Luo Yuntang Guohua

Case Brief

Plaintiff: A New Oriental Education Technology (Group) Co., Ltd.

Defendant: B New Oriental Abroad Services Co., Ltd.

Cause of action: trademark infringement, unfair competition dispute

Plaintiff A New Oriental Education Technology (Group) Co., Ltd. is mainly engaged in foreign language education and training and is the most well-known foreign language company in China. One of the training institutions. In 1999, the private New Oriental School in Haidian District, City A, obtained the "New Oriental School English" combination trademark (No. 1347401). On October 7, 2005, the trademark was transferred to New Oriental Education Technology (Group) Co., Ltd.; on the 11th of the same month, New Oriental Education Technology (Group) Co., Ltd. exclusively licensed the trademark to the plaintiff in this case - A New Oriental Education Technology (Group) Co., Ltd. company.

Defendant B New Oriental Overseas Service Co., Ltd. was established on January 16, 2002. Invested and established by the B Province International Cultural Exchange Association, it is a study abroad company approved by the Ministry of Education (Jiaowai Zongzizi [2004] No. 276), and an immigration and entry-exit intermediary service approved by the Ministry of Public Security (Zhejiang Gongjingzi [2001] 0005 "") is one of the largest entry-exit service companies in Province B: it is also the executive director unit of the Entry-Exit Industry Association of Province B. Its performance ranks among the best in the same industry in the province, and it has been awarded "Advanced Enterprise in the Consulting Industry of Province B" for many times. " and "B Province Integrity Rights Protection Fund Commitment and Consumer Satisfaction Unit" and other honorary titles.

The plaintiff believes that: the defendant has used the same registered trademark as the plaintiff's involved in the same and similar services without the plaintiff's permission. or similar trademark behavior; registering the word "ZJNEWORIENT" that is similar to the plaintiff's trademark involved in the case as a domain name without authorization, and engaging in related transactions through the domain name to mislead the relevant public; unauthorized using the same words as the plaintiff's trademark involved in the case as a corporate trade name in the same The plaintiff believed that the defendant's above-mentioned behavior violated the plaintiff's right to the registration involved in the case. The trademark exclusive rights enjoyed by the trademark also constitute unfair competition for the plaintiff and have a negative impact on the relevant public.

Based on the above reasons, the plaintiff filed the following lawsuit:

1. Order the defendant to stop infringing the exclusive rights of the plaintiff’s registered trademark No. 1347401; 2. Order the defendant to stop its use of the word “New Oriental” in its corporate name and other unfair competition practices; 3. Order the defendant to The defendant was ordered to jointly and severally compensate the plaintiff for its reasonable expenses and economic losses of RMB 500,000 in order to stop the infringement.

Points of Dispute

1. Whether B New Oriental Overseas Service Co., Ltd. infringes the plaintiff's registered trademark rights; 2. Whether the plaintiff's "New Oriental" trademark is well-known, and whether the defendant's use of "New Oriental" as a trade name constitutes unfair competition.

In September 2006, the case was heard publicly in the Intermediate People's Court of City C (the city where B is located). In April 2007, plaintiff A New Oriental withdrew its lawsuit against the two defendants, and the court issued a "Civil Ruling" allowing the plaintiff to withdraw the lawsuit.

Jinghuang’s Commentary

1. Is the plaintiff’s claim that the defendant’s use of “New Oriental Abroad” is an unauthorized use of the same or similar trademark as the plaintiff’s on the same or similar services to the plaintiff? (1) Is it true? (1) ) According to Article 51 of the "Trademark Law of the People's Republic of China": the exclusive right of a registered trademark is limited to the approved registered trademark and the approved goods for use. Therefore, the owner of the exclusive right to a registered trademark can only use it after approval. enjoys exclusive rights in the services provided by the plaintiff. In this case, the services provided by the trademark involved in the case include education, lectures, correspondence courses, educational assessments, etc., while the services provided by the defendant are self-funded study abroad agencies, private entry and exit agencies and related consulting and translation. Services. Therefore, the defendant’s services are not within the approved service scope of the plaintiff’s trademark involved, so it does not infringe its exclusive right to register a trademark.

