CASE 10:
“HUJIANG” TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
◆ First instance: (2016) Hu 73 MinChu No. 368
◆ Second instance: (2017) HuMinZhong No. 350
Shanghai Municipal
[Synopsis]
Plaintiff: University of Shanghai for Science and Technology
Defendant: Hujiang Education Technology (Shanghai) Co., Ltd.
In the nationwide faculty adjustment in 1952, the original faculty of University of Shanghai (in Chinese, this name is pronounced “Hujiang”) was merged into four schools including the Shanghai Industrial School. The campus and attached houses were all assigned to the Shanghai Industrial School. After that, Shanghai Industrial School was renamed several times and merged with Shanghai Mechanical College i n 1996 t o form the University of Shanghai for Science and Technology. The University of Shanghai Alumni Association of was changed to the University of Shanghai for Science and Technology Alumni Association in 2011. The School of Foreign Languages of that university opened the Hujiang Foreign Language Training Center in 2007. In 2009, Fu Cairui, a graduate of the school, established Shanghai Mutual Culture Communication Co., Ltd., and changed its name to Hujiang Education Technology (Shanghai) Co., Ltd. (referred to as Hujiang Company) in 2016. Fu Cairui and Hujiang Company successively applied for registration of trademarks such as “Hujiang English,” “Hujiang” and “Hujiang Japanese,” and used the words “Hujiang” in online education activities. Hujiang Company wrote in the article “What about Hujiang and Cambridge” issued at its WeChat public account: “Several years ago, Xu Zhimo, the most famous student of Hujiang University, had a fate with Cambridge... Now the Internet platform Hujiang becomes attached to Cambridge once again to bring a high-quality course experience to Chinese learners...”; and stated on its official website that “University of Shanghai is a church university located in Shanghai in the first half of the 20th century. After liberation, it has faded away. People are delighted to see that the Hujiang Online School was born...”. The University of Shanghai for Science and Technology files a lawsuit to the court, claiming that Hujiang Company had infringed the unregistered well-known trademark rights of the University of Shanghai f o r Science and Technology, which had constituted unfair competition, requesting that Hujiang Company stop the act of infringing its trademark rights and unfair competition.
The court of first instance held that although the University of Shanghai for Science and Technology had a certain historical relationship with University of Shanghai, it cannot prove that “Hujiang” has become an unregistered well-known trademark of the University of Shanghai for Science and Technology. As to the application of Hujiang Company for registration of “Hujiang” and the trademark containing the word “Hujiang,” the University of Shanghai for Science and Technology can resolve such issue through administrative procedures. Although the “Hujiang.com” operated by Hujiang Company has no historical relationship with University of Shanghai, it deliberately built the relationship between them in its propaganda, with an obvious intention of taking advantage of the reputation of “University of Shanghai”, and the relevant expressions constituted misleading false propaganda. Therefore, the court ruled that Hujiang Company should immediately stop the unfair competition of false propaganda and rejected the other claims of the University of Shanghai for Science and Technology. After the judgment of the first instance, both the Plaintiff and the Defendant filed appeals. The court of second instance held that the “Hujiang” logo of the University of Shanghai for Science and Technology did not meet the standard for well-known trademark, and “Hujiang” was neither the name nor the trade name of the University of Shanghai for Science and Technology, hence its request for protecting the “Hujiang” logo as an unregistered well-known trademark or company name was not supported. Although the relevant propaganda content released by Hujiang Company was not fictitious, i t carried out propaganda by comparing “Hujiang.com” with the original University of Shanghai. With these propaganda, the company built sufficient grounds for the public to believe mistakenly that there was a relationship between the two, and such act damaged the legal rights and interests of other related operators, disrupted the market competition order and constituted false propaganda. Based on the aforesaid grounds, the court dismissed the appeal and upheld the original judgment.
[Judge's Comment]
This case involves the protection of IPRs of the old school name. The court has made a useful exploration on whether the old school name can be legally protected as the name of the relevant institution, and the relevant colleges use the old school name as a commercial mark, and the examination standards for seeking trademark protection. It plays a certain guiding role in the trial of related cases, and at the same time corrects the behavior of the market operators who improperly use the old school name when propagating goods or services, having achieved good legal effects and social effects.
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