How to Determine the Infringement of Trademark Right by Domain Name
Filed under: China Intellectual Property Protection
Determination of infringement of trademark right by preemptive registration of domain name and its applicable laws vary from country to country. In the U.S, the protection of trademark and the protection of domain name are separate entities. Concurrently, trademark right infringement is only acknowledged under the condition that the domain name preemptively registered is a known trademark. On the other hand, China grants integrative protection for trademark and domain name, which means that trademark right infringement will be recognized as long as the domain name preemptively registered, has legal trademark right. Thus, in comparing these two countries, China grants broader protection.
Case Brief
Shenzhen Fuanna Decorations Co., Ltd registered “fuanna” as its trademark. However, following that, Shanghai Sankun Textile Co., Ltd registered ‘fuanna.com’ as domain name on the Internet and used ‘http:// www.sankun.com’ as the website of the company. Fuanna Company considered Sankun Company’s behavior to be an act of malicious rush registration. As a result, Fuanna Company could use www.fuanna.com.cn but is kept from using www.fuanna.com on the Web.
This case mainly involves two issues:
（1）How can the trademark right be protected effectively under the situation of network?
（2）How to determine trademark infringement under the situation of network and how is it applicable to law?
Applicable Law
（1）Guide: Principle of Good Faith of GENERAL PRINCIPLES OF THE CIVIL LAW OF THE PEOPLE’S REPUBLIC OF CHINA
（2）Applicable Laws: General Principles of the Civil Law of the People’s Republic of China, Law of the People’s Republic of China Against Unfair Competition, Civil Procedure Law of the People’s Republic of China and Legal Interpretations of Supreme Court
Determination of Domain Name Infringement
In any of the following circumstance, the infringer’s behaviors shall be determined as an infringement or making an unfair competition:
（1）The civil rights required by the right owner are legal and valid;
（2）The domain name or its main components of the infringer is a copy, simulation, translation or transliteration of the famous trademark of the rightful owner. Or, the domain name or its main components is the same as or similar enough to the registered trademark, domain name of the rightful owner to confuse the public.
（3）The infringer has no rights to the domain name or its main parts and has no reasonable excuses to register it or use it;
（4）The infringer is malicious in registering or using the domain name.
In any of the following circumstances, the intent and maliciousness of the infringer’s behaviors shall be judged by court:
（1）Register the domain name of other persons as registered trademark for commercial purpose;
（2）The infringer registers and uses a trademark or domain name that is the same as or similar to an already registered trademark, domain name of a rightful owner and will confuse and misguide the public to visit the wrong website for commercial purposes;
（3）The infringer offers to sell, lease or transfer the domain name with high price to seek unfair benefits;
（4）The infringer does not use or prepare to use the domain name after it being registered. The only purpose is to prevent the rightful owner from registering the domain name;
（5）Other circumstances.
Analysis
According to Trademark Law of the People’s Republic of China, to use a trademark that is identical or similar to a registered trademark with respect to the same or similar goods, without the authorization of the proprietor of the registered trademark is an infringement of the exclusive right to use a registered trademark. Therefore, if the trademark in question is preemptively registered as domain name but does not fall into the above condition, this behavior cannot be determined as an infringement of trademark right. However, such behavior is in violation of the principle of good faith, which will harm the equal competition order and thus, shall be regulated by Law of the People’s Republic of China against Unfair Competition.
In the above case, Sankun Company infringed upon the trademark right of Fuanna Company by the means of registering domain name, which violated Law of the People’s Republic of China against Unfair Competition. The court can issue an injunction to stop the infringement, write off the domain name or decide to let the real owner, Fuanna Company register and use the domain name. If there are any actual losses caused by the infringer to the actual owner, the court also can order for monetary compensation by the infringer.
James Bai,
Attorney at Law
Allen & John Law Firm
Nov. 18, 2008
The Issues of Protection on Domain Name in China
Filed under: China Intellectual Property Protection
1. Brief Summary
This case relating an issue of preemptive registration of domain name which happened at the beginning of this year. Author would like to study present protective system of domain name in China based on the analysis of this case and relevant Chinese laws and regulations. At last, there are some suggestions for the foreign investors who have faced or will face the preemptive registration of their trademarks or trade names in domain names by other persons in bad faith.
2. Facts
The plaintiff of this case is company A and defendant is company B. A registered “X” as trademark in China in 1995; however, B registered “X” as domain name in 1998 and got the registration certificate of “X.com.cn” issued by China Internet Network Information Center (CNNIC). The website of B is www.X.com.cn. The plaintiff brought the suit to court in 1999 and claimed that it had registered “X” as trademark in 1995 and now prepared to register it as domain name but the defendant registered it preemptively in bad faith because “X” was not relevant to the defendant company itself or its products. The plaintiff claimed that the preemptive registration had constituted infringement of its trademark right and further claimed for the suspension of using the domain name “X.com.cn” by the defendant.
Judge heard the case publicly and made decision after hearing that overruled plaintiff’s claim as it could not provide enough evidence to prove its trademark “X” is well known trademark with national wide influence. Further, the judge ruled that domain name and trademark would not make public confused. The defendant’s behavior did not constitute unfair competition.
3. Main Points of Analysis
- Nature and features of internet domain name in China
- Acquisition method of internet domain name
- The principle of protection on prior right
- The legal system of protection on domain name in China
- Protective strategy of domain name
4. Analysis of Main Points
Chinese Customs Enforcement of Trademark Rights
I. Introduction
Any party holding a registered Chinese trademark can request that the Chinese customs authorities detain and seize infringing product from any party that attempts to export such infringing product from China. This is a very powerful tool in combating product piracy in China. However, the procedure is only available for trademark owners who formally register their trademarks in China. Parties who have registered or used marks outside of China cannot use this powerful tool. Since it takes several years after application before a trademark is formally registered in China, we recommend to all our clients who manufacture or sell product in China to register their trademarks as soon as possible.
II. Sample Cases
The cases below illustrate the way that the Chinese customs authority can protect the exclusive right to use trademarks that have been registered in China. The source of these cases is the Shanghai Customs Intellectual Property Protection website.
Case 1: Shanghai customs discovers the attempted export of pirated YAMAHA trademarked motorcycles.