Publishing house awarded Rmb1.5 million in damages for trade dress copycat

Introduction
Background
Decision

​Introduction

The Commercial Press has been publishing the Dictionary of Frequently Used Ancient Chinese Characters (古汉语常用字字典) since 1979. The dictionary was the first authoritative ancient Chinese dictionary to use modern linguistical and lexicographical methodology following the establishment of the People's Republic of China. It has been reprinted more than 160 times and sold over 22 million copies. In 1995 the dictionary won first prize at the National Press and Publication Administration Chinese dictionary awards. The Commercial Press also designed the trade dress of the dictionary, the fourth edition of which was used continuously between 2005 and 2016, making it a standalone source identifier among the public.

Background

The eighth editions of the books planned, edited and marketed by Beijing Qin Shi Cheng Culture & Media Ltd, China Youth Publishing Group Corporation and Beijing Tian Shui Yuan Book Development Corporation Limited (collectively, the defendants) between 2006 and June 2019 had similar or identical titles to the Commercial Press's dictionary and a similar trade dress.

Figure 1: cover of the plaintiff's dictionary

​

Figure 2: cover of the defendants' book

Decision

The court found that through its distribution, promotion and publicity, the plaintiff's dictionary had become popular and influential among the public, making it a classic. The court affirmed that the fourth edition of the plaintiff's dictionary was unique and distinctive, and that the trade dress could function as a source identifier and constituted the decoration of a commodity with a certain influence.

The defendants' book had a similar trade dress to the plaintiff's dictionary, which was likely to cause confusion and misunderstanding among the relevant public. The defendants and the plaintiff were competitors and the infringement had resulted in damages for the plaintiff. On 29 September 2020 the Dongcheng District Court of Beijing found that the defendants – the planning and marketing firms and the publishing house – had jointly planned and published the infringing books, which constituted unfair competition. The court found that the defendants should bear legal liabilities for the joint infringement, including:

• ceasing the infringement;
• eliminating its adverse effects; and
• indemnifying the plaintiff for damages of Rmb1.5 million.

The court also awarded the plaintiff Rmb80,000 as reasonable costs for rectifying the infringement.

This was the first court ruling in which a book planning firm and a publisher were held liable for joint infringement in a dispute concerning book decoration.

The defendants later appealed and the case is now pending trial before the Beijing Intellectual Property Court.

For further information on this topic please contact Yuming Wang, Minfeng Yang and Hongfeng Li at Wanhuida Intellectual Property's Beijing office by telephone (+86 10 6892 1000) or email (wangyuming@wanhuida.com, yangminfeng@wanhuida.com or lihongfeng@wanhuida.com). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.