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  • Use the Other’s Registered Trademark as the Search Keyword, Trademark Infringement or Not?

    Use the Other’s Registered Trademark as the Search Keyword, Trademark Infringement or Not?

    With the hot competition of e-commerce, some companies use the registered trademarks of their competitors who are more famous, as the search keywords for their website. Once the user types such keywords, their website will be shown to the user via the search engine, then they can attract more clients and obtain more business opportunities. In the recent years, the trademark infringement cases related to the search keyword became more and more, such as the ‘Dazhong Banchang v. Baidu’ (the involved trademark is ‘大众搬场’), ‘Wande Information Company v. Hithink RoyalFlush Information Network Company’ (the involved trademark is ‘万得’), ‘Louvre Company v. Tianhong Company’ (the involved trademark is ’罗浮宫’) and etc.

    Then whether such behavior shall be deemed as the trademark infringement? In practice, such behavior shall be divided into 2 circumstances. The first circumstance is that there are symbols or promotion contents which are related to the registered trademark on the involved website, and might cause the confusion or misunderstanding of the goods or service shown on the website. It is obviously that this circumstance shall be deemed as a typical trademark infringement. The second circumstance is that there is no symbol or promotion content which is related to the registered trademark on the involved website, which would not cause the confusion or misunderstanding of the goods or service shown on the website. Then whether the second circumstance shall be deemed as a typical trademark infringement?

    It depends. For example, in the ‘Wande Case’, both the Hangzhou Intermediate People’s Court and the Zhejiang High People’s Court state that the keyword is not shown to the public directly, the searching of ‘Wande’ is directly connected with ‘Wande Stock’ instead of the ‘RoyalFlush’ software. The 2 symbols are totally different, which might not cause the misunderstanding to the public on the source of the goods, so such behavior shall not be deemed as the trademark infringement. However, in the ‘Louvre Case’, the Putian Intermediate People’s Court stats that the defendant uses ‘罗浮宫家具’ as the keyword which has the similar word with the registered trademark ‘罗浮宫’, and it wrote an article named as ‘红木家具品牌连天红高贵不贵www.liantianhong.com’ which connects with the keyword ‘罗浮宫家具’. Such behavior would cause the confusion and misunderstanding of the goods provided by the plaintiff and defendant, so it shall be deemed as the trademark infringement. The Fujian High People’s Court states that such behavior is not the usage of trademark, which shall not be deemed as the trademark infringement. However, such behavior is improperly taking advantage of the other’s trademark, which would cause the confusion and misunderstanding to the users, and the plaintiff would obtain business opportunities unreasonably. In view of this, such behavior is an unfair competition behavior which has violated the principle of good faith and the public commercial moral.

    There are different opinions on such cases, and the key reason is the principle on the identification of a trademark infringement. The traditional principle is whether such behavior might cause confusion and misunderstanding of the source of the goods or service, so if any behavior which does not cause such consequence; it shall not be deemed as the trademark infringement. The traditional principle focus on the misunderstanding of the source of the goods or service, but a trademark has another function, which is to attract clients and promote the sale. If a party uses the other’s registered trademark as the keyword, with which the party could lure the potential clients to login its website. This is a typical behavior on luring clients. This behavior might grab the clients of the owner of the registered trademark; weaken the impact of a registered trademark, which might be resulted in infringing the right of the owner of the registered trademark. So such behavior could be deemed as a trademark infringement behavior. The American courts have applied the ‘Initial Interest Confusion’ theory in dealing with such cases. The ‘Initial Interest Confusion’ refers to a party improperly takes advantage of the impact of other party’s trademark, misleads clients to enter into its own ‘territory’; such behavior makes the clients to get to know its goods or service, and stimulates the clients’ intention to purchase. Such behavior shall be deemed as a trademark infringement behavior.

    However, there is no direct root for the ‘Initial Interest Confusion’ in the Chinese current legislation system, in addition, the judicial departments have not accepted the opinion on identifying the behavior by improperly taking advantage of the other’s trademark to attract clients and promote the sale. In view of this, practically, if owner of a registered trademark encounters the second circumstance, it is recommended to protect its rights and interests from the prospect of anti-unfair competition instead of the trademark infringement.