CASE 2 :

BEIJING HUIZEZHIXIN FOR TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

◆ First instance: (2017) Yue 0303 MinChu No. 22797

Guangdong Province

[Headnotes]

Using another’s registered trademark as search engine keyword, hyperlink heading or description is trademark use. Clicking on the hyperlink leading to a webpage does not use the mark at issue, leading to no consumer confusion as to source of services, but it constitutes confusion over business relations between plaintiff and defendant, and is therefore a trademark infringement.

[Synopsis]

Plaintiff: Beijing HuiZeZhiXin SciTech Co., Ltd. (HuiZeZhiXin)

Defendants: Shenzhen YiLian SciTech Co., Ltd. (YiLian), Shenzhen TianFangDa SciTech Development Co., Ltd. (TianFangDa), Shenzhen TianFangDa JianXin SciTech Holding, Ltd. (TianFangDa JianXin)

HuiZeZhiXin is registrant to trademark registration No. 17178225.It contends that YiLian and TianFangDa used its registered trademarks in their respective websites as a search keyword, or hyperlink heading or description. The WeChat title in TianFangDa’s official website indicates that it is operated by TianFangDa, that the three defendants use the same presale telephone number, and therefore HuiZeZhiXin contends that the three defendants’ aforementioned conducts constitute trademark infringement and unfair competition.

The court found that the use of plaintiff’s registered trademark as search keyword, hyperlink heading or hyperlink description is trademark use, and even though redirecting by clicking on it to another webpage without using the mark leading to no consumer confusion as to source of the services, it may nonetheless cause confusion as to the business relations between plaintiff and defendants, thereby constituting trademark infringement.

[Judge's Comment]

Using another’s registered trademark as search keyword, hyperlink heading and hyperlink description is a new form of trademark infringement which is not specifically provided for under the law. Although the expression of the form is different from the traditional trademark infringement, the concept of determining trademark infringement is more the less the same, that is, by analyzing the conduct to see whether it is trademark use, and whether it is likely to cause confusion.

The Key to trademark use is the identification of source of products or services. In this case, although defendants did not use the mark on any products or services, their use of the registered mark as search keyword, hyperlink heading or description which is by nature a means of commercial advertisement. To relevant public, such use produces the effect of identifying source of products or services, constituted trademark use within the meaning of the Trademark Law. The confusion specified by the Trademark Law includes both confusion as to source of products and services, and confusion as to affiliated relations.

As the value of trademark becomes more and more prominent, the infringement cases show a trend of metamorphosis of infringer’s use of trademarks. The purpose of infringing use is evade the law, and ride on the trademark owner’s reputation. In this light, by closely relying on key elements of trademark infringement, and properly applying the law in handling the case, it is significant for sufficient protection of the legitimate rights of the trademark proprietors, and for greatly strengthening of intellectual properties.

（Translated by Zheng Xiaojun)