Trademark Infringement Appeal: Beijing Zhongchuang Dongfang Education Technology Co., Ltd. vs. Beijing Haidian District Sailing Test Training School and Beijing Sailing Century Technology Development Co., Ltd. [Beijing Intellectual Property Court, (2015) Jing Zhi Min Zhong Zi No. 588 Civil Judgment].
Yunyan District Qihang English Training School of Guiyang City (Guiyang Qihang School) filed on October 18, 2001 an application for the registration of the trademark “Qihang School in Chinese character and Pinyin” (启航学校Qihang School). The trademark was registered in Class 41 of school (education services). Guiyang Qihang School granted a license for the exclusive use of this trademark to Beijing Zhongchuang Dongfang Education Technology Co., Ltd. (Zhongchuang).
Zhongchuang found out that two other schools, Beijing Haidian District Sailing Test Training School (Sailing School) and Beijing Sailing Century Technology Development Co., Ltd. (Sailing Company) were using on their jointly operated website the words “Sailing Postgraduate Entrance Exam in Chinese character” (启航考研) that were similar to licensed mark. Such words were used on all promotional material, business cards, textbooks as well as in the franchising operations.
Zhongchuang brought an action against Sailing School and Sailing Company before the court based on trademark infringement.
In response to the trademark infringement accusation made by Zhongchuang, Sailing School and Sailing Company submitted that they had been respectively established in 1998 and in 2003. That between 1998 and 2001, Sailing School had authored various textbooks targeting post-graduate entrance exam, published by China Renmin University Press. Sailing School and Sailing Company argued that their use of the trademark, which was their reputable business and trade name registered and used prior to the filing date of the plaintiff's trademark, did not constitute infringement.
Article 59.3 of the Trademark Law provides that “Where, prior to the application date of the registered trademark, a person has been using a trademark identical with or similar to such registered trademark in respect of the same or similar good, and such use has started before the registrant of the registered trademark and has acquired a certain influence, the holder of the registered trademark has no right to prohibit such person from continuing using his trademark within its previous usage range. However, the holder of the registered trademark may ask such person to properly attach distinguishable marks.” Since this clause was newly added in the third amendment to the Trademark Law, there are few precedents in the judicial practice and opinions are divided regarding its applicable prerequisites. This case analyses and clarifies the term, time point of prior use, “certain influence” and the previous usage range, serving as a point of reference to the trial of similar cases.