Judgment on Use and Infringement of TV Program Names from the Perspective of Trademark Law
——Jin Ahuan v. Jiangsu Broadcasting Corporation and Shenzhen Zhenai.com Information Technology Co., Ltd.
[Syllabus]
A relevant logo with an attribute of program's name does not exclude the possibility of the logo being a trademark. The key to judging whether the alleged logo is used as trademark lies in whether the relevant logo is used to indicate the source of relevant goods/services to enable the relevant public to distinguish the providers of different goods/services.
Most TV programs are based on real life. These real-life themes are only the elements of TV programs. In judging whether such TV programs are the same as or similar to a certain service category, we shall comprehensively examined the entirety and main features of the programs, grasp its nature, and thus make a comprehensive, reasonable and correct determination.
[Case No.] Guangdong High People’s Court (2016) YMZ No. 447
[Cause of Action] Dispute over infringement on trademark rights
[Collegial Panel Members] Xu Chunjian Qiu Yongqing
Xiao Haitang
[Keywords] TV program name, trademark, category, confusion
[Relevant Legal Provisions] Items 1 and 2, Article 57 of the Trademark Law of the People’s Republic of China, Articles 9, 10, 11 and 12 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases over Trademarks
[Basic Facts]
In the retrial of the dispute case over infringement of trademark rights by the appellant Jiangsu Broadcasting Corporation (hereinafter referred to as “Jiangsu TV Station”) and Shenzhen Zhenai.com Information Technology Co., Ltd. (hereinafter referred to as “Zhenai.com”), and the respondent Jin Ahuan, wherein Jin Ahuan is the holder of the trademark“” No. 7199523. The trademark was applied for registration on February 16th, 2009 and was approved for registration on September 7th, 2010, and the approved service items include items under Category No.45 “Dating Service and Marriage Agency”.
In 2010, JSTV under Jiangsu TV Station launched a TV program titled “If You Are the One” based on the theme of marriage and dating. JSTV informs in the program introduction that “If You Are the One” is a large-scale dating program that adapts to the rhythm of modern life, and provides an open platform for marriage and dating, high-quality dating friends and a brand-new marriage and dating model. The registration method includes “registering the materials at Zhenai.com”. Zhenai.com recruited guests from Nanshan District in Shenzhen City and selected the blind date guests for the program. In this case, the alleged “If You Are the One” logo is mainly reflected in two forms: one is the “If You Are the One” text logo, and the other is graphic logo, which combines the text “If You Are the One” and a female silhouette.
Jin Ahuan filed a lawsuit in the People’s Court of Nanshan District of Shenzhen, Guangdong Province, on the grounds that Jiangsu TV Station and Zhenai.com infringed on the exclusive right to use their registered trademarks, and requested the court to order that: 1. JSTV under Jiangsu TV Station immediately stop using the “If You Are the One” name; 2. Zhenai.com immediately stopped using the “If You Are the One” name for advertising, registration, follow-up services and other joint infringement acts; 3. the two defendants jointly bear all the litigation costs of the case.
The People’s Court of Nanshan District of Shenzhen, Guangdong Province affirmed that Jin Ahuan’s text-based trademark “If You Are the One” is the same as the name “If You Are the One” of Jiangsu TV program, however, the alleged “If You Are the One” TV program is related to marriage and dating and is only a TV program; the relevant public generally believes that there is no specific connection between the two, and it is not easy to cause public confusion. The two belong to different types of services and it does not constitute infringement. The court of first instance rejected Jin Ahuan’s claim. Jin Ahuan refused to accept the judgement and filed an appeal. The Shenzhen Intermediate People’s Court of Guangdong Province affirmed that Jiangsu TV Station’s “If You Are the One” can be identified as a marriage and dating program based on the program introduction, opening remarks, concluding remarks, participation, registration conditions, interactive content of the male and female guests in the program, and the publication of the State Administration of Radio, Film and Television and media comments. Therefore, the “If You Are the One” program of Jiangsu TV Station is the same as the approved “Dating and Marriage Introduction” service for Jin Ahuan’s registered trademark. In this case, the registered trademark of Jin Ahuan has been put into commercial use. The use of the alleged logo affects the normal use of the trademark. The relevant public can easily misunderstand and connect the use of the registered trademark of the right holder with the program of Jiangsu TV station, which constitutes trademark infringement. Zhenai.com participated in the recruitment of the guests and promotion, and also signed a Cooperation Agreement with Jiangsu TV Station, constituting joint infringement. Hence, the court ruled that Jiangsu TV Station and Zhenai.com should cease infringement. Jiangsu TV Station and Zhenai.com refused to accept the judgement of the appellate court and applied for retrial with the Guangdong High People’s Court on the grounds that the use of the alleged logo does not belong to the use of a trademark as the category is different from the approved use category of the registered trademark of Jin Ahuan, and it does not cause confusion.
