Use of mark in 'all-purpose web address' is infringing, says court
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The Shanghai First Intermediate People's Court has issued its decision in a trademark infringement and unfair competition action brought by three companies of the Exxon Mobil Group against American Mobil International Petroleum Group, Xi'an Yanqing Technology Development Co Ltd and Shanghai Songjin Industry Co Ltd.
An ‘all-purpose web address’ is an address that may be typed in Chinese characters, but allows the user to enter the website attached to the corresponding Latin-character domain name. It has the same basic function as a domain name, but with added benefits.
The plaintiffs, Exxon Mobil Corporation, Mobil Petroleum Company Inc and Exxon Mobil (China) Investing Co Ltd, are well known in the oil and petroleum industry. The plaintiffs registered a series of trademarks in China in relation to lubricating oil, lubricants, industrial oils, fuel and other products. These marks included:
- MOBIL 美孚 and MOBIL (owned by the first plaintiff); and
- 美孚 and 美孚 MEIFOO (owned by the second plaintiff).
In 2005 the plaintiffs discovered that the third defendant was selling lubricant products bearing the mark BOIL AMERICAN JINFU. The notice on the packaging of the products read as follows: "Licensed production by American Mobil International Petroleum Group, produced by Xi'an Yanqing Technology Development Co Ltd". The word 'Mobil' was highlighted.
The plaintiffs also found that:
- the first defendant had registered an all-purpose web address consisting of the words ‘American Mobil Oil’; and
- the second defendant had registered Chinese-character domain names corresponding to ‘americanmobiloil.cn’ and ‘americanmobiloil.china’.
The plaintiffs filed an action for trademark infringement and unfair competition.
The Shanghai First Intermediate People's Court held that the first and second defendants had infringed the plaintiffs’ trademarks and ordered that they:
- cease the infringing activity;
- take steps to reduce the damage done to the plaintiffs’ reputation; and
- pay damages amounting to Rmb500,000 (approximately $73,209).
Further, the court ordered that the third defendant stop selling products bearing the aforementioned notice.
According to the Supreme People’s Court's Interpretation on the Application of the Law in the Adjudication of Civil Trademark Disputes, the registration and use of a domain name including another party’s trademark to sell similar goods constitutes trademark infringement. In the present case, the second defendant’s domain names included the Chinese word '美孚', which is identical to the second plaintiff’s trademark. This clearly constituted trademark infringement.
The court then considered whether the registration and use of an all-purpose web address that is identical or similar to a third-party trademark could also constitute trademark infringement. The court concluded that it did -even though the Supreme People’s Court's interpretation does not mention all-purpose web addresses.
Because the reasons for judgment have not yet been published, the basis for the court’s decision remains unclear. While use of the marks in relation to the goods at issue clearly constituted both trademark infringement and unfair competition under China’s legislation, it is unclear which law the court relied on to conclude that use of the marks in an all-purpose web address amounted to trademark infringement.
However, the court arguably reached the right decision.Both domain names and all-purpose web addresses allow users to access online content and other information. Therefore, it would seem logical - in accordance with the legislative intent and the spirit of the legislation - to treat both in the same way.
In the present case, internet users were likely to be misled into thinking that the defendants' website was owned by the plaintiffs, or that the defendants were associated with the plaintiffs. Consequently, the court was correct in finding that there was trademark infringement.
Dang Lei, Rouse, Beijing
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