2. The use of place name is, to some extent, also fair use. As a trademark, a place name is likewise of special nature. The Chinese Trademark Law provides that the geographical names as the administrative divisions at or above the county level shall not be registered as trademarks. This is in accord with the international practice because the public within the region has the right to use the geographical name, which should not be monopolized by a particular individual. However, the trademark law does not prohibit the registration of the geographical names that are not at or above the county level or that have acquired a secondary meaning as trademarks. For these trademarks, there still exists the issue of fair use by others. This issue, for example, was reflected in the trademark infringement case of Nanjing Liyuan Property Development Co., Ltd. (“Liyuan”) v. Nanjing Jinlanwang Real Estate Development Co.,.Ltd. (“Jinlanwan”). In Jiangning district of Nanjing municipality, there is a “Baijiahu”, which was well-known to the public due to the development and advertising campaigns of multiple real estate developers. Liyuan succeeded in developing the building with the name of “Baijiahu Garden” and also registered the characters “Baijiahu” as its service trademark under service class “real estate management.” Jinlanwan developed in this area a high-rising residential tower, which was named “Maple Homeland” (i.e., Fengqingjiayuan). Jinlanwan used “Baijiahu ? Maple Land” as its advertising slogan to publicize the “Maple Homeland.” In this case, the use of “Baijiahu” by Jinlanwan was to designate the relationship between the goods and a particular geographical location. Jinlanwan did not have bad faith to take advantage of the goodwill of Liyuan. The appeal of “Baijiahu” came from the geographical environment of Baijiahu itself rather than from Liyuan and therefore Jinlanwan’s use constituted fair use. It is worth noting that the Third Civil Division of the Supreme People’s Court mentioned in its reply to the request for instruction on how to decide this case five factors that should be considered in hearing this case. Among them is “the classification of the relevant goods or services.” It maintains the classification of the relevant goods or services often determines the necessity of showing its geographical location, but showing the geographical location in sale of real estate should be generally deemed to be based on the need imposed by the natural property of the goods.

3. Fair use of generic technical names or terms. For example, in the trademark infringement case filed by Xiamen Overseas Chinese Electronic Co., Ltd. against Beijing Branch of Sichuan Changhong Electric Co. Ltd, the court found that the term “HDTV” was an English abbreviation for the technical term “High Definition Television,” which had been widely used by TV producers and recognized as a national standard. The use of the term “CHDTV” by Changhong was not likely to cause confusion and mistake in the relevant public and thus such use constituted fair use. Another example is the case involving trademark infringement and unfair competition filed by Shenzhen Yuanhang Sci-tech Co., Ltd. against Shenzhen Tencent Computer Systems Co., Ltd., which was adjudicated by Xi’an Intermediate People’s Court. The court held that “wakeng” and “baohuang” were names of poker games originating from Shaanxi province and Shandong province respectively and had been in existence as names of particular poker games and used widely by the public. Thus, as the names of poker games, they had been generally accepted by the public. The defendant’s use of “wakeng” and “baohuang” were fair use and did not constitute infringement.

4. Fair use through the signing of a license contract. In the case Harrow Strait Co., Ltd. (Plaintiff) v. Wuhan Yinshabie Leisure Products Co., Ltd. (Defendant) for trademark infringement, the Supreme People’s Court found that the defendant’s use of the plaintiff’s registered trademark on the costume it manufactured and sold did not constitute infringement to the plaintiff’s trademark.

V. Conclusion

Based on the study of the above issues, the author believes that in the determination of trademark infringement, the Chinese current Trademark Law may be improved in the following aspects: expressly setting out the constituting elements of trademark infringement and adding both similarity and confusion into the elements for determining trademark infringement. Law should expressly define the rules of logic used in determining trademark infringement and treat “similarity” and “confusion” as necessary elements. If the statutory defense and the exception defense in the legal theory are valid, by law there should be no infringement. However, the exception defense should be premised logically on “causing confusion,” otherwise there will be no need to raise the exception defense.

By Sun Hailong, A Standing Member of the Adjudicatory Committee of the Higher People's Court fo Chongqing, and Yao Jianjun, Chief of the Research Office, the Intermediate People's Court of Xi'an

(Translated by Zhang Meichang)