Holding
On first instance, the People’s Court of Nanshan District of Shenzhen, Guangdong Province made a judgment on September 29th, 2014, and rejected Jin Ahuan’s claims. Jin Ahuan refused to accept the judgment and filed an appeal. On appeal, the Shenzhen Intermediate People’s Court of Guangdong Province made a judgment on December 11th, 2015 stipulating that: 1. The civil judgment (2013) SNFZMC ZI No. 208 be revoked; 2. JSTV under Jiangsu TV Station immediately cease using the “If You Are the One” name after the judgment takes effect; 3. Zhenai.com immediately stop using the “If You Are the One” name for advertising, registration and follow-up services after the judgment takes effect. Jiangsu TV Station and Zhenai.com refused to accept the judgment of the court of second instance, and applied for retrial in the Guangdong High People’s Court. The Guangdong High People’s Court ruled that the case was to be reviewed, and on December 30th, 2016, the judgment of the court of second instance was revoked and the judgment of the court of first instance was upheld.
[Reasoning]
The Guangdong High People’s Court reviewed the case and held that:
I. Issue on whether the alleged logo is used as a trademark
The key to judging whether the alleged “If You Are the One” logo is a trademark, lies in whether the relevant logo aims to indicate the source of the relevant goods/services to enable the relevant public to distinguish the providers of different goods/services. In this case, “If You Are the One” is originally the name of the program named by Jiangsu TV Station, to distinguish it from its multiple TV programs. However, judging from the circumstances of this case, Jiangsu TV Station’s use of the alleged “If You Are the One” logo is not merely a descriptive use for summarizing the content of the TV program, but rather, involves repeated and extensive independent or prominent use in commercial activities such as television, official website, investment attracting advertisement and onsite publicity, and the manner of use is continuous and coherent. The logo is somewhat unique in its overall presentation, which clearly goes beyond the scope and general awareness necessary for the descriptive use of the program or work content and has the function of distinguishing goods/services. Jiangsu TV Station broadcasted the alleged program with the “JSTV” logo, which objectively does not change the role and function of the “If You Are the One” logo indication source, but instead prompts the relevant public to more closely associate the “If You Are the One” logo with JSTV under Jiangsu TV Station. As the program continued to be broadcasted and advertised, the alleged “If You Are the One” logo became more distinctive. The relevant public sees the alleged logo and will associate it with the TV program and its provider JSTV under Jiangsu TV Station, which objectively plays a role in indicating the source of goods/services. Moreover, in many advertisements, Jiangsu TV Station combined the alleged “If You Are the One” logo with the “JSTV” logo, “Tuniu.com” “KanS” and other brand logos for joint publicity, and the evidence submitted in the retrial review process indicates that Jiangsu TV station had sought trademark authorization from Huayi Company for the use of the logo. All of the above directly reflect that Jiangsu TV Station subjectively was willing to use the alleged logo as the trademark to identify the source and maintain it as a brand. Therefore, it could not be established that Jiangsu TV Station denied that the relevant behavior was trademark use on the grounds that “If You Are the One” was a program name and the TV Station logo was clearly marked to distinguish its source.
II. Issue on whether Jiangsu TV station infringes on the registered trademark rights of Jin Ahuan
In the trademark infringement judgment, it must be evaluated whether the alleged logo is the same as or similar to the registered trademark, whether the two services are the same or similar, and whether it is easy to cause confusion and misunderstanding in the minds of the relevant public.
