China

JIN AHUAN V. JIANGSU BROADCASTING CORPORATION AND SHENZHEN ZHENAI.COM INFORMATION TECHNOLOGY CO., LTD. (2016) YMZ No. 447, Guangdong Higher People’s Court

 

Cause of action: Dispute over infringement of trademark rights

 

Collegial panel members: Xu Chunjian | Qiu Yongqing | Xiao Haitang

 

Keywords: class, confusion, name of television show, trademark

 

Relevant legal provisions: Trademark Law of the People’s Republic of China (as amended in 2001), article 57(1) and (2) Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases over Trademarks, articles 9–12

 

Basic facts: In the retrial of a case alleging infringement of trademark rights between appellants Jiangsu Broadcasting Corporation (hereinafter “Jiangsu TV Station”) and Shenzhen Zhenai.com Information Technology Co., Ltd. (hereinafter “Zhenai.com”), and respondent Jin Ahuan, who is the holder of Trademark No. 7199523 (as illustrated), written as 非誠勿擾 in traditional Chinese characters (meaning “If You Are the One”), the facts were as follows.

 

 

 

 

 

 

 

Jin Ahuan had applied for registration of the trademark on February 16, 2009, and it had been approved, on September 7, 2010, for use in relation to approved services under Class 45 of the International Classification of Goods and Services for the Purposes of the Registration of Marks (hereinafter the “Nice Classification”), including “dating services and marriage agency services”.

In 2010, under the auspices of Jiangsu TV Station, JSTV launched a television show entitled 非诚勿扰 (in simplified Chinese characters, meaning If You Are the One) based on the theme of marriage and dating. JSTV introduced the show as a large-scale dating program that adapts dating to the rhythm of modern life, providing an open forum for marriage WIPO Collection of Leading Judgments on Intellectual Property Rights: China 34 and dating, matching high-quality dating companions, and defining a brand-new model of marriage and dating. The method of registering for the show included “registering the information at Zhenai.com”. Zhenai.com recruited participants from Nanshan District in Shenzhen City and selected guests to go on blind dates for the show. In this case, the disputed logo took two main forms: one was the “If You Are the One” text-based logo; the other was a graphic logo, which combined the text “If You Are the One” and a female silhouette (as illustrated).

 

 

 

 

Jin Ahuan filed a lawsuit with the People’s Court of Nanshan District of Shenzhen, Guangdong Province, claiming that Jiangsu TV Station and Zhenai.com had infringed on its exclusive right to use its registered trademarks, and requesting that:

 

(a) JSTV, under the auspices of Jiangsu TV Station, be ordered to immediately stop using the name “If You Are the One”;

 

(b) Zhenai.com be ordered to immediately stop using the name “If You Are the One” for advertising, registration, screening, follow-up services and other joint infringement acts; and

 

(c) the two defendants (Jiangsu TV Station and Zhenai.com) be ordered to jointly bear all litigation costs. The People’s Court of Nanshan District of Shenzhen, Guangdong Province, found Jin Ahuan’s text-based trademark “If You Are the One” to be the same as the name of Jiangsu TV’s show If You Are the One, but that while the latter was related to marriage and dating, it was nothing more than a television show; the relevant public generally believed there to be no specific connection between the show and Jin Ahuan’s dating service, and it was not easy to cause public confusion in this regard. The first-instance court therefore found the two services to be of very different types and the use of the registered trademark of one as a name for the other not to constitute infringement, and it dismissed Jin Ahuan’s claim.

 

Dissatisfied with the finding, Jin Ahuan lodged an appeal. The Shenzhen Intermediate People’s Court of Guangdong Province affirmed that Jiangsu TV Station’s show If You Are the One could be identified as a marriage and dating program based on its synopsis, its opening and concluding remarks, the conditions of participation and registration, the interactive content of the guests in the show, and the details published by the State Administration of Radio, Film and Television, as well as media commentary. Therefore, Jiangsu TV Station’s show If You Are the One could be said to have the same purpose as the “dating services and marriage agency services” approved under Jin Ahuan’s registered trademark. In the latter case, Jin Ahuan’s registered trademark had been put into commercial use and thus the use of the disputed logo could affect the normal use of the registered trademark. The court at second instance held that the relevant public could easily misunderstand and connect the use of the right holder’s registered trademark with Jiangsu TV Station’s show, and hence found the latter’s use of the name to constitute trademark infringement. Because Zhenai.com participated in the recruitment of the guests and promotion, and also signed a cooperation agreement with Jiangsu TV Station, it was jointly liable for the infringement. The second-instance court ruled that Jiangsu TV Station and Zhenai.com should cease their infringement.

