On January 19, Zhejiang Higher People’s Court published the “2020 Typical Case of Strengthened Judicial Protection for IP Rights heard by Courts in Zhejiang Province”. The trademark cross-class enforcement action that Watson & Band’s Partner Joe Liu and his team represented for the World Trade Center Association was selected among these cases. Where the trial judgment basically supported our claims, the appellate court Zhejiang Higher People’s Court corrected the application of law and supported our claim for damages in the full amount of 3 million RMB.

World Trade Center Association v. Taizhou World Trade Center Co., Ltd. et al, re Trademark Infringement and Unfair Competition

[Reason for Selection]

This is a typical case in which the People’s Court equally protect the legitimate rights and interests of domestic and foreign parties in accordance with the law and fully supported the rights holder’s claim for damages. World Trade Center Association (hereinafter “WTCA”) is a non-profit international economic and trade organization headquartered in the United States. It license parties around the world to use the trademarks including “WTC” and “WORLD TRADE CENTERS” and enjoys a high reputation. In this case, although the real estate services involved with the allegedly infringing trademarks and the exhibition services approved for WTCA’s trademarks belong to different classes, the appellate court held that the two parties’ trademarks were similar and on that basis held that the defendants’ unauthorized use of the identical or similar trademarks on similar services would cause confusion among the relevant public and therefore the defendants had infringed WTCA’s trademark rights. Said judgment represented the value orientation that stronger protection should be provided for trademarks with a high reputation, established a healthy international image of equal protection for the Chinese judicial authorities, and created a legal business environment safeguarding fair competition.

[Abbreviature of Adjudication]

Classification of Similar Goods and Services is used as a basis for the designated goods/services classes in trademark applications, with the aim to facilitate trademark search, application and administration. When determining whether or not the services involved in a trademark infringement case are similar, said Classification certainly can be used as a preliminary reference, but the key point still lies with the general knowledge of the relevant public. Combining the reputation and distinctiveness of the disputed trademark and the actual use of the allegedly infringing trademark, similarities and differences between the two parties’ trademarks should be analyzed in terms of the purposes, contents, methods and targets of the two parties’ services, and final decision should be made based on whether or not confusion and mistakes may easily be caused among the relevant public.

[Reference Index]

First Instance: Zhejiang Ningbo Intermediate People’s Court (2016) Zhe 02 Min Chu Zi No.781

Second Instance: Zhejiang Higher People’s Court (2020) Zhe Min Zhong Zi No.652

[Case Briefing]

WORLD TRADE CENTER ASSOCIATION (“WTCA”) was founded in 1969 and headquartered in the United States. Since it entered China in the 1980s, it has authorized a number of domestic organizations, institutions or enterprises to used trademarks including “”, “”, “”, “世界贸易中心” and “世贸中心”. The trademarks that WTCA claimed in this case, namely “No.1983918 ”, “No.1985436 ” and “No.1985438 ” were all approved to be used for exhibition services under Class 41. Dosun Holdings Group Co., Ltd. (hereinafter “Dosun Holdings”) as the investor, Zhejiang Dosun Real Estate Development Co., Ltd. (hereinafter “Dosun Real Estate”) as the developer, and Taizhou World Trade Center Co., Ltd. (hereinafter “Taizhou WTC”) as the operator, jointly built and operated Taizhou World Trade Center Tower in Taizhou and used trademarks and slogans including “”, “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” both inside and outside of the building. WTCA believed that said use of the trademarks by the three companies had jointly constituted trademark infringement and unfair competition, and therefore sued them before Zhejiang Ningbo Intermediate People’s Court. WTCA pled that the Court recognize the disputed trademarks as well-known trademarks and that the three defendants should cease the infringement and pay damages in the amount of 3 million RMB (including reasonable expenses).

[Judgment Summary]

Zhejiang Ningbo Intermediate People’s Court held after the trial that since the primary business of Taizhou WTC did not include exhibition services and since the class under which the allegedly infringing trademarks were used was neither identical nor similar to the exhibition services under Class 41 that were approved for the use of the disputed trademarks, no trademark infringement was constituted. However, Taizhou WTC’s use of the wording “世界贸易中心” in its enterprise name had constituted unfair competition by means of unauthorized use of another party’s enterprise name and false advertising. Where the three defendants jointly participated in the investment, development, call for investments and operation of the disputed building, they should be jointly liable for the infringement. On that ground, the Court issued its trial judgment on December 30, 2019, ordering the three defendants to case their unfair competition and jointly compensate WTCA for its economic losses and reasonable expenses in the amount of 2 million RMB.

Both sides objected and appealed the case before Zhejiang Higher People’s Court.

Zhejiang Higher People’s Court held after the trial that since the three disputed trademarks enjoyed an extremely high reputation for exhibitions services under Class 41, they should be entitled to stronger protection by law. Although Taizhou WTC used the allegedly infringing trademarks for real estate services, compared with the service class approved for the disputed trademarks, both parties’ trademarks were often labeled on real estates for the purpose of attracting investments. Where Taizhou WTC’s business scope included exhibition services and alleged in its advertisement that the building had multiple functions including exhibition and therefore formed intersections in its services with Class 41; and where the two parties’ service targets both included buyers of commercial real estates and potential customers at large conferences or exhibitions; the two parties’ services were considerably interrelated in terms of their purposes, contents, methods and targets and should be identified as similar services, given the general knowledge of the relevant public. Consequently, the alleged conducts, in addition to the unfair competition established in the trial judgment, had also infringed upon the disputed trademarks. On that ground, the Court issued its appellate judgment on November 13, 2020, holding that Dosun Holdings, Dosun Real Estates and Taizhou WTC should immediately cease their conducts of trademark infringement and unfair competition, that public apologies should be published on the official website of Dosun Holdings and in Taizhou Daily to eliminate the adverse influences, and that the three defendants should jointly compensate WTCA for its economic losses (including reasonable expenses) in the amount of 3 million RMB.