Shanghai Putuo District Court recently announced the coming into effect of its ruling over the trademark infringement and unfair competition dispute involving One Hundred Thousand Whys. This case is the first of its kind against trademark infringement and unfair competition of the pop-science book series enjoying decades of fame in China. 

The plaintiff China Children Press and Publication Group (CCPPG) claimed that its popular science book series in China, mostly intended for children, was first published in 1961, with innumerable editions continued to this day, gaining a high popularity. The plaintiff deemed itself the exclusive owner of the graphic trademark 十万个为什么 (One Hundred Thousand Whys in English, No.17085619). Before the registration of the trademark, One Hundred Thousand Whys already existed as an influential commodity name. 

The plaintiff found that a bookstore (defendant A) sold the book published by Tiandi Press (defendant B), also named One Hundred Thousand Whys, and the defendant Tiandi Press also published a variety of editions of One Hundred Thousand Whys, which were publicly sold through online channels. 

The defendant Tiandi Press not only highlights the title One Hundred Thousand Whys on the cover of its book, but also claims in the preface that the book is an upgraded version of original book series. The plaintiff claimed that the defendant Tiandi Press infringed its exclusive right to use trademarks and the rights and interests of commodity names, while the saying "upgraded version" also constitutes false propaganda. The plaintiff requested an immediately cease of trademark infringement and unfair competition, and ask the defendant Tiandi Press to compensate for economic losses of 3 million yuan and reasonable expenses related to rights protection, totaling 107,000 yuan. 

The defendant Tiandi Press argued that One Hundred Thousand Whys is a generic term commonly adopted by popular science books, which is not significant, and its use of this term is only a descriptive usage, rather than the use of trademark. 

Taking into account the focus of the dispute, to determine whether the actions of the two defendants constitute trademark infringement, two questions must be clarified. 

First of all, should One Hundred Thousand Whys be deemed a generic term for popular science books? 

The court held, legitimately speaking, that One Hundred Thousand Whys did not belong to the generic term for commodities. Generic terms are the ones such as VCD and DVD, which are determined by laws or normative documents as national standards and industry standards, while the defendant failed to render sufficient evidence to bring One Hundred Thousand Whys under such norm. 

The court, on the other hand, held that One Hundred Thousand Whys did not belong to the established common name of commodities. The established common name is normally established based on the general understanding of the relevant public of the whole country. The popular science books intended for children were never brought under the same pattern of unified names. The plaintiff was approved to register the trademark involved in the case in 2017. At that time, many publishing houses published the same kind of books. It can be seen that at this time, One Hundred Thousand Whys, as the main identification part of trademarks, still has certain significance, and has not degenerated into a common name in use, and there is no weakening of significance. 

In everyday language, the literal meaning of One Hundred Thousand Whys does not fall into the same context as the specific brand attributes of the books involved. 

Secondly, does the defendant's use of the term One Hundred Thousand Whys belong to the trademark usage in terms of the trademark law? 

The Putuo Court stated that the judgment of "using trademarks" should be based on whether it can play an identification function. Book names have mixed attributes of goods and brands, and specific book names have the possibility of personalization, which can form corresponding links with authors and publishers, and play a role in distinguishing book sources. The plaintiff registered the trademark One Hundred Thousand Whys, in essence, using the book name as a commercial logo, thus realizing the trademark rights over the book name rights. This method is common in creative field, such as registering books, games, movies and other names as trademarks. Book names can be separated from the contents of books and have the function of identifying the source of goods based on the publisher's publishing behavior, which has independent attributes and protection value. Therefore, One Hundred Thousand Whys, even as a book name, has the benefit of commercial logo and plays the function of distinguishing the source of goods in essence. Therefore, the use of the accused logo belongs to the trademark usage in terms of the trademark law. 

To sum up, the Putuo Court held that the acts of the two defendants both constituted trademark infringement. The act of defendant Tiandi Press constitutes unfair competition by using the unique names of other people's well-known commodities without authorization and making false propaganda. The court ruled the defendant Tiandi Press to immediately stop trademark infringement and unfair competition, and the bookstore to immediately stop trademark infringement. The defendant Tiandi Press shall also publish a statement to eliminate the impact and compensate the plaintiff for economic losses of 500,000 yuan and reasonable expenses of 100,000 yuan.