 

Dissatisfied with the decision at second instance, Jiangsu TV Station and Zhenai. com applied to Guangdong Higher People’s Court for permission to appeal on the grounds that the disputed logo was not used as a trademark and that its use would not cause confusion because it belongs to a class of service other than that approved under Jin Ahuan’s registered trademark.

 

Held: At first instance, in its judgment dated September 29, 2014, the People’s Court of Nanshan District of Shenzhen, Guangdong Province, dismissed Jin Ahuan’s claims. Jin Ahuan lodged an appeal. At second instance, the Shenzhen Intermediate People’s Court of Guangdong Province delivered judgment on December 11, 2015, finding that:

 

(a) the first-instance finding should be overturned;

 

(b) JSTV, operating under the auspices of Jiangsu TV Station, was to cease using the “If You Are the One” name immediately on the second-instance judgment coming into force; and

 

(c) Zhenai.com was to stop using the “If You Are the One” name for advertising, registration and followup services immediately on the second-instance judgment coming into force. Jiangsu TV Station and Zhenai.com refused to accept the second-instance judgment, and applied to the Guangdong Higher People’s Court for permission to appeal. The Court granted permission and, on December 30, 2016, it overturned the judgment of the second-instance court and affirmed the judgment of the court at first instance.

 

Reasoning: In reviewing the case, Guangdong Higher People’s Court held as follows.

 

I. Whether the disputed logo is used as a trademark

 

The key to judging whether the disputed “If You Are the One” logois a trademark lies in whether the logo aims to indicate the source of the relevant goods or services sufficiently distinctly as to enable the relevant public to distinguish between different providers. In this case, If You Are the One is the name that Jiangsu TV Station chose to distinguish its television show from its multiple other shows. However, judging from the circumstances of this case, Jiangsu TV Station’s use of the disputed “If You Are the One” logo not only is descriptive in summarizing the content of the show, but also involves repeated and extensive independent or prominent use in commercial activities, such as on television, on an official website, and in advertisement and on-site publicity aiming to attract investment, and the manner of its use is continuous and coherent. The disputed logo is somewhat unique in its overall presentation, which clearly goes beyond the scope and general message necessary for descriptive use in relation to the show’s content, and hence has the function of distinguishing goods or services. While Jiangsu TV Station applies the “JSTV” logo to the show as well as the “If You Are the One” logo, this cannot objectively be said to change the role and function of the latter in indicating its source, but instead prompts the relevant public to more closely associate the “If You Are the One” logo with JSTV, under the auspices of Jiangsu TV Station. As the show continues to be broadcast and advertised, the disputed “If You Are the One” logo becomes more distinctive. When the relevant public WIPO Collection of Leading Judgments on Intellectual Property Rights: China 36 sees the alleged logo, they more readily associate it with the television show and its source – that is, JSTV, under the auspices of Jiangsu TV Station. In this way, the disputed logo objectively plays a role in indicating the source of the goods or services. Moreover, in many advertisements, Jiangsu TV Station combines the disputed “If You Are the One” logo and the “JSTV” logo with brand logos including “Tuniu.com” and “KanS”, among others, aiming to generate joint publicity, and the evidence submitted during appeal indicates that Jiangsu TV Station sought trademark authorization from Huayi Company for the use of its logo. All of this directly reflects that Jiangsu TV Station can be judged to have been willing to use the disputed logo as a trademark to identify the show’s source and to maintain it as a brand. It therefore cannot be established when Jiangsu TV Station denied that the relevant behavior was trademark use on the grounds that “If You Are the One” was merely the name of the show and that the “JSTV” logo was that mark which clearly distinguishes its source.

 

II. Whether Jiangsu TV Station infringed on Jin Ahuan’s registered trademark rights

 

In making a judgment on trademark infringement, the issues for evaluation are whether the disputed logo is the same as or similar to the registered trademark, whether the two categories of service are the same or similar, and whether it is easy to cause confusion and misunderstanding in the minds of the relevant public.

