OREO VS AO LI GEI, Who Is the Winner？

With exaggerated facial expressions and impassioned tones, the cheering phrase of “奥利给 (Ao Li Gei in Chinese) ” went viral on short-video platforms. This phrase’s popularity also earned it a spot in the top ten internet buzzwords of 2020. However, the widespread use of this phrase also caught the attention of a company called Shanghai Senyi Industry Co., Ltd. (hereinafter referred to as “Senyi”), who smelt a business opportunity. In the same year, they began to apply for and register trademarks for “奥利给(Ao Li Gei in Chinese)” as well as “奥力给(Ao Li Gei in Chinese) ”. Afterwards, they started using these trademarks on their own cookies and wafers, and conducting large-scale sales. These products were not only sold in some small and medium-sized convenience stores, but also quickly entered high-end convenience stores and chain supermarkets like 7-11, BHG, and Tesco, as well as major online sales platforms such as TMall, JD, and PDD.

Consumers brought this product to the attention of Mondelēz China, a member of the Mondelēz International group of companies, due to the confusing similarities of the AO LI GEI products to its OREO products.  Let's take a look at the comparison pictures of the two products.

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From the brands, to the cookie device, packaging, and other aspects, there are many similarities between the two products, making it easy for consumers to mistakenly think that “奥利给” / “奥力给” (Both are “Ao Li Gei” in Chinese) brand is one of OERO’s sub-brands, or like the well-known Asian artist Jackson Wang, mistakenly believe that the providers of the two products are related. However, neither of them are the fact.

In order to protect its own and the legitimate rights and interests of consumers, Intercontinental Great Brands LLC (hereinafter, “IGB”), the owner of the OREO trademarks and a member of the Mondelēz International group of companies,  entrusted attorneys Michael Fu and Yang Luo from Chang Tsi & Partners (hereinafter referred to as “this Firm”), to send a cease and desist letter to Senyi and the manufacturer of its products (Dacheng County Mei Sa Jia Shi Da Food Co., Ltd., hereinafter referred to as “Mei Sa Jia Shi Da”) in August 2020, requiring these two companies to immediately cease the infringement. Since these companies showed no intention of cooperation and launched more product lines and further expanded their online and brick-and-mortar sales network, IGB eventually filed a trademark infringement civil litigation against these two companies before the Xicheng District People’s Court of Beijing.. IGB mainly demands that Senyi and Mei Sa Jia Shi Da immediately stop producing, selling, and promoting cookies and wafers using trademarks , , and , which are highly similar to the “OREO Series Marks” and “OREO Cookie Device Marks” (hereinafter referred to as the “infringing products” and “infringing trademarks”), and they shall jointly compensate for the economic losses and reasonable expenses incurred in investigating and stopping the infringement. 

Senyi and Mei Sa Jia Shi Da argued that their trademarks do not infringe on the “OREO Series Marks”, for the following reasons: First, Senyi owns the registered trademarks No. 53389500  and No. 21979391 , both in Class 30, so it has the right to use the infringing trademarks; Second, the infringing trademarks are distinguishable from the “OREO Series Marks” and “OREO Cookie Device Marks”, so the two trademarks do not constitute similar trademarks; Third, the use of “奥利给 (Ao Li Gei in Chinese)” on the products is the use of an internet buzzword, not a trademark; Fourth, the infringing products have low sales, low prices, a limited market reach, and have not had any impact on the sales of IGB’s products. Moreover, they allegedly claimed that they did not profit, and even suffered losses, so IGB’s claim for compensation has no factual basis.

In December 2022, however, the Xicheng District People’s Court of Beijing (“Court”) issued its  Civil Judgment (Case No.: (2021) Jing 0102 Min Chu 35274), which ruled in favor of IGB and ordered Senyi and Mei Sa Jia Shi Da to stop infringing on the exclusive trademark rights of IGB and to compensate IGB’s economic losses and reasonable expenses at the amount of CNY700,000. The court held that:

First, the trademarks  and   are similar to 奥利奥(OREO in Chinese) marks from pronunciation, overall appearance, and meaning so they are similar trademarks. The cookie device mark “”, is similar to “OREO Cookie Device Marks”, including but not limited to , from composition, colour, overall structure, and etc., so they are similar trademarks. IGB’s trademarks have obtained high distinctiveness and reputation through their extensive promotion and use. As the competitors in the industry of cookies, it is impossible that Senyi and Mei Sa Jia Shi Da do not know IGB’s trademarks. However, instead of actively avoiding any disputes, they chose to manufacture products with the trademarks similar to IGB’s, which shows their obvious bad faith of free-riding. Even though the evidence provided by Senyi and Mei Sa Jia Shi Da could prove that “奥利给 (Ao Li Gei in Chinese)” is an internet buzzword,  this word has weak correlation with the ingredient, function, and raw materials of cookies so it is not a generic word of cookies. From how the infringing trademarks are used, Senyi and Mei Sa Jia Shi Da are not using “奥利给 (Ao Li Gei in Chinese)” maintaining its original meaning but separately marking them in an extensive way and with the “TM” logo. This can sufficiently prove the subjective intention of Senyi and Mei Sa Jia Shi Da for using  and   as trademarks. In terms of the position and mode of use, these two marks have played the role to distinguish the source of goods. The infringing products, including cookies and wafers, are identical to cookies designated by IGB’s trademarks. 

When the two parties’ marks are similar, the way how the infringing trademarks are used can sufficiently cause confusion. Considering that Mei Sa Jia Shi Da is authorized by Senyi to manufacture the infringing products, it shall be determined that they both proceeded with the manufacture of the infringing products. Hence, Mei Sa Jia Shi Da’s act of producing the infringing products and Senyi’s acts of authorizing Mei Sa Jia Shi Da to produce and of selling the infringing products shall be recognized as the use of trademarks similar to IGB’s trademarks on identical goods. This shall easily cause confusion and harm the exclusive trademark rights of IGB. The evidence in this case cannot prove that the infringement has been ceased. Therefore, Senyi and Mei Sa Jia Shi Da shall be liable to cease the infringement and compensate the loss of IGB. 

Second, as for the amount of damages, the court determines that Senyi and Mei Sa Jia Shi Da shall burden the damages and reasonable expenses at the amount of CNY 700,000 by taking into consideration factors including 1) IGB’s trademarks have high reputation; 2) the sale of the infringing products are sold both online and offline and sale territory is wide; 3) the sale volume of the infringing products is relatively big; 4) the proportion of the infringing trademarks on the infringing products is relatively large and their font is relatively extensive, which will greatly affect consumers’ choice; and 5) the subjective bad faith of Senyi and Mei Sa Jia Shi is relatively obvious. 

After the court judgment, Senyi and Mei Sa Jia Shi Da finally decided not to appeal and complied with the first-instance judgment. In this trademark infringement battle between 奥利奥 (OREO in Chinese) and 奥利给 (Ao Li Gei in Chinese), 奥利奥 (OREO in Chinese) has always been the more powerful contender and ultimately emerged victorious. Not only did it successfully combat the egregious trademark infringement behavior in this case, but it also strongly and vigorously protected its own and the legitimate rights and interests of consumers at large.

Authors

Michael Fu

Chang Tsi & Partners

Partner、Attorney at Law

Michael Fu has focused his practice on intellectual property law for more than 15 years. He could provide intellectual property strategy with creative thinking for clients, and he has represented many Fortune 500 companies including Mondelez, HP, Under Armour, Michael Kors, Tiffany, Four Seasons, etc. 

He excels at helping clients with the enforcement of their IP rights through administrative and judicial channels in China. 

As a litigator and partner, Michael leads a professional team with more than 20 attorneys, paralegals, and legal assistants. He also teaches the young attorneys and associates with his knowledge and helps them to grow up faster. With his lead, he and his excellent team have won numerous high-profile cases which often attract the media’s attention.

Yang Luo

Chang Tsi & Partners

Attorney at Law

Yang Luo has been engaged in foreign-related intellectual property legal services for seven years. She excels in providing comprehensive rights protection strategies and effectively implementing specific actions for foreign clients facing intellectual property infringement issues in the Chinese market, earning high recognition from her clients.

Source: Chang Tsi & Partners

Editor: IPR Daily-Ann