(I) Issue on whether the alleged logo is the same as or similar to the registered trademark
In this case, the alleged “If You Are the One” text logo and graphic logo were compared with the registered trademark No. 7199523 of Jin Ahuan. There are differences in the form of characters between the traditional Chinese characters used in Jin Ahuan’s mark and simplified Chinese characters used in the respondent’s logo, and there are also differences in fonts and text sequence. Compared with Jin Ahuan’s registered trademark, the alleged combined graphic and text logo has differences in color and pattern. Therefore, the alleged logos are not the same as Jin Ahuan’s registered trademark no. 7199523. The prominent part and the core part of the alleged logos and Jin Ahuan’s registered trademark are “If You Are the One”, wherein the text is the same, the overall structure is similar, and the natural components are similar. However, the similarity of objective factors is not equivalent to similarity with respect to the Trademark Law. What the Trademark Law wants to protect is not the trademark logo itself which is fixed by the act of registration, but the trademark’s function of identifying and distinguishing goods/services. If the alleged logo is not used for the same or similar goods/services or does not damage the identification and distinguishing factor of the registered trademark involved and does not result in market confusion, it should not be deemed to constitute a trademark infringement.
(II) Issue on whether the two service categories are the same or similar
When a TV program is judged to be the same or similar to a service category, it is not reasonable to simply and independently isolate the manifestation or a theme content from the overall program to make a one-sided and inflexible identification. The entirety and main features of the program should be comprehensively examined. It is necessary to grasp the essence of its behavior, and make a comprehensive, reasonable and correct review and determination. In this respect, when the TV program of the alleged “If You Are the One” logo was investigated from the perspectives of purpose, content, method and object of related services, its use was typical in TV entertainment programs. Specifically, “If You Are the One” TV program is a TV entertainment program featuring blind dates and dating. It uses the words and actions of modern unmarried men and women in a scenario of a blind date and dating, combines the same with comments and guidance from onsite commenters and the host, and is broadcast as a TV program after editing, so that the public can understand the phenomenon of current social dating and related values, while enjoying and relaxing, and are guided to establish a healthy and active view of marriage and love and view of life. The purpose of its service is to provide the public with a cultural and entertainment program and to obtain economic benefits such as sponsorship and advertisements, based on audience rating and interest in the program; the service content and method is provided through specific channels of television broadcasting and mass media, to disseminate cultural entertainment programs to the public; and the service objects are unspecified TV viewers. The “dating service and marriage introduction” as per Category No. 45 is an intermediary service provided to meet the needs of pairing a specific individual. The purpose of the service is to obtain economic benefit by providing services that promote marriage and love matchmaking; the service content and method usually include managing related personal information of participants, providing consulting and advice, and transmitting information on intention and other intermediary services; the service objects are specific unmarried men and women who are interested in marriage. Therefore, the differences between the two are obvious in terms of service purpose, content, method and object. Based on the general knowledge of the relevant public, it is possible to clearly distinguish the content of the TV entertainment program from the real matchmaking service activities, and it is not possible for the relevant public to mistakenly believe that the two have a certain relationship; furthermore, the two do not constitute the same services or similar services.
Taking a step back, even if they are identified to be similar services, it must closely follow the purpose of the Trademark Law, and consider the significance and popularity of the registered trademark involved as well as the possibility of confusion and misunderstanding in the minds of the relevant public, based on determining the scope of protection and the intensity of protection, to decide whether it constitutes a trademark infringement. In this case, the “If You Are the One” text in Jin Ahuan’s registered trademark is a common phrase in business activities, which is used in the field of marriage introduction services, and is not significantly used on a long-term and large-scale basis by Jin Ahuan. Therefore, the scope of protection and intensity of protection of the registered trademark in this case should be consistent with Jin Ahuan’s contribution to the significance and popularity of the trademark. In contrast, the alleged “If You Are the One” program uses “If You Are the One” as the name of a blind date and dating program based on certain rational use of the phrase. After long-term broadcast, the entertainment TV program can be well-known to the public. Even if the alleged program involves content related to dating, the relevant public can make a clear distinction on the source of the service without having any misunderstanding or confusion with respect to the two, and thus, it does not constitute trademark infringement.