 

(a) Whether the disputed logo is the same as or similar to the registered trademark In this case, the disputed “If You Are the One” text and graphic logos can be compared with Jin Ahuan’s registered trademark (Trademark No. 7199523). There are differences in the character types – traditional Chinese characters are used in Jin Ahuan’s mark andsimplified Chinese characters are used in the respondent’s logo – and there are also differences in fonts and text sequence. Unlike Jin Ahuan’s registered trademark, the disputed logo combines both graphic and text, and is different in color and pattern. The disputed logos are therefore not the same as Jin Ahuan’s registered trademark. While the distinctive and core elements of the disputed logos and Jin Ahuan’s registered trademark comprise the identical text “If You Are the One”, and the overall structure is similar and the natural components are similar, the similarity between the objective elements is not sufficient to qualify as infringement under the Trademark Law. What the Trademark Law is intended to protect is not the trademark logo itself, which is fixed by the act of registration, but the trademark’s function in identifying and distinguishing between goods or services. If the disputed logo is not used for the same or similar goods or servicesas the registered trademark, and if use of the logo does not do damage to the trademark’s function in identifying and distinguishing goods or services and on condition that it does not result in market confusion, the disputed logo should not be deemed to constitute a trademark infringement.

 

(b) Whether the two categories of service are the same or similar When judging whether a television show is identical with or similar to a category of service, it is not advisable simply to look at the form of expression or substantive theme of the show in isolation; rather, it is necessary to examine the show as a whole, including all of its main features and grasping its core aspects, and hence to arrive at a comprehensive and reasonable assessment. In this respect, when investigating the television show to which the disputed logo “If You Are the One” is attached from the perspectives of purpose, content, method of expression and object of related services, its use is found to be that typical in television entertainment programs. Specifically, If You Are the One is a television entertainment program featuring blind dates and dating. It includes the words and actions of modern single people in blind date and dating scenarios, combined with on-site commentators and a host offering commentary and guidance, and it is broadcast as a television show after editing, so that the audience can learn more about the current phenomenon of social dating and related values while relaxing and enjoying the show, and hence be guided to establish a healthy and positive outlook on marriage, love and life. The purpose of the service is to provide the public with a culturally based entertainment program, and to deliver economic benefits to the broadcaster in the form of sponsorships and advertisements, based on audience ratings and interest in the show. The content of the service is delivered to its audience through the specific channels of television broadcasting and mass media, which disseminate cultural entertainment programs to the public, and the target audience of the service comprises unspecified viewers.

 

Those providing “dating services and marriage agency services” under Class 45 of the Nice Classification are offering an intermediary service to specific individuals to meet their needs for marriage matchmaking. The purpose of the service is to generate economic benefit for the supplier by providing such services. The methods involved in providing the service usually include managing the personal information of participants, providing consultation and advice, and communicating marriage intentions and other such intermediary services; the targeted recipients of the service are specific unmarried people who are interested in getting wed.

 

The differences between the two types of service are therefore obvious in terms of the services’ purpose, content, method and recipients. Based on general knowledge among the relevant public, it is possible to clearly distinguish the content of the entertainment television show from the real-life matchmaking service activities and it is not likely that the relevant public will mistakenly believe that there is a connection between the two. Thus the two do not constitute identical or similar services.

 

Taking a step back, even if they were to be identified as similar services, in deciding whether a trademark infringement has occurred, the courts must closely follow the purpose of the Trademark Law and take into consideration the significance and popularity of the registered trademark involved, as well as (based on a determination of its scope and the intensity of protection) the likelihood of confusion and misunderstanding in the minds of the relevant public. In this case, the text “If You Are the One” in Jin Ahuan’s registered trademark is a common phrase in business activities. It has a low degree of distinctiveness when used in the field of marriage introduction services, and there is no evidence of the sort of long-term and large-scale use that would allow it to acquire such distinctiveness. The Court’s assessment of the scope and intensity of protection of the registered trademark in this case shall therefore be proportionate with Jin Ahuan’s contribution to the significance and popularity of the trademark. In contrast, the disputed “If You Are the One” logo justifiably uses the phrase as the name of a blind date and dating television program. After long-term broadcasting, the show has become well WIPO Collection of Leading Judgments on Intellectual Property Rights: China 38 known to the public as an entertainment and recreation program. Even if the program involves content related to dating, the relevant public can clearly distinguish the source of the service without misunderstanding or confusing it with Jin Ahuan’s service, and therefore the disputed logo does not constitute trademark infringement.