(1) Basic Facts of the Case

Heng Company [presumably Hengsheng Electronics Co., Ltd.] is the trademark owner of “DataFocus” trademark No. 39744963 (hereinafter referred to as the disputed trademark), registered in Class 42 for services such as “computer software design; computer software maintenance.” Hui Company [possibly Singaporean company DataFocus.PTE.LTD], argued that the disputed trademark infringes upon its prior domain name rights and constitutes an unfair preemptive registration of its already-used and influential “DataFocus” trademark, filed a request for invalidation with the National Intellectual Property Administration.

 (2) Judgment

The court held that the civil rights and interests lawfully enjoyed by the parties before the application date of the disputed trademark should be protected. Domain names are a type of civil right protected by law. As a prior civil right under Article 32 of the Trademark Law, a domain name can only be associated with specific goods or services by the relevant public if the domain name is registered first and has a certain degree of fame. On this basis, if the goods or services corresponding to the domain name are similar to those for which the disputed trademark is used, and the logos are similar, it may cause confusion among the relevant public as to the source of the goods or services. The evidence in the case demonstrates that the “datafocus.ai” domain name had already achieved a certain degree of fame before the application date of the disputed trademark, due to extensive publicity and use by Hui Company. If the disputed trademark is used in connection with services similar to the data analysis and software applications provided by Hui Company’s “datafocus.ai,” the relevant public, with general attention, may easily believe that the relevant services originate from the same entity or that there is a certain relationship between the service providers, leading to confusion and misperception as to the source of the services. Therefore, the registration of the disputed trademark infringes upon Hui Company’s prior domain name rights and interests.

 Furthermore, the disputed trademark shares the same English letters as Hui Company’s prior trademark “DataFocus,” and the services for which the disputed trademark is approved, such as “computer software design; computer software maintenance,” constitute similar services to the data analysis and software application services provided by Hui Company’s “DataFocus” software. Given that Hui Company’s prior trademark “DataFocus” already enjoys a certain degree of fame, the applicant for the disputed trademark, as a business operator in the same industry as Hui Company’s computer software services, should have been aware of Hui Company’s prior trademark. However, the applicant for the disputed trademark, despite failing to exercise reasonable avoidance, has registered a trademark identical to the disputed trademark for the same or similar services. This is subjectively unjustifiable and objectively likely to cause confusion and misunderstanding among the relevant public. Therefore, the registration of the disputed trademark constitutes the use of unfair means to preemptively register a trademark already in use by others and which has a certain influence.

 (3) Typical significance

 In this case, the People’s Court clarified that domain names can be protected as prior civil rights as stipulated in Article 32 of the Trademark Law, and legally determined that the registration of the disputed trademark infringed upon the prior domain name rights of Hui Company and constituted an unfair preemptive registration of Hui Company’s prior-used trademark. The disputed trademark was invalidated, effectively safeguarding the intellectual property rights and legitimate civil rights of private enterprises and providing strong judicial protection for the brand development of private enterprises.

                                                                                            Source. https://ipc.court.gov.cn/zh-cn/index.html