(By You Yunting) Introduction to the Case:
Appellant (1st defendant at first instance): Qingdao Publishing House
Respondent (plaintiff at first instance): Shandong Shiji Tianhong Education Technology Co., Ltd (the “Tianhong Education”)
2nd Defendant at first instance: Beijing Readbuy Tianxia Information and Technology Co., Ltd (the “Readbuy”)
Court of first instance: Beijing Fengtai District People’s Court No.: (2014)丰民初字第03829号
Court of second instance: Beijing No.2 Intermediate People’s Court No.: (2014)二中民（知）终字第10356号
On November 14, 2008, the Tianhong Education received the exclusive rights of the “智慧背囊” trademark numbered 4697993 (the “disputed trademark”, has a literal meaning for wisdom suggestions and advinces) under Class 16 for books and printed publications. Starting from May 2013, the Tianhong Education found a lot books named 送给青少年的智慧背囊 (the “disputed book”) publishing by Qingdao Publishing House which used the same Chinese characters as the disputed trademark distinctively on their surface covering, title pages and spines. This made the general consumers hard to distinguish between the disputed books and the book published by Tianhong Education, and thus it is likely to lead the consumer into thinking that they are associated with each other and be from the same company, causing confusion.
The Tianhong Education claimed, on the circumstance that Qingdao Publishing House significantly used the disputed trademark as its book name without permission leading the public into confusion, that Qingdao Publishing House’s use of the disputed trademark had already damaged the interests of the Tianhong Education and the Readbuy selling the disputed books also constituted infringement against the Tianhong Education. Therefore, the Tianhong Education brought the two defendants into the court.
The court decided the following at the trial of the case:
1 The respondent Tianhong Education holds the exclusive rights of the disputed trademark under Class 16 for books and printed publications under the protection of the Trademark Law.
2 Where the disputed books was named 送给青少年的智慧背囊, Qingdao Publishing House significantly used the Chinese characters “智慧背囊” on their surface covering, especially the solely use at a new paragraph. Although Qingdao Publishing House argued that it had registered trademarks for books and printed publications but did not used it on the disputed book, the court determined, in consideration for the use of the 智慧背囊 on the disputed book, that the 智慧背囊 was used in the disputed book to distinguish the resource of goods.
3 Pursuant to Article 52 of the Trademark Law, using a trademark that is identical or similar to a registered trademark in connection with the same or similar goods without the authorization of the trademark registrant shall constitute an infringement of the exclusive right to use a registered trademark. Considering that the disputed book constituted the same goods as that of the disputed trademark, Qingdao Publishing House distinctively used the Chinese characters 智慧背囊 on the pronunciation, form and meaning the same as the disputed trademark, without visually difference between the disputed book and the book published by the registrant. This is sufficient to create confusion among the relevant public, thus constituting trademark infringement against the Tianhong Education.
Therefore, the court determined that Qingdao Publishing House, which used the similar trademark to the disputed trademark owned by the Tianhong Education as its goods name, led the public into confusion and constituted trademark infringement. Furthermore, the Readbuy which sold the disputed books also constituted infringement but shall not be liable for damage by proving the legally acquisition and of the disputed books and informing of the providers.
Seen from the judgment, the court decided that Qingdao Publishing House which used the characters “智慧背囊” constituted trademark infringement. However, in the use of the characters “智慧背囊”, Qingdao Publishing House’s used the characters “智慧背囊” at the sore point of the intellectual property protection, nearly non-infringement.
Differentiating from the property rights, intellectual property rights are the rights given to persons over the creations of their minds. Therefore, a line shall be drawn to divide between the right holder of intellectual property rights and the public. Some of the intellectual property rights must be owned by the whole public, rather than exclusively owned by the right holder. In the use of the characters “智慧背囊”, its commonality indicates that, using the natural meaning of the characters over could, for example if Qingdao Publishing House named the book “送给青少年的智慧背囊” with a same font size, legally use the characters “智慧背囊” which has already been registered trademarks, without using over the line of intellectual property rights.
This may be generally considered as the use of its natural meaning over the characters of trademarks. It belongs to fair use, not using it as trademarks. Such being the case, however, why did the court decide the defendant constitute trademark infringement?
The key point in the judgment is that the Qingdao Publishing House highlighted the “智慧背囊” within bigger font size than the “送给青少年” over differentiating the font size in the use of the book 送给青少年的智慧背囊, thus its high lightening make its fair use into the use of trademark and cause trademark infringement.
In the competitive market-oriented economy, competitors display their respective abilities. For example, in this case, the plaintiff which established its brands and obtained competition advantages attempted to protect its brand by means of trademark. Another example, the defendant could have carpeted ride over the plaintiff’s trademark in a way that is ingenious and legally, thus gaining benefits and legality. However, where the laws and regulations are rigorous and meticulous, one more step may lead fair use into infringement.
Finally, the Qingdao Publishing House may, if could at first ask a professional lawyer for an intelligence so as to publish the “送给青少年的智慧背囊” correctly and appropriately for the use of the “智慧背囊”，not be judged trademark infringement on the fact that it fail to realize using the literal meaning of “智慧背囊”.