Brief introduction of the case

Plaintiff: New Oriental Education Technology (Group) Co., Ltd.

Defendant: b new oriental overseas service co., ltd.

Cause of action: trademark infringement, unfair competition dispute

Plaintiff New Oriental Education Technology (Group) Co., Ltd. is mainly engaged in foreign language education and training, and is one of the most famous foreign language training institutions in China. 1999 A private New Oriental School in Haidian District of a city obtained the combined trademark of "New Oriental School+English" (No.:134740 1). On June 7, 2005 10, the trademark was transferred to New Oriental Education Technology (Group) Co., Ltd.; On June 1 1, New Oriental Education Technology (Group) Co., Ltd. exclusively licensed the trademark to the plaintiff in this case.

Defendant B New Oriental Overseas Service Co., Ltd. was established on June 65438+1October 65438+June 2002. Invested and established by the International Cultural Exchange Association of B Province, the professional company for studying abroad (ZZZZ [2004] No.276) approved by the Ministry of Education and the entry-exit intermediary service (ZJZZ [200 1] 0005) approved by the Ministry of Public Security are one of the largest entry-exit service companies in B Province: they are also the executive director units of the entry-exit industry associations of B Province, and their performance ranks among the best in all provinces.

The plaintiff believes that the defendant uses the same or similar trademarks on the same or similar services without the permission of the plaintiff; Unauthorized registration of the word "ZJNEWORIENT" similar to the trademark involved by the plaintiff as a domain name, and engaging in related transactions through this domain name, misleading the relevant public; Unauthorized use of the same words as the trademark involved by the plaintiff as the name of the enterprise on the same and similar services, causing misunderstanding among the relevant public; Unauthorized copying and translation of the plaintiff's well-known trademarks mislead the public and cause damage to the plaintiff's interests. The plaintiff believes that the above-mentioned behavior of the defendant infringes the plaintiff's exclusive right to use the registered trademark involved in the case, and at the same time constitutes unfair competition for the plaintiff, which has caused adverse effects on the plaintiff in the relevant public.

Based on the above reasons, the plaintiff filed the following claims:

1. Order the defendant to stop infringing the plaintiff's exclusive right to use a registered trademark 134740 1; 2. Order the defendant to stop using the words "New Oriental" in the enterprise name and other unfair competition behaviors; 3. The defendant was ordered to publish his reputation in China Industrial and Commercial News to eliminate the influence for the plaintiff; 4. The defendant was ordered to jointly compensate the plaintiff for reasonable expenses and economic losses of 500,000 yuan to stop the infringement.

Focus of controversy

Is it 1? B New Oriental Overseas Service Co., Ltd. infringes the exclusive right to use the registered trademark of the trademark involved by the plaintiff; 2. Whether the plaintiff's "New Oriental" trademark is well-known, and whether the defendant's use of "New Oriental" as the font size constitutes unfair competition.

In September 2006, the case was heard in public in the Intermediate People's Court of C (the city where B is located). In April 2007, the plaintiff A New Oriental withdrew the lawsuit against the two defendants, and the court made a civil ruling allowing the plaintiff to withdraw the lawsuit.

Huang Jing analysis

1. Is it true that the plaintiff claims that the defendant used "New Oriental Going Abroad" to use the same or similar trademarks as the plaintiff on the same or similar services without authorization? (1) According to Article 5 1 of the Trademark Law of People's Republic of China (PRC), the exclusive right to use a registered trademark is limited to the registered trademark and the goods approved for use. Therefore, the exclusive right holder of a registered trademark can only enjoy exclusive rights in the services approved by him. In this case, the services approved by the plaintiff's trademark involved in the case are education, lectures, correspondence courses, educational evaluation, etc. The services provided by the defendant are self-funded study abroad agency, private entry and exit agency and related consulting and translation services. Therefore, the defendant's service is not within the approved service scope of the trademark involved by the plaintiff, so the exclusive right to use the registered trademark has not been infringed.

(2) According to the second paragraph of Article 1 1 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Laws in the Trial of Trademark Civil Disputes, "similar services refer to services that are the same in terms of the purpose, content, methods and objects of services, or that are generally considered by the relevant public to have specific connections and are likely to cause confusion." As far as this case is concerned, firstly, the purpose of the original defendant's service is different: the purpose of the plaintiff's service is to receive better education for others, while the purpose of the defendant's service is to go abroad more conveniently and quickly for others; Secondly, the service content of the original defendant is different. The plaintiff's services include education and training, education evaluation, book publishing, etc. , and the defendant's service content is study abroad intermediary and related consulting and translation services; Third, the original defendant's service mode is different, the plaintiff's service mode is one-to-many, and the defendant's service mode is one-to-one; Fourth, the clients of the original defendant are different. The plaintiff's client is an educated person, while the defendant's client is someone who wants to go abroad. In addition, judging whether it is a similar commodity depends on whether the services provided by the two are easy to confuse the relevant public.

As mentioned above, the original defendant's service object, purpose, way and purpose are different, which leads to different relevant public. The related public of the plaintiff is educated and other educated peers, and the related public of the defendant is many people who have gone abroad and other peers who have served overseas. To say the least, even if it has some connection with the service provided by the original defendant, it will never be confused. The defendant went through relevant study abroad consultation, translation and overseas training. Customers choose the defendant based on the defendant's professional level and service level in this field, not on the plaintiff's trademark involved.

