On February 20, the Shanghai Intellectual Property Court made a ruling on the lawsuit Shanghai Juvenile and Children Publishing House filed against four business entities for trademark violation and unfair competition that Taizhou One Hundred Thousand Whys Trading Co., Ltd., Taizhou Hangze Shoes Co., Ltd., and Taizhou Daodan Shentong Shoes Co., Ltd. to immediately stop infringing on the exclusive right of the plaintiff, stop using “One Hundred Thousand Whys” in their company names and publish a statement to eliminate the impact within 30 days, and pay a total of 908,000 yuan (Approx. USD 130,000) in damages and reasonable costs to Shanghai Juvenile and Children Publishing House. As for Shanghai Xunmeng Information Technology Co., Ltd., owner of the e-commerce platform Pinduoduo, which was also appealed against in the lawsuit, the Court responded that the plaintiff’s claim was “no longer supported”.
JCPH found that the defendants had opened sales stores with the logo of "One Hundred Thousand Whys" on Tmall, Pindoduo, and other online e-commerce platforms, and used "One Hundred Thousand Whys" as promotion titles on social platforms such as Douyin, claiming to be the official "One Hundred Thousand Whys" account. Therefore, the company appealed to the Shanghai Intellectual Property Court against the four defendants mentioned above, demanding the defendants stop the infringement, change the relevant wording in the enterprise name, issue a statement to eliminate the negative impact and compensate for the economic loss of 5 million yuan and reasonable expenses for the maintenance of rights of 115,000 yuan.
Although the four defendants submitted corresponding evidence in the process of responding to the lawsuit and the court accepted the authenticity and legality of the evidence, the judgment was ultimately handed down against the defendants by the relevant provisions of China’s Civil Code, Trademark Law, Anti-Unfair Competition Law and relative interpretations of China’s Supreme People’s Court.
The Court held that the JCPH, publisher of the "One Hundred Thousand Whys" series, had legally inherited and owned the relevant rights and was entitled to independently defend its rights. Therefore, the JCPH has the right to file a lawsuit for infringement of the rights and interests of "One Hundred Thousand Whys". The defendants Taizhou One Hundred Thousand Whys Trading Co., Ltd., Taizhou Hangze Shoes Co., Ltd., and Taizhou Daodan Shentong Shoes Co., Ltd. Claimed, based on other firms outside the lawsuit registered the trademark and published the books, that "One Hundred Thousand Whys" was in the public domain and can be commonly used, therefore the plaintiff did not have any rights and interests in it. However, the outsider's trademark registration and book publication time were later than the plaintiff’s "One Hundred Thousand Whys" publication time, so the outsider's registration and publication behavior cannot negate the plaintiff’s rights and interests to "One Hundred Thousand Whys", the court rejected the three defendants corresponding claims.
The JCPH claims that the above acts constitute unfair competition and trademark infringement, the focus of dispute, in this case, is: first, whether the infringement constitutes unfair competition; second, whether the infringement constitutes trademark infringement; third, if it constitutes infringement, how to bear the civil liability of the defendants.
According to China's Anti-Unfair Competition Law and the relevant judicial interpretation of the provisions, business entities shall not use the same or similar logo on their packaging, decoration, etc., which may be mistaken for others' goods or have a specific connection with others.
In this case, the evidence provided by the JCPH shows that before the establishment of the defendant Taizhou One Hundred Thousand Whys Trading Co., Ltd. on January 5, 2018, the "One Hundred Thousand Whys" series books had been published over a long span of history, involved a strong list of authors, won a great number of high spec awards, exposed to a variety of media and gained fame for its popularity and market share.
The high reputation and popularity in children's popular science sector give the "One Hundred Thousand Whys" series identifiable property by its name and the relevant rights as a well-known commodity-specific name. Therefore, before January 5, 2018, can be protected as a trading name with certain influence.
According to Article 8 of the Anti-Unfair Competition Law, business units shall not make false or misleading commercial propaganda about the performance, function, quality, sales status, user evaluation and honors of its goods to deceive and mislead consumers. The defendant's use of "One Hundred Thousand Whys" in the online store and short-form video promotion will give consumers the impression that it was the JCPH, thus deceiving and misleading the public and improperly obtaining the attention of media and consumers. The above behavior constitutes false propaganda.
Based on the evidence provided by the JCPH, the court believes, before January 5, 2018, the "One Hundred Thousand Whys" trademark had a high market reputation, and could be protected as a well-known trademark. According to the provisions of China's Trademark Law and judicial interpretation, if a well-known trademark or its main part is copied, imitated, or translated and used as a trademark on different or dissimilar goods, misleading the public and causing damage to the registered owner of the trademark, it is an infringement of the exclusive right of the registered trademark. In this case, the defendants were subject to infringement of trademark right. Although the defendants' children's shoes and the JCPH's books belong to different categories of goods, both are used for children and teenagers, with identical consumer groups. The defendants' behavior will cause confusion and misunderstanding among the consumers to connect the infringing goods with the JCPH, thus improperly harnessing the popularity of JCPH and obtaining commercial opportunities, which constitutes an infringement of the plaintiff's exclusive right to use the registered trademark.
The court finally found that the defendants Taizhou One Hundred Thousand Whys Trading Co., Ltd., Taizhou Hangze Shoes Co., Ltd., and Taizhou Daodan Shentong Shoes Co., Ltd. should bear the corresponding legal responsibilities for their trademark infringement and unfair competition according to law and should immediately stop the infringement acts, publish a statement to eliminate the impact and jointly pay the plaintiff 800,000 yuan of economic losses and 108,000 yuan of reasonable costs. Since the defendant Shanghai Xunmeng Information Technology Co., Ltd., owner of the e-commerce platform Pinduoduo, had taken measures to ban the sale of the infringing goods on Pinduoduo stores, which is regarded stopped the trademark infringement, the court no longer supported the plaintiff's claim.