Private schools operating beyond their registered scope, Huazhong Normal University wins trademark case.

Compiled from: Changjiang Daily
 
Recently, Central China Normal University authorized a private school to use the name 'Huashi' for its primary school, but the private school was exposed for fraud because it had unilaterally used the name for its middle school and kindergarten.

 

Case review
In June 2013, Central China Normal University signed a "Cooperative School-Running Agreement" with the Education Bureau of Zengdu District, Suizhou City, and Hubei Jiliang Education Group Co., Ltd., regarding cooperative establishment of an elementary school. The agreement permitted the school to use the "Central China Normal University" registered trademark and included related provisions on brand management fees. After the establishment of the Suizhou Affiliated School of Central China Normal University, it operated a kindergarten and a junior high school beyond the scope authorized in the cooperative school-running agreement, and publicly conducted business and promotional activities using prominent identifiers including "Central China Normal University Affiliated Kindergarten" and references to the Suizhou Affiliated School of Central China Normal University. Accordingly, Central China Normal University claimed that the Suizhou Affiliated School of Central China Normal University and Hubei Jiliang Education Group Co., Ltd. infringed its registered trademark rights, requesting cessation of the infringement and compensation for losses.

 
 

After the case was filed, the agreed license period had also expired, the school had changed its name, and relevant signs containing 'Central China Normal University' outside the school gate and in advertising were removed. However, the relevant text is still retained on the website.
 
After accepting the case, the Suixian People's Court of Hubei Province held that the Suizhou Affiliated School of Central China Normal University had obtained a trademark license for the provision of elementary education. The exclusive right to use the trademark and the scope of goods or services for which the license was granted should be limited to the scope of elementary education. Its acts of running kindergartens and junior high schools beyond the authorized scope of the cooperation school-running agreement and using the trademark logo containing 'Central China Normal University' are likely to mislead consumers in the relevant kindergarten and junior high school education sectors into thinking there is an authorization or association with the plaintiff, constituting an infringement of the plaintiff's registered trademark rights. The infringing party should cease the infringement and compensate for the losses.
 
The defendant Jiliang Education Group and the defendant Central China Normal University Suizhou Affiliated School are two independent civil entities. The trademark infringement involved occurred after the establishment of the Central China Normal University Suizhou Affiliated School, not during its initiation stage; the establishment of the kindergarten and junior high school was independently managed and operated by the Central China Normal University Suizhou Affiliated School. The defendant Jiliang Education Group did not participate in the operation, management, or decision-making activities of the Central China Normal University Suizhou Affiliated School, did not jointly commit trademark infringement with the Central China Normal University Suizhou Affiliated School, and is not an infringing party. However, as an interested party, it should delete content related to school introductions from the webpage accordingly.
 
 
Court judgment
The defendant, Suizhou Affiliated School of Central China Normal University, shall immediately remove from its website any content containing 'Central China Normal University' that may cause misunderstanding to others from the date this judgment takes effect.
 
The defendant, Hubei Jiliang Education Group Co., Ltd., shall immediately remove content on the webpage that contains 'Central China Normal University' and may cause misunderstandings to others from the date this judgment takes effect.
 
The defendant, Suizhou Affiliated School of Central China Normal University, shall pay the plaintiff, Central China Normal University, economic losses and reasonable expenses of 228,000 yuan within ten days from the date this judgment takes effect.
 
The other claims of the plaintiff, Central China Normal University, are dismissed.
 
 
《 [1] The People's Republic of China Trademark Law
Article 57
Any of the following acts constitutes an infringement of the exclusive right to use a registered trademark:
(1) Using a trademark identical to a registered trademark on the same goods without the permission of the trademark registrant;
(2) Using a trademark that is similar to a registered trademark on the same goods, or using a trademark that is identical or similar to a registered trademark on similar goods, without the permission of the trademark registrant, where such use is likely to cause confusion;
(3) Selling goods that infringe upon the exclusive right to use a registered trademark;
(4) Counterfeiting or manufacturing without authorization the labels of another person's registered trademark, or selling such counterfeited or unauthorized labels;
(5) Replacing another person's registered trademark with a different trademark without the consent of the trademark registrant and putting the goods with the replaced trademark back into the market;
(6) Intentionally providing convenient conditions for acts that infringe upon another person's exclusive right to use a trademark, or assisting others in committing such infringement;
(7) Causing other damage to another person's exclusive right to use a registered trademark.
 
 
[1] The author's perspective
The typical nature of this case lies not only in the trademark authorization by a university to a private school but also in the private school's expanded use of the authorized trademark. Since Central China Normal University is a well-known university in China, its trademark rights and reputation are different from those of ordinary corporate brands. Therefore, this case not only protected the trademark rights of a prestigious university, but also effectively resolved the conflict between the two parties, achieving a unification of social harmony and legal balance.
 
From this case, it can be seen that trademark licensing should not only focus on the trademark itself, but also pay attention to the scope of use and the duration of the license. Once exceeded, it is very likely to face infringement and liability for compensation.