Protection for Name of Real Estate Property and Right to Registered Trademark, and Judgment on Unauthorized Use of Another Enterprise's Name
——Guangzhou Star River Industry Development Co., Ltd. and Guangzhou Hongfu Real Estate Co., Ltd. v. Jiangsu Weifu Group Construction & Development Co., Ltd.
[Syllabus]
If a trademark for which the petitioner enjoys the exclusive right to use as registered trademark is used as the name of a real estate property, such an act constitute an infringement of the exclusive right to use the registered trademark.
If the use of the disputed name as the enterprise name by the alleged infringing party was prior to its use by the right holder, then such an act does not constitute an unauthorized use of another enterprise's name.
[Case No.] The Supreme People’s Court (2013) MTZ No. 102
[Cause of Action] Dispute over infringement of trademark right and unfair competition
[Collegial Panel Members] Wang Chuang Wang Yanfang
Zhu Li
[Keywords] Trademark infringement, unfair competition, name of real estate project, enterprise name, prior use
[Relevant Legal Provisions] Article 51 of the Trademark Law of the People's Republic of China (2001 revised edition), Articles 9, 10 and 21 of Interpretation of the Supreme People's Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks.
[Basic Facts]
In the dispute over trademark infringement and unfair competition between the retrial appellant Guangzhou Star River Industry Development Co., Ltd. (hereinafter referred to as Star River Company), Guangzhou Hongfu Real Estate Co., Ltd. (hereinafter referred to as Hongfu Company) and the retrial respondent Jiangsu Weifu Group Construction & Development Co., Ltd. (hereinafter referred to as Weifu Company) (the dispute is hereinafter referred to as the dispute over trademark infringement and unfair competition of “Star River”), the combined mark, i.e., No.1946396 and No. 1948763 authorized to be applied for Category No. 36 services – “apartment rental and apartment management” and other services, was registered based on the application by Hongfu Company, and later successively transferred to Hongyu Group (Hong Kong) Co., Ltd. (hereinafter referred to as Hongyu Company), a party not involved in the case, and Star River Company. Hongfu Company was licensed to use the abovementioned two registered trademarks and was entitled to file a suit over infringement in its own name. Hongfu Company and its affiliates developed property projects with the name "Star River" in Guangzhou, Beijing, Shanghai and other places successively. The "Star River" property projects as well as Hongyu Group and Star River Company won many honors. Since 2000, Weifu Company successively launched several real estate projects including "Star River Garden", "Star Garden" and "Star View Garden" in Nantong, Jiangsu, and all such names were submitted to the Nantong Municipal Bureau of Civil Affairs for approval. Star River Company and Hongfu Company initiated legal proceedings on the grounds that the use of the wording “Star River” in Weifu Company’s real estate projects infringed its registered trademark right and constituted unfair competition. The court of first instance, the Intermediate People's Court of Nantong, Jiangsu held that the use of "Star River Garden" by Weifu Company as the name of a real estate property it had developed did not cause confusion among consumers towards the source of such property and therefore did not constitute a trademark infringement of. The "Star River" property developed by Hongfu Company enjoyed a high profile in Guangzhou, however, Weifu Company neither showed any subjective intention of freely utilizing the value of the name “Star River”, nor was there objectively speaking, any possibility of consumer confusion over the name. Hence, Weifu Company’s action of using such a name did not constitute unfair competition. Therefore, the Court rejected the claims filed by Star River Company and Hongfu Company. Following this, Star River Company and Hongfu Company appealed to the High People's Court of Jiangsu. In the court of second instance, the Higher People's Court of Jiangsu, upheld the original judgment. Dissatisfied with the ruling, Star River Company and Hongfu Company further appealed and filed an application for retrial with the Supreme People's Court. The Supreme People's Court directly reviewed the case and entered a judgment.
Holding
On February 26th, 2015, the Supreme People’s Court entered a civil judgment ([2013] MTZ No. 102), in which the judgment of the court of first instance and court of second instance were revoked, and Weifu Company was ordered not to use “Star River” as the name for its real estate property not yet sold or which is to be developed in the future, and to pay Star River Company and Hongfu Company damages in the amount of RMB 50,000 for economic losses.
