'Jiuliangye' and 'Wuliangye' differ by only one character, and that character was ultimately identified by the Supreme People's Court as the key to infringement. After six years of litigation, the Supreme People's Court judgment (2017) Zui Gao Fa Min Zai No. 234 overturned the 'no infringement' conclusions of the first and second instances, found 'Jiuliangye' and 'Jiuliangchun' infringed the exclusive rights to the 'Wuliangye' and 'Wuliangchun' trademarks, and awarded RMB 9 million in damages; in the same period, the Supreme Court also released a Wuliangye case applying two-times punitive damages against a repeat counterfeiter.
Case Overview
Yibin Wuliangye Co., Ltd. ('Wuliangye Company'), under license from the registrant, exclusively used the registered trademarks '五粮液' (Wuliangye), '五粮春' (Wuliangchun), and others. Gansu Binhe Food Industry (Group) Co., Ltd. ('Binhe Group') produced and sold baijiu labeled '九粮液' (Jiuliangye), '九粮春' (Jiuliangchun), '滨河九粮液', and '滨河九粮春', with the characters '滨河' (Binhe) printed small and '九粮液' and '九粮春' more prominent. Wuliangye alleged trademark infringement and sued.
Issues in Dispute
- Whether '九粮液' and '九粮春' were similar to '五粮液' and '五粮春';
- Whether the defendant's defense based on its own registered '滨河' trademark could stand;
- How to determine the damages amount.
Judgments and Case Numbers
First instance: the Beijing First Intermediate People's Court held in January 2014 that Binhe Group's production and sale of '九粮液' and '九粮春' did not infringe the '五粮液' and '五粮春' trademarks. Second instance: the Beijing Higher People's Court affirmed in (2014) Gao Min Zhong Zi No. 2462.
The Supreme People's Court granted retrial by ruling (2016) Zui Gao Fa Min Shen No. 3716 on June 27, 2017, and issued retrial judgment (2017) Zui Gao Fa Min Zai No. 234 in May 2019, holding that Binhe Group's prominent use of the characters '九粮液' and '九粮春' on the bottle body and outer packaging differed from '五粮液' and '五粮春' by only one character, and the difference lay only in the numeral character; considering the fame of the '五粮液' and '五粮春' series trademarks, the use of '九粮液' and '九粮春' was likely to confuse the relevant public about the source of the goods, constituting trademark infringement. Binhe Group was ordered to stop producing and selling baijiu labeled with the characters '九粮液' or '九粮春' or prominently bearing those characters, and to pay RMB 9 million in economic damages. The case's holding was written into the Annual Report on IP Cases of the Supreme People's Court (2019) (source: official website of the IP Tribunal of the Supreme People's Court; full judgment available through public judgment documents).
Related case involving the same brand: Wuliangye Company v. Xu Zhonghua et al., first instance (2019) Zhe 8601 Min Chu No. 1364 by the Hangzhou Railway Transport Court, second instance (2020) Zhe 01 Min Zhong No. 5872 by the Hangzhou Intermediate People's Court of Zhejiang Province. Because the defendants had previously been administratively penalized and criminally prosecuted for selling counterfeit Wuliangye baijiu, the court found they basically made a business of infringement and ordered two-times punitive damages. The case was selected into the 'Typical Cases on the Application of Punitive Damages in Civil IP Infringement Cases' released by the Supreme People's Court on March 15, 2021 (source: official website of the Supreme People's Court).
Key Takeaways
- A one-character difference can still be similar: courts do not ask only 'are they identical'—they assess likelihood of confusion comprehensively by the manner of use, the fame of the prior marks, and the defendant's subjective intent;
- Prominently displaying one's own trademark is no exemption: although the defendant held the registered '滨河' trademark, deliberately shrinking '滨河' and enlarging '九粮液' became evidence of intent to free-ride;
- Retrial can completely change the outcome: after losing at both instances, reversal remained possible through an application for retrial (accepted for trial by the higher court), with room for reorganizing evidence and legal argument;
- Repeat infringement and making a business of infringement are direct bases for punitive damages: administrative penalty records and criminal judgments all become evidence of 'serious circumstances'.
Lessons for Businesses
Hitching a ride on a famous brand by changing one character or the writing style carries extremely high risk and will be found to be free-riding. Corporate naming and trademark design should be fully searched, actively avoiding prior famous trademarks; when using one's own trademark on goods, display it regularly and prominently as one's own brand, rather than enlarging another's prior trademark into the main element consumers recognize. For rights holders, the six-year course of 'Wuliangye v. Jiuliangye' also shows that trademark enforcement requires long-term commitment, and that evidence preserved in administrative and criminal procedures should be kept for later civil claims.
To engage the services described above, you may submit a trademark monitoring request on MyTMBee, and a filed trademark agent will follow up.