This case is one of the Top 10 IP Cases of the Year (2015) selected and summarised by the Supreme People's Court. This update provides an edited translation of the court's case summary and significance, as well as brief commentary as appropriate.
A recent trademark infringement case demonstrates that evidence of establishment and prior use of a business and trade name is sufficient against claims of similarity.
On October 18 2001 Yunyan District Qihang English Training School of Guiyang City filed an application to register the trademark QIHANG SCHOOL in Chinese characters and Pinyin (????) in Class 41 for "educational services". The school granted a licence for the exclusive use of the trademark to Beijing Zhongchuang Dongfang Education Technology Co Ltd.
Zhongchuang discovered that two other schools – Beijing Haidian District Sailing Test Training School and Beijing Sailing Century Technology Development Co Ltd – had been using the mark SAILING POSTGRADUATE ENTRANCE EXAM in Chinese characters (????) on their shared website. The mark had been used on all promotional materials, business cards and textbooks, as well as in franchising operations.
Zhongchuang brought an action against the sailing school and the sailing company for trademark infringement based on similarity to its licensed mark ????.(1)
In response, the sailing school and the sailing company submitted that they had been respectively established in 1998 and 2003, and that between 1998 and 2001 the sailing school had authored various textbooks on the postgraduate entrance exam, published by China Renmin University Press. The sailing school and sailing company argued that their use of the mark ???? did not constitute infringement as this was their reputable business and trade name, and had been registered and used before the filing date of the plaintiff's mark.
Article 59.3 of the Trademark Law provides that:
"Where, prior to the application date of the registered trademark, a person has been using a trademark identical with or similar to such registered trademark in respect of the same or similar good, and such use has started before the registrant of the registered trademark and has acquired a certain influence, the holder of the registered trademark has no right to prohibit such person from continuing using his trademark within its previous usage range. However, the holder of the registered trademark may ask such person to properly attach distinguishable marks."
Since this clause was only recently added in the law's third amendment, few precedents have been set in judicial practice and opinion is divided regarding its applicable prerequisites. This case analyses and clarifies the period and range of prior use, as well as the term 'certain influence', and serves as a point of reference for similar cases.
For further information on this topic please contact Hui Huang, Paul Ranjard, Huimin Qin or Nan Jiang at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email ([email protected], [email protected], [email protected] or [email protected]). The Wan Hui Da Law Firm & Intellectual Property Agency website can be accessed at www.wanhuida.com.
Endnotes
(1) Beijing Zhongchuang Dongfang Education Technology Co Ltd v Beijing Haidian District Sailing Test Training School (2015) Jing Zhi Min Zhong Zi 588 civil judgment.
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