Docket No.: 652, second instance (终), civil case (民), (2020) High People's Court of Zhejiang Province (浙)

Lower Court Docket No.: 781, first instance (初), civil case (民), (2016) Intermediate People's Court of Ningbo, Zhejiang Province (浙02)

SUMMARY OF THE ARGUMENT

As the basis for specifying the category of goods/services in trademark application, the Similar Goods and Services Classification Table (“Classification Table”) aims to facilitate trademark search, application and administration. When judging similar services in the case of trademark civil infringement, we can certainly use the Classification Table as a preliminary reference, but the key is to analyze the purpose, content, method and object of the two services from the general understanding of the relevant public, together with the awareness and distinctiveness of the right to trademark and the specific use of the infringing mark in dispute. A comprehensive judgment shall be made based on whether it is easy to cause the likelihood of confusion among the relevant public.

STATEMENT OF THE CASE AND FACTS

WORLD TRADE CENTERS ASSOCIATION, INC.,

Plaintiff-Appellee

v.

DONGSEN HOLDING GROUP CO., LTD.,

ZHEJIANG DONGSEN REAL ESTATE DEVELOPMENT CO., LTD.,

TAIZHOU WORLD TRADE CENTER CO., LTD.,

Defendants-Appellants

The World Trade Centers Association (WTCA) was founded in 1969 with headquarter in the U.S. Since its entry into China in the 1980s, WTCA has signed licensing agreements with a number of organizations, institutions or enterprises in China and its members include World Trade Center Beijing and World Trade Center Shanghai. The above members are authorized by WTCA to use marks and words such as "", "", "" and "World Trade Center" inside and outside the building. The trademarks claimed by WTCA in this case are number 1983918 "", No. 1985436 "" and No. 1985438 "".

Dongsen Holding Group Co., Ltd. ("Dongsen Holding") as the investor, Zhejiang Dongsen Real Estate Development Co., Ltd. ("Dongsen Real Estate") as the developer and Taizhou World Trade Center as the operator have jointly built and operated the Taizhou World Trade Center Tower in Taizhou, used "", "WTC ", "TAIZHOU WORLD TRADE CENTER ", "台州世界贸易中心" and "一座城市只有一个世贸中心" ("There is only one WTC in each city" in English) and other marks and words on the facade and interior of the building, and used slogans including "一座城市只市只有一个世贸中心，其中一个在台州" ("There is only one WTC in each city. There is one WTC in Taizhou" in English) for publicity. WTCA held that the use of the above marks by those three companies had constituted trademark infringement and unfair competition, and then filed a lawsuit for the Intermediate People's Court of Ningbo, Zhejiang Province, requesting that the trademark in dispute be recognized as a well-known trademark, and claiming compensation of RMB 3 million (including reasonable expenses) from those three companies for economic loss.

By the first instance, Ningbo Intermediate People's Court judged that the defendants Dongsen Holding, Dongsen Real Estate and Taizhou World Trade Center should stop the unfair competition act by false publicity. The defendant Taizhou World Trade Center should stop the unfair competition act for using the Chinese words "世界贸易中心" (WORLD TRADE CENTER in English) as the name of the enterprise. The defendants Dongsen Holding, Dongsen Real Estate and Taizhou World Trade Center should jointly and severally compensate the plaintiff WTCA a total of RMB 2 million for the economic losses and reasonable expenses. Other claims by the plaintiff WTCA were rejected.

Dongsen Holding, Dongsen Real Estate and Taizhou World Trade Center refused to be subject to the judgment of first instance and appealed to the High People's Court of Zhejiang Province.

In the second instance, the High People's Court of Zhejiang Province held that the three trademarks in dispute had high awareness under the Class 41 "exhibition" and other services, and should enjoy strong protection. Although Taizhou World Trade Center had used the infringing marks in dispute under the real estate service category, by comparing with the service category approved for registration of its right to trademark, the company in both services had marked the relevant marks on the real estate as a way of investment attraction. Exhibition service was in Taizhou World Trade Center's business scope, and it also advertised that the building was designed for exhibition and other services, which was overlapped with the services under Class 41 in terms of content. Both services covered commercial real estate buyers and customers of large conferences or exhibitions. Therefore, the purpose, content, method and object of the two services were closely related, and the two services should be recognized as similar services according to the general understanding of the relevant public. Accordingly, in addition to the unfair competition judged by the first instance, the defendant's act also infringed the right to trademark in dispute.

In conclusion, by the second instance, the High People's Court of Zhejiang Province judged that Dongsen Holding, Dongsen Real Estate and Taizhou World Trade Center should immediately stopped trademark infringement act and unfair competition, publish a statement to eliminated the impact, and jointly compensate RMB 3 million (including reasonable expenses) to WTCA for economic losses.

ANALYSIS

This case is a typical one in which the people's court has protected the legitimate rights and interests of the Chinese and foreign right holders on an equal basis according to law and fully supported the right holder's claims.

The World Trade Centers Association (WTCA) is a US-based non-profit international trade organization, and its trademarks such as "WTC" and "WORLD TRADE CENTERS" have high awareness. It authorizes others to use those trademarks in the form of special license all over the world. In this case, in the building name and investment promotion advertisements, the defendant had used a large number of trademarks or marks with word size identical or similar to those of WTCA, resulting in the likelihood of confusion among the relevant public and serious infringement of the legitimate rights and interests of WTCA.

In this case, courts of Zhejiang Province had strengthened the trial of foreign-related intellectual property rights, increased the punishment of infringement act, and fully supported the claims of foreign party in the end. The judgment has established a good international judicial image of China in equal protection, and created a business environment of fair competition according to law.