In a first instance decision rendered by Wenzhou (Zhejiang) Intermediate People's court, a local real estate developer Wenzhou Times Real Estate Corporation using illegally Prada's trademarks in the advocacy advertising was ordered to cease infringement and indemnify Prada 140,000 yuan in damages. Meanwhile, the co-defendant Wenzhou Daily Newspaper was ordered to undertake joint liability for the infringement.

Dispute over Prada trademark

On December 1, 2011, the Wenzhou Daily Newspaper published Wenzhou Times's advertisement, in which it advocates that a product promotion meeting and luxury show would be co-hosted by Prada and Wenzhou Times on December 4. Several days later, Prada brought Wenzhou Times and Wenzhou Daily to the court on the ground of the trademark infringement and unfair competition.

Prada claimed that as a world well-known brand, they have established high reputation in the luxury industry. In the advertisement, Wenzhou Times used Prada trademark without authorization to promote their business reputation and has infringed their registered trademark. Meanwhile, the advertisement said that the two companies would hold a promotion meeting and a luxury show, and Prada claimed that they haven't established business relationship with Wenzhou Times, the latter company took advantage of Prada's reputation to harvest inequitable interests, which constituted unfair competition. As the advertisement publisher, Wenzhou Daily Newspaper should undertake joint liability for the infringement.

Prada then sought injunctions and 500,000 yuan in damages to the court. The two defendants should issue an apology in Wenzhou Daily Newspaper to eliminate influence and restore the reputation.

Two defendants' arguments

Established in 2001, Wenzhou Times is a real estate developer. In October 2011, Wenzhou Times signed a contract with the third party Dehu Company and entrusted the latter company to host the above-mentioned promotion meeting and luxury show. According to the planning scheme provided by Wenzhou Times claimed that based on the Prada's brand influence in the industry, Wenzhou Times would build up a good reputation in less time.

In November 2011, Wenzhou Times held a press conference and signed a advertisement contract with Wenzhou Daily Newspaper. According to the contract, Prada and Times Royal Garden will be highlighted. 

Wenzhou Times challenged Prada's claim and argued that the Prada trademark was registered on commodities on Class 18 and Class 25. However, their target groups of the advertisement are real estate consumers, the products or the services they provide are not in the same class with Prada. Meanwhile, even though they used the Prada in the advertisement, they didn't use it as a trademark and no confusion would be created among the consumers, so no trademark infringement is constituted. Wenzhou Times also argued that they are also victim of fraud by the third party Dehu Company, they didn't mean to conduct unfair competition originally.

Infringement was affirmed

The court held that grounds to define the trademark infringement should be based on the protection scope of the trademark law. The involved advertisement was used for brand building and promotion, the public could easily link the Prada with the commodities, so Wenzhou Times' acts violates the trademark law. Meanwhile, based on the content and the purpose of the advertisement, it was defined as a unsolicited advertising not house selling advertisement. 

Wenzhou Daily Newspaper also challenged Prada's request and claimed that they have examined Prada's licensing procedures and they shouldn't be responsible for Wenzhou Times's infringement act. The court held that based on the evidences, the contract was signed by Wenzhou Daily Newspaper and Wenzhou Times, Prada hasn't participated in this contract. Wenzhou Daily Newspaper failed to fulfill their obligations of examination violating the advertisement law, so they should bear joint liability.

(China IP News)