Marks recognised as well known even though owner was not ‘qualified’ publisher

The Beijing Higher Court has found that, even though Pearson Education Limited was not an official licensed publisher in mainland China before the date of application of the disputed trademark, its trademark LONGMAN (and Chinese translation 朗文) had become well known in the country through extensive promotion and publicity via mainstream publishing houses.

Longman is a publishing company founded by Thomas Longman in London, United Kingdom, in 1724. Longman was later acquired by the global publisher Pearson, owner of Penguin and Financial Times, in 1968. Longman is now primarily used by Pearson's English language teaching (ELT) business.

朗文LONGMAN was the first mark used by Pearson Education Limited when it entered the Chinese market in the early 1970s; it is also the first brand of ELT books that became known by Chinese consumers.

The trademark 朗文 (No 734098; cited mark I) and the trademark LONGMAN (No 736555, cited mark II) were both applied for on August 19 1993 by Longman Group UK Limited, a subsidiary of the Pearson Group, for “books” in Class 16 of the Nice Classification. Both trademarks were assigned to Pearson Education Limited on April 27 2007.

        Cited mark I                                Cited mark II

On July 5 2000 a Chinese company named Chongqing Lomond English Training School applied for the registration of the trademark LOMOND and device, which included the words 'Longman Education' in Chinese (No 1735830), for “educational training” in Class 41.

The mark was registered on March 21 2002.

On March 20 2007 Pearson Education Limited filed an action for cancellation of Chongqing Lomond's mark before the Trademark Review and Adjudication Board (TRAB) on the grounds that it was a copy of the cited trademarks, in violation of Article 13(2) of the Trademark Law (which prohibits the registration and use of a trademark similar to a well-known mark for dissimilar goods/services).

In order to take advantage of the benefits attached to well-known trademark status, Pearson Education Limited had to show evidence of use in accordance with the Trademark Law, such as "promotion materials". However, since Pearson Education Limited was not a "qualified" or "duly licensed" publisher in mainland China, promotion and use of the mark had not been carried out by Pearson Education Limited itself, but by a Chinese company acting under contract on Pearson Education Limited's behalf.

However, the TRAB accepted the "indirect" evidence of use produced by Pearson Education Limited and recognised the well-known status of the cited marks. Therefore, it decided to cancel the disputed trademark.

Chongqing Lomond appealed to the Beijing Number 1 Intermediate Court, which upheld the TRAB's decision.

Chongqing Lomond then appealed to the Beijing Higher Court, which rejected the appeal on the following grounds:

1. Despite the fact that Pearson Education Limited was not a qualified publisher in mainland China before the application date of the disputed trademark, the cited trademarks had become well known through extensive promotion and publicity via mainstream publishing houses. Books bearing the cited trademarks had been widely and extensively distributed in China prior to the application date of the disputed trademark. Therefore, the cited trademarks had become well known and had acquired a high reputation among Chinese consumers.
2. Chongqing Lomond, as a foreign language teaching school, should have been aware of the well-known trademarks of Pearson Education Limited in respect of print publications, books and magazines. However, Chongqing Lomond had applied for registration of the disputed trademark in respect of education and training services, which are closely associated with such goods. The court was thus obliged to conclude that the application had been filed in bad faith.

The decision confirms that the use and reputation of a trademark are not necessarily dependent on whether the trademark owner is 'qualified' in China.

Hu Meili, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

Wan Hui Da represented Pearson in this case