'Lao Gan Ma' is a chili sauce brand known to nearly everyone, and its trademark has been recognized as well-known many times. When another beef products company that itself held a well-known trademark printed the characters '老干妈' on its beef jerky packaging, litigation over the boundary of 'descriptive use' followed. The Beijing Higher People's Court awarded RMB 601,500 in total across two final judgments, establishing the test for when others use a well-known trademark as a 'product-feature name'.
Case Overview
Guiyang Nanming Lao Gan Ma Flavor Food Co., Ltd. ('Guiyang Lao Gan Ma') owns the Class 30 '老干妈' word trademark, registered on May 21, 2003 for fermented soybeans, chili sauce (seasoning), fried chili oil, and the like, and recognized as well-known in 2011, 2014, 2015, and 2016. Guizhou Yonghong Food Co., Ltd. ('Guizhou Yonghong') owns the 'Ox Head Brand and device' trademark on beef products in Class 29, which had also been recognized as well-known.
In 2016, Guiyang Lao Gan Ma found the product 'Ox Head Brand Lao Gan Ma Beef Jerky' sold in supermarkets bearing the 'Ox Head Brand and device' trademark on the front of the package with the characters '老干妈' printed in the middle, and sued Guizhou Yonghong and the sellers for infringement of its well-known trademark. Guizhou Yonghong argued that the '老干妈' characters were used to disclose that the product genuinely contained Lao Gan Ma fermented black bean oil—a reasonable indication—in a small font, so consumers would not be confused about source.
Issues in Dispute
- Whether printing '老干妈' on the product packaging was trademark use, or could qualify as descriptive fair use;
- Whether the accused product, beef jerky, being in a different class from the seasonings covered by the '老干妈' trademark, could still receive cross-class protection;
- Whether the use constituted dilution of the well-known trademark.
Judgments and Case Numbers
Both cases were tried at first instance by the Beijing Intellectual Property Court and finalized by the Beijing Higher People's Court.
Case one: first instance (2016) Jing 73 Min Chu No. 108, defendants Guizhou Yonghong and Beijing Carrefour Commercial Co., Ltd.; the plaintiff claimed RMB 8 million, and the first instance awarded RMB 150,000; second instance (2017) Jing Min Zhong No. 76, judgment on May 16, 2017, changing the award to RMB 175,000 including reasonable expenses.
Case two: first instance (2015) Jing Zhi Min Chu Zi No. 1944, defendants Guizhou Yonghong and Beijing Auchan Supermarket Co., Ltd.; the plaintiff claimed RMB 3 million, and the first instance awarded RMB 426,500 including reasonable expenses; second instance (2017) Jing Min Zhong No. 28, judgment on April 24, 2017, dismissing the appeal and affirming.
The two cases awarded RMB 601,500 in total. The series was selected into the Top 10 IP Judicial Protection Cases of Beijing Courts 2017 released by the Beijing Higher People's Court (sources: press conference of the Beijing Higher People's Court; the facts are also available in the 'explaining the law through cases' section of the Beijing Intellectual Property Court website and a Beijing News report of July 13, 2017).
Key Takeaways
- The court found that '老干妈' had reached fame at the time of the accused conduct and could receive cross-class protection extending to beef products;
- The crux was the legitimacy of the use: although the defendant did use Lao Gan Ma fermented black bean oil as an ingredient, the goods covered by the '老干妈' trademark had not become a common ingredient of the beef jerky industry, nor had the trademark become a commonly used product-feature name in the industry, so the 'descriptive use' defense could not stand;
- Prominently displaying another's well-known trademark on packaging objectively served to identify source, weakened the distinctiveness of the well-known trademark, and harmed the legitimate rights of its registrant;
- The gap between claimed and awarded amounts was huge: the plaintiffs claimed RMB 8 million and RMB 3 million respectively, but the court applied statutory damages because neither side fully proved actual losses or infringement profits and license fees were hard to determine, fixing discretionary amounts far below the claims.
Lessons for Businesses
Writing someone else's well-known trademark into your own product's name, packaging, or flavor description is not permitted even if the ingredient is genuinely used. The compliant approach is to use the generic industry name of the ingredient (such as 'fermented black bean flavor' or 'chili sauce flavor') and avoid using another's trademark directly; where mention in the ingredient list is truly necessary, it should be strictly limited to the necessary scope and set in normal type size. For rights holders, high claims need evidence to support them—without sales data, profit margins, and license-fee evidence, sky-high demands rarely receive support.
To engage the services described above, you may submit a trademark monitoring request on MyTMBee, and a filed trademark agent will follow up.