(2) According to Article 11, paragraph 2, of the "Interpretations of the Supreme People's Court on Several Issues Concerning the Applicable Law in the Trial of Trademark Civil Disputes": "Similar services refer to the purpose, content and method of the service." , objects and other aspects are the same, or the relevant public generally believes that there is a specific connection and is likely to cause confusion. "As far as this case is concerned, first, the purpose of the plaintiff's service is different: the purpose of the plaintiff's service is to provide others with better education. The purpose of the defendant's services is to make it easier and faster for others to go abroad; secondly, the contents of the plaintiff's and defendant's services are different. The plaintiff's services include education and training, educational assessment, book publishing, etc., while the defendant's services include study abroad agencies and related services. Consulting, translation and other services; thirdly, the original and defendant’s service methods are different. The plaintiff’s service method is one-to-many, while the defendant’s service method is one-to-one; fourthly, the original and defendant’s service objects are different, and the plaintiff’s service objects are Those who receive education, while the defendant’s clients are those who want to go abroad. In addition, to determine whether they are similar goods, it is to see whether the services provided by the two are likely to cause confusion to the relevant public.

As mentioned above, due to the different service objects, purposes, methods and purposes of the plaintiff and defendant, their relevant publics are not the same. The plaintiff’s relevant public is the majority of educated people and other educational colleagues, and the defendant’s relevant public is not the same. The public is a large number of expatriates and other overseas service colleagues. Taking a step back, even if there are some associations with the services provided by the plaintiff and defendant, there will never be confusion. The defendant used related study abroad consulting, related translation, and overseas training. The customer's choice of the defendant was based on the defendant's professionalism and service level in this field, not on the plaintiff's possession of the trademark involved in the case.

(3) As an important reference for judging whether services are similar - neither the "International Classification of Goods and Services for Trademark Registration" nor the "Classification Table of Similar Goods and Services" include overseas services as the trademark involved in this case. Within the approved projects, this confirms from another aspect that the services provided by the two are not similar.

(4) The defendant is a legally registered and validly established limited company and has the right to use its own corporate name to conduct corresponding commercial promotion activities. The plaintiff claimed that the defendant prominently used words that were identical or similar to its registered trademark as the company's trade name on the same or similar services, thus causing misunderstanding among the relevant public. There was no factual or legal basis.

First, as mentioned above, the services provided by the plaintiff and the defendant are not the same or similar, and the relevant publics are also different, let alone misunderstanding. Therefore, the prerequisite for establishing infringement does not exist.

Secondly, since both trademarks and trade names have the function of indicating the source of products, when determining whether a trade name is a fair use, the following two aspects should be mainly considered: First, it is not expressly used as a trademark; Second, it will not confuse the relevant public in specific cases. The defendant used the narrative text "New Oriental, your expert in studying abroad" and "New Oriental, your expert in studying abroad" as advertising slogans. Obviously, the defendant's behavior was not to use "New Oriental" as a trademark, but to use it as a trade name or the scope of services reflected in the trade name.

In addition, the defendant registered the text corresponding to the abbreviation of his company as a domain name, which is obviously a legitimate and legal registration. At the same time, there is no e-commerce for commodity transactions through this domain name. Therefore, the plaintiff believes that the fact that the defendant uses the same or similar words as its registered trademark as a domain name and engages in e-commerce transactions of related goods through the domain name does not easily lead to misunderstanding by the relevant public.

