademark. It’s allowed by law to extend the scope of the registered trademark’s application.”
The Second Round: The Board’s Review
Wuhan Zero was dissatisfied with the Trademark Office’s decision and applied for a review from the Trademark Review & Adjudication (TRAB, or the Board), alleging that the Trademark Office ignored the history and influence of Wuhan Jingwu and made an unfair ruling when deciding that the opposed trademark didn’t constitute similarity with the three cited trademarks. Wen Jun, on behalf of Wuhan Zero, further emphasized his appeal as follows: first, the history and influence of Wuhan Jingwu is the key of the case ruling; second, the opposed trademark and the three cited trademarks constitute similarity; third, Tianjin Jingwu’s action of applying Jingwu trademark for its cooked duck neck is a kind of squatting; fourth, duck neck as an emerging industry has become the symbolic of the city of Wuhan and receives a large amount of support from local government. Consequently the State Trademark Office’s decision should be overturned.
On June 28, 2010, the Board ruled as follows: the opposition raised by the Wuhan Zero is valid. The Jingwu trademark registered for “cooked duck neck; cooked duck; cooked viscera of duck” by Tianjin Jingwu Livestock Breeding Technology Co., Ltd. should be cancelled. It is easy to see that the Trademark Office and the Board belong to different administrative management systems and they hold opposite attitudes over the Jingwu trademark dispute. Tianjin Jingwu noted differing standards between the Trademark Office and the Board and argued that the two bodies should adopt the same criteria.
The Third Round: Facing a Charge in Court
The Tianjin Jingwu, dissatisfied with the Board’s decision, appealed to the Beijing No.1 Intermediate People’s Court on July 22, 2010. Tianjin Jingwu did not just appeal the decision, but named the Board as a party in the complaint. In this action the Board was named as the defendant and the Wuhan Zero became a third party to the action. Tianjin Jingwu requested that the Intermediate Court reverse the decision and the defendant (the Board) should bear all litigation costs. Tianjin Jingwu argued that the Board wrongly ruled that the opposed trademark and the cited trademarks constitute similarity. On October 21, 2010, a trial was held and Wuhan Zero, now a third party, provided statements as follows:
1. The defendant’s decision that the opposed mark and the cited marks constitute similarity is correct. The opposed mark has the characters of 精武 (Jingwu) which have been used on the cited marks. Words are the important identification mark of a trademark. Furthermore, the opposed marks is also used in the cooked duck products. It was correct to conclude that the Tianjin Jingwu infringed the Wuhan Zero’s legal rights.
2. The opposed trademark affected the right holders’ prior rights. The plaintiff’s registering the Jingwu trademark was in violation of the principle of good faith, that is, the plaintiff attempted to steal the fruit of another’s labor in bad faith, as Jingwu duck neck had earned a high reputation among consumers after twenty years’ operation. Therefore, the opposed trademark affected the right holders’ prior rights.
3. The opposed trademark is likely to mislead consumers regarding the origin of Jingwu duck neck. Jingwu duck neck originated from the Jingwu road in Wuhan and has become a famous product. If the opposed trademark is also used in “cooked duck neck; cooked duck; cooked viscera of duck…” it is likely for consumers to misunderstand the Jingwu duck neck of Tianjin as Wuhan’s products, thus affecting the fair market competition order; infringing the legal rights enjoyed by Wuhan duck neck producing enterprises and harming the interest of consumers as well.
When asked who would win the case, the attorney on behalf of Wuhan Zero said, “Frankly speaking, it is possible the Court will affirm the Board’s decision,” while the Tianjin attorney stated it was very likely that the Tianjin Jingwu would lose the lawsuit. But, he emphasized, “Losing the case doesn’t mean Tianjin Jingwu is in violation of related laws.”
According to the latest news issued on November 23, the Beijing No.1 Intermediate People’s Court of first instance affirmed the Board’s decision that the Jingwu trademark registered by Tianjin Jingwu is similar to the three cited Jingwu trademarks. Tianjin Jingwu is dissatisfed with the Court’s decision and appealed to the Beijing Higher People’s Court. China IP will pay close attention to the ongoing litigation.
Editor’s Notes:
Chin Woo Athletic Association is a Chinese martial arts association founded in Shanghai on July 7, 1910, but conflicting sources also cite dates in 1909. It can be found spelled in many ways - Jing Mo, Ching Wu, Jing Wo, Jing Wu etc. Many sources say that Chin Woo was founded by Hua Yin-jia (霍元甲).