(3) As an important reference for judging whether the services are similar, neither the International Classification of Goods and Services Registered with Trademarks nor the Classification of Similar Goods and Services has included overseas services in the approved items of the trademarks involved, which proves from another aspect that the services provided by the two are not similar.

(4) The defendant is a legally registered and effectively established limited company, and has the right to use its own business name to carry out corresponding commercial publicity activities. The plaintiff claimed that the defendant used the same or similar words with the company name on the same or similar services, which caused misunderstanding among the relevant public and had no factual and legal basis.

First, as mentioned above, the services provided by the plaintiff and the defendant are different or similar, and the relevant public is also different, so there will be no misunderstanding. So the premise of infringement does not exist.

Secondly, because both trademarks and trade names have the function of indicating the source of products, the following two aspects should be considered when defining whether trade names are used reasonably: first, they are not clearly used as trademarks; Second, it will not confuse the relevant public in specific cases. The defendant used narrative words such as "Your New Oriental Overseas Expert" and "Your New Oriental Overseas Expert" as advertising slogans. Obviously, the defendant's behavior is not to use "New Oriental" as a trademark, but to use it as a trade name or as a service scope embodied by a trade name.

In addition, the defendant registered the text corresponding to its enterprise abbreviation as a domain name, which is obviously legal registration, and there is no e-commerce for commodity trading through this domain name. Therefore, the plaintiff believes that the fact that the defendant uses the same or similar words as his registered trademark as a domain name and engages in e-commerce of related commodity transactions through this domain name does not exist, which is easy to mislead the relevant public.

2. Does the plaintiff's "New Oriental" trademark meet the requirements for identifying well-known trademarks? Does the defendant have any unfair competition behavior with "New Oriental" as the trade name? First of all, well-known trademarks are a regional concept, including world-famous trademarks and trademarks that are well-known only in one country or region; Well-known trademark is also a concept with timeliness. Well-known trademarks at this time may not be well-known at that time. Because the well-known trademark is a factual state, the plaintiff involved is a well-known trademark and bears the burden of proof. According to the actual situation, the plaintiff should prove that the trademark involved had constituted a well-known trademark before May 23, 2002, that is, before the defendant's domain name was registered. In this case, the plaintiff only submitted a small amount of evidence to the court, which could not prove that the trademark involved had constituted a well-known trademark before May 23, 2002, and the evidence did not meet the conditions stipulated in Article 14 of the Trademark Law of People's Republic of China (PRC). The popularity of "New Oriental" in the evidence provided by the plaintiff depends on the plaintiff's enterprise name or unregistered trademark, rather than the registered trademark involved in the case obtained in the approved service project. The premise of well-known trademark recognition is that the trademark is well-known, not the firm is well-known. Once a trademark is registered, it has the exclusive right, but it is not naturally well-known, but must be widely publicized to generate high visibility among the relevant public. In this case, the plaintiff did not provide any publicity about the trademark "New Oriental School"+"NeworientiSchool" involved in the case, and the advertisements and related media were reported by its trade name. That is to say, the evidence provided by the plaintiff has no valid evidence on the use form, continuous use time and publicity of the trademark involved, so the evidence provided by the plaintiff can only reflect the business performance and reputation of the plaintiff's enterprise in education and training, and cannot prove the public's awareness of the trademark involved. The plaintiff confused the relationship between the popularity of the registered trademark involved and the popularity of the plaintiff's firm.

Secondly, the defendant has an interest in the domain name or its main part, and it is obviously justified to register and use the domain name abbreviation. Therefore, there is no infringement and unfair competition in the defendant's behavior. In addition, even if the trademark involved by the plaintiff is recognized as a well-known trademark, as long as the defendant's domain name is only used for static Internet addresses and not for commercial purposes, it does not constitute trademark infringement or unfair competition. Otherwise, it will come to a conclusion that owning a trademark means owning a domain name, and the registrant of a trademark naturally enjoys the right to register a domain name. The protection scope of well-known trademarks is limited, which limits similar goods or products related to registered trademark products from misleading consumers with the trademark; Irrelevant services, as long as the trademark is not original, other types of services can still be used, which does not constitute infringement. For example, "Great Wall" has three well-known trademarks in China, namely, Great Wall Lubricant, Great Wall Wine and Great Wall Computer, but they do not infringe upon each other and live in peace. Just because Great Wall Lubricant is famous cannot exclude Great Wall Computer from being famous. Therefore, well-known trademarks are not everything. This just confirms that the four elements of Article 4 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Laws in the Trial of Civil Disputes over Computer Network Domain Names must be established at the same time in order to identify infringement or unfair competition.

Finally, the trademark of "New Oriental School" involved by the plaintiff in this case is not significant and original. Because of this, there are thousands of "New Oriental" all over the country.

3. In the plaintiff's application, the defendant's "going abroad intermediary" is considered to be similar to the training and education of the plaintiff's trademark recognition, and at the same time, the defendant's domain name is unauthorized copying and translation of the plaintiff's well-known trademark, thus misleading the public. Is this a contradiction? The judicial identification of well-known trademarks aims at expanding the protection of different service fields. Therefore, if the defendant and the defendant are engaged in similar services, they don't need to claim extended protection to get protection; The plaintiff claims that it is a well-known trademark, which shows to some extent that he also thinks that the services of the original and the defendant are not similar. Therefore, the plaintiff's claims are contradictory, thus falling into a dilemma.