2. Does the plaintiff's "New Oriental" trademark meet the conditions for being recognized as a well-known trademark? Does the defendant's use of "New Oriental" as a trade name involve unfair competition? First, a well-known trademark is a regional concept and is world-famous. There are also trademarks that are well-known only in one country or region; a well-known trademark is also a temporal concept, and a trademark that is well-known at this time may not be well-known at that time. Since a well-known trademark is a factual status, the plaintiff’s trademark involved in the case is a well-known trademark, and it bears the burden of proof. According to the actual situation, the plaintiff should provide evidence to prove that the trademark involved had become a well-known trademark before the defendant’s domain name registration on May 23, 2002.

However, the evidence submitted to the court by the plaintiff in this case only contained a small amount of evidence and could not prove that the trademark involved had constituted a well-known trademark before May 23, 2002, and the evidence did not meet the conditions stipulated in Article 14 of the Trademark Law of the People's Republic of China. . According to the evidence provided by the plaintiff, the popularity of "New Oriental" is attached to the plaintiff's business name or unregistered trademark, rather than the registered trademark involved in the case being acquired through the approved services. The prerequisite for the recognition of well-known trademarks is that the trademark is well-known, not that the trade name is well-known. Once a trademark is registered, it has the exclusive right to use it, but it is not naturally well-known, but must be widely publicized to generate high visibility among the relevant public. In this case, the plaintiff did not provide any publicity for the trademarks involved in the case "New Oriental School" and "neworientisChool". Whether it was advertisements or related media, they all reported it under its trade name. In other words, the evidence provided by the plaintiff does not contain any effective evidence of the use form, duration of use, publicity, etc. of the trademark involved. Therefore, the evidence provided by the plaintiff can only reflect the business performance and reputation of the plaintiff’s company in education and training, but cannot prove that the relevant public Awareness of the trademark involved. The plaintiff confused the relationship between the degree of awareness of the registered trademark involved in the case and the degree of fame of the plaintiff’s corporate trade name.

Secondly, the defendant has rights and interests in the domain name or its main part, and there are obviously legitimate reasons for registering and using the domain name as its abbreviation. Therefore, the defendant’s conduct does not constitute infringement or unfair competition. In addition, even if the plaintiff's trademark involved in the case is recognized as a well-known trademark, as long as the defendant's domain name is only used for static Internet address and not for commercial purposes, it does not constitute trademark infringement or unfair competition. Otherwise, one will draw the conclusion that owning a trademark means owning a domain name, and the registrant of the trademark naturally enjoys the right to register the domain name. The scope of protection of a well-known trademark is limited, which limits similar goods or products related to the registered trademark to mislead consumers through the trademark; for unrelated services, as long as the trademark is not an original trademark, other categories of services can still be used Use does not constitute infringement. For example, there are three "Great Wall" well-known trademarks in my country, namely Great Wall Lubricants, Great Wall Wines, and Great Wall Computers. However, they do not constitute infringement and are in harmony with each other. It cannot be said that Great Wall Lubricant is famous to the exclusion of Great Wall Computers. Therefore, well-known trademarks are not omnipotent. This just confirms that the four elements in Article 4 of the "Interpretations of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Computer Network Domain Names" must be met at the same time to determine infringement or unfair competition.

Finally, the plaintiff’s trademark “New Oriental School” involved in this case is not very distinctive and original. Because of this, there are thousands of "New Oriental" stores across the country.

3. The plaintiff’s complaint believes that the “overseas agency” engaged in by the defendant is similar to the scope of exclusive rights of the plaintiff’s trademark—training and education. It also believes that the defendant’s domain name is copied and translated without authorization. The plaintiff’s well-known trademark misled the public. Is this claim contradictory? The purpose of judicial identification of a well-known trademark is to extend protection in different service fields. Therefore, if the services provided by the original and defendant parties are similar, there is no need to claim extended protection in order to obtain protection; the plaintiff’s claim that it is a well-known trademark shows that it also believes that the services of the original and defendant parties are not similar. Therefore, the plaintiff’s claims were contradictory and thus faced a dilemma.