Recently, the Zhejiang Higher People’s Court made a second-instance civil judgment in the trademark rights protection case of the World Trade Center Association (WTCA) that Watson & Band represented. The judgment supports our lawsuit claim for trademark infringement and a compensation award of 3 million RMB.

The Plaintiff in this case, the World Trade Center Association (WTCA), was established in 1970 as a non-profit and non-political international economic and trade organization aimed at promoting international economic exchanges and cooperation as well as promoting the development of international trade. Trademarks of the WTCA such as "WORLD TRADE CENTER", "WTC", and " " together with their corresponding Chinese translations enjoy a high reputation and popularity because the WTCA members use them for naming landmarks in cities around the world, such as the World Trade Center in New York, the World Trade Center Buildings in Beijing and Shanghai, etc.

The defendant in this case, the Taizhou World Trade Center and other three companies, carried out a series of infringing activities that infringed upon the plaintiff’s legitimate rights and interests through the authorized use of "World Trade Center" in their trade names and building names, and the use of the disputed logo in the inside and outside of the building, airport advertising, and website promotion, etc.

In this regard, in the first instance of this case, we pled with the court to order the defendant to stop the infringement on the plaintiff’s exclusive right to use the registered trademarks, to stop false advertising and other unfair competition, as well as to pay damages in the amount of 3 million RMB.

However, the court of first instance held that the approved service item for the plaintiff’s trademark registration was Class 41—exhibition services, and it was difficult to confirm whether the defendants were engaged in exhibition-related services from part of the defendants’ promotional activities. The defendants’ main business is neither identical nor similar to the approved item category for the plaintiff’s trademarks. Therefore, the court did not support our alleged trademark infringement. Only a part of the defendants’ conduct was determined to be unfair competition. The defendants were accordingly ruled to stop using the names of the companies and the buildings involved, stop using specific slogans for false advertising purposes and pay damages in the amount of 2 million RMB.

Obviously, the judgment of the court of first instance that failed to rule against the trademark infringement could only stop a part of the defendants’ conduct. The disputed trademarks with great reputation accumulated through the years could not be effectively protected. The amount of damages granted in the judgment was not enough to punish the bad faith of the alleged infringers.

Therefore, after the judgment of the first instance, we still insisted that the other party’s use of the logo on multiple media such as buildings, billboards and domain names, etc. constituted an act of using the same or similar trademarks for the services under the same class as approved for the disputed registered trademarks. Thus it should be identified as trademark infringement and we filed an appeal with the Zhejiang Higher People’s Court.

During the appellate proceedings, the Zhejiang Higher People’s Court held that the allegedly infringing marks related to the use on real estate services, and should not be deemed as similar services according to the International Classification of Goods and Services for the purposes of the Registration of Marks (Classification Table) and Similar Goods and Services Table (Similar Table) compared with the classes approved for use of WTCA’s trademarks disputed in this case. But at the same time, according to the relevant judicial interpretations of the Supreme People’s Court, the Court points out that in determining whether or not two services are similar, it should start from the general understanding of the relevant public, take the Classification Table and the Similar Table as references, and make a comprehensive judgment based on the specific facts.

Therefore, the appellate court correctly considered the overlapping between the two parties’ use of the mark or disputed trademarks in terms of the purposes, contents, methods, and objects of services, and found that the relevant public might not be able to clearly distinguish apart the sources of the services and therefore be led to confusion; for this reason the services should be deemed similar, and therefore the court concluded that Taizhou World Trade Company’s unauthorized use of the disputed trademarks should constitute infringement upon the exclusive right to use the registered trademarks.

Till then the court of appeal made it clear that although the services used by the allegedly infringing mark and the disputed trademarks belonged to different classes, in this case they actually constituted similarities and could lead to confusion, which made it necessary to protect the disputed trademarks, and the alleged conduct constituted trademark infringement. The appellate judgment of corrected the first instance court’s defects in the identification of the legal relationships – it did not mechanically follow the classification of the registered service classes, but instead creatively realized the substantive cross-class protection.

In addition, in terms of liability, considering that the trademark infringement and unfair competition behaviors of the alleged infringers were serious, that their bad faith was obvious, and that the profits they gained from the infringement considerable, the court of appeal fully supported our claim for damages in the amount of 3 million RMB.

The final judgment of this case fully reflects the high flexibility of the people’s courts in judging whether the goods or services using the trademark are similar or whether infringement of trademarks has been constituted. The full support to our claim for damages also reflects the people's court's powerful crackdown on bad faith free ride on the reputed trademarks of other parties.

Watson & Band team in this case:

Liu Yizhou, Partner

Ling Ru, trainee lawyer