Trial Docket: (2016) Jing 73 MinChu No. 277
City of Beijing
[Headnotes]
The court found "Xinhua ZIDIAN" to be an unregistered well known mark taking various factors ranging from the degree of being well known in the relevant sectors of the public, time period of continued use of "Xinhua ZIDIAN," sales figures, scope of advertisement, and records of protection, etc.
[Synopsis]
Plaintiff: The Commercial Press Co.Ltd. (CP)
Defendant: Sinolingua Corporation (Sinolingua)
The Commercial Press (CP) and Sinolingua are both publishing entities. CP has, since 1957, published Xinhua Dictionary the popular version for 11 editions. The Xinhua Dictionary published by CP has an average market share of more than 50% between 2010 and 2015. Up to 2016, the CP Xinhua Dictionary has been sold in over 567 million copies, receiving multiple honors including setting Guinness World Record for "most popular dictionary" and "bestselling book (regularly-updated)".
CP complains that the dictionary published by Sinolingua under "Xinhua ZIDIAN" infringed the unregistered well known trademark "Xinhua ZIDIAN" of CP, and engaged in unfair competition by appropriating the unique trade dress of Xinhua Dictionary (11th Ed.) of CP. A court order is sought for an injunction to immediately enjoin Sinolingua from trademark infringement and unfair competition activities, for publication of statement in China Press and Publishing Journal or other relevant media to eliminate influence, and payment of damages to CP in the amount of 3 million yuan plus 400 thousand for reasonable expenses.
In counterargument, Sinolingua contended "Xinhua ZIDIAN" was the title of a national project that developed into a type of dictionaries in the public domain for which CP had no right to claim exclusive trademark right, and preclude others from properly adopting it. That the business get-up of Xinhua Dictionary (11th Ed.) at issue, does not constitute "unique trade dress" under Article 5(2) of Anti-Unfair Competition Law, and is not likely to cause confusion or mistake to purchasers. That CP harbors an improper intention of restraining competition and monopolizing dictionary market, by means of judicial litigation, to exclusively appropriate the generic name of "Xinhua ZIDIAN."
The trial court found that "Xinhua ZIDIAN" has acquired distinctiveness for trademark which, through CP's use, has become a well known mark, qualifying for unregistered well known trademark, which, when reproduced or imitated by Sinolingua, is likely to cause mistake, therefore constituting trademark infringement.The business get-up of CP's Xinhua ZIDIAN (11th Ed.) is the unique trade dress of well known commodity, and Sinoligua's unauthorized use of the unique trade dress of well known commodity is an act of unfair competition. The court held that Sinolingua is hereby enjoined from trademark infringement and unfair competition activities, that statement be published in China Press and Publishing Journal or other media to eliminate influences, and awarded damages of 3 million to CP plus reasonable expenses of 270 thousand.
After judgment was rendered from trial court, the parties reached settlement agreement. The judgment became effective.
[Judge's Comment]
This is a typical case for protection of unregistered well known trademark involving hard issues of fact-finding, applicability of the laws and balancing of interests. (1) This case clarified the adjudicatory standard for determining trademark distinctiveness of a name serving for product name and trademark in certain commodities that due to historical reasons carried combined features of both functions. (2) The court found "Xinhua ZIDIAN" to be an unregistered well known mark taking various factors ranging from the degree of being well known in the relevant sectors of the public, time period of continued use of "Xinhua Dictionary," sales figures, scope of advertisement, and records of protection, etc. (3) In this case, while the unregistered well known mark "Xinhua ZIDIAN" is protected, emphasis is placed on balancing of regular market orders and promotion proper dissemination of cultural knowledge, by pointing out that the protection afforded under the Trademark Law is towards the trademark itself rather than the commodities carrying the mark; by affording exclusive trademark right for "Xinhua ZIDIAN" to CP does not result in exclusive control of publishing dictionaries, and will not lead to monopoly in dictionary market. (4) This case, by affording trademark protection, will prompt trademark proprietors to more faithfully assume their legally imposed obligations for product warranty and social responsibilities for disseminating Chinese language knowledge, to better promote the progress of China's market economy and cultural industry. (5) In this case, the court awarded damages for liabilities resulting from infringement of ab unregistered well known trademark, a breakthrough in imposing liabilities for remedies provided for in the Trademark Law for registered trademarks, having a great significance for enhancing protection of intellectual properties in the new era.