[Reasoning]
The Supreme People’s Court held that: with respect to the question on whether the respondent’s use of the trademark in which the petitioner enjoyed the exclusive right, as the name of a real estate property constituted an infringement of the exclusive right to use the registered trademark, Article 50 (1) of the Implementing Rules of the Trademark Law of the People’s Republic of China prescribe that, “the use of words or designs that are identical with or similar to another person's registered trademark for the same kind of goods or similar goods as the name or decoration of the goods to an extent that is sufficient to cause misidentification”, shall constitute an infringement of the exclusive right to use of a registered trademark referred to in Paragraph (5), Article 52 of the Trademark Law of the People’s Republic of China. In this case, Star River Company owned the exclusive right to use the registered trademarks No. 1946396 and No. 1948763 , which were approved to be applied for Category No. 36 services including real estate rental and real estate agency and Category No. 37 services including building, interior decoration & maintenance, separately; Weifu Company had applied such a name in its housing product. With respect to the question whether housing product and real estate building constituted similar goods and services, pursuant to provisions in Clause 3, Article 11 of the Interpretation of the Supreme People's Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks, similar goods and services shall mean that there is a specific link between the goods and the services, wherein the relevant public may be easily confused. Service categories approved for the two registered trademarks involved herein were real estate management and construction. When compared to the sale of housing product, both were the same in terms of functions, purposes, targeted consumers, sales channels, etc., and both developers were real estate developers. As there was a specific link between real estate management and construction, and the sale of housing product, they should be considered to be similar goods and services.
With respect to the question whether the use of “Star River Garden” as the product name will mislead the public, based on the facts established by the court of first instance, Hongfu Company and its related business units promoted Star River real estate on Nanfang Daily, Yangcheng Evening News and related media since 2001, and such properties with the name “Star River” won relevant honors, gaining a high profile, therefore, the term “Star River” was the most prominent and renowned component of such a registered trademark. Whereas, Weifu Company named its real estate properties as “Star River Garden”, which in fact played a role in identifying such property, and essentially belonged to a type of business marks. The word "Garden" in such a mark was a general term for the name of the property, however its most prominent parts were the words "Star River", which were identical in both wording and recall to the significant part "Star River" in the above two registered trademarks of Star River Company and Hongfu Company. Furthermore, as modern society features rich and convenient information flow, it is not uncommon to see real estate developers develop a series of real estate properties nationwide, and such kind of use by Weifu Company would cause confusion in the minds of the public that such property has a certain link with the "Star River" series properties developed by Star River Company and Hongfu Company, thus misleading the public. Therefore, Weifu Company applying the mark "Star River Garden" as the name of its property, which was similar to the trademark "Star River" in which Star River Company enjoyed an exclusive right to use, constituted an infringement on the related trademark of Star River Company and Hongfu Company, as the relevant public may be easily confused. Hence, Weifu Company should bear corresponding civil liability. While the court of first instance and court of second instance held that it was impossible to cause confusion among relevant public over the property and its service as it was only used as the property name, the Supreme People’s Court stipulated that such a judgment was incorrect and hence corrected the same.
With respect to the question whether it constituted an unauthorized use of another enterprise's name. In the view of the Supreme People's Court, based on facts established by the court of first instance, Star River Company, formerly Guangzhou Minyu Wood Co., Ltd. changed its current name in August 2007. It was a custom and tradition developed since 2000 for Weifu Company to name its properties with the word “Star”, and early on May 15th, 2006, Weifu Company applied to Nantong Municipal Bureau of Civil Affairs for naming a residential community as “Weifu Star River” on the grounds that “Star” was taken as the first word based on its existing "Star Garden" and "Star View Garden" properties, and the word river was indicative of the two rivers running through the community.
On May 25th, 2006, Nantong Municipal Bureau of Civil Affairs replied and approved that Weifu Company could name such a residential community as "Star River Garden". The use of the disputed property name was earlier than its use by Star River Company as its enterprise’s name, and as such it was not an act of unauthorized use of another enterprise's name.
