By King & Wood Mallesons’ Trademark Group
Recently, GreenTree Inn Hotel ("GreenTree"), an economy hotel chain that owns over 450 chain hotels in almost 150 cites in China, brought a lawsuit against a local hotel named "Green Home Business Hotel" ("Green Home"), which is located in the Yanchen City, Jiangsu Province, for the alleged trademark infringement and unfair competition. GreenTree’s mark in actual use, namely, , consists of three parts, an oak tree device and the English of "GreenTree Inn" in an eclipse and Chinese Tradename of the hotel "格林豪泰" below the eclipse. In fact, in the four-character Chinese Tradename of GreenTree, only the first two correspond to "Green" in sound and the latter two are irrelevant to the word "GreenTree Inn" in either sound or concept, which pronounce "Hao" and "Tai", meaning "Generous" and "Peaceful", respectively.
GreenTree claimed that "Green Home" had used the English mark of "Green Home" and the Chinese mark of "格林之家" (which is the Chinese equivalent of "Green Home"), as well as an oak tree device on its signboard, business cards, shower caps, tooth cleaners, disposable slippers, soaps, access cards. The marks being sued constitute similar marks with GreenTree’s prior registered marks including "GreenTree Inn & oak device", "格林豪泰", which would mislead consumers as to the source of the service. From internet search, it can be seen from a photo of a signboard of Green Home, that the mark used has a similar structure with GreenTree’s mark in actual use.
In December, 2011, a Shanghai law firm representing GreenTree Inn Management Group filed a lawsuit against Green Home with the Yanchen Intermediate People’s Court for trademark infringement and unfair competition.
On February 20, 2012, Yanchen Intermediate People’s Court made a ruling affirming that "the Green Home Business Hotel run by Green Home is within the same industry with GreenTree", "GreenTree has become an economy hotel chain which enjoys certain fame within the industry", and that GreenHome’s commercial use of marks is similar to that having been registered by GreenTree without permission of the latter. All the similarities will cause confusion among the relevant public, violate the market principle of honesty, and infringe upon the exclusive trademark rights enjoyed by the plaintiff over its marks of "GreenTree Inn & oak device" and "格林豪泰". The court accordingly ordered Green Home to stop its infringing activities. Whether Green Home will appeal or not is still unknown to the public.
Although for those general Chinese consumers, there are some recognizable conceptual differences between "Green Home", its Chinese equivalent and GreenTree’s prior registered marks of "GreenTree Inn", "格林豪泰", the court still supported GreenTree’s claim for trademark infringement. The following two factors have been weighed by the court in making the ruling: 1) the defendant’s marks are similar in structure with the plaintiff’s, exposing the element of bad faith; 2) the continuous use of the marks of the Defendant may dilute the plaintiff’s trademark. Though the Defendant’s marks do not necessarily cause confusion among consumers, they are likely to weaken the established association between GreenTree Inn and its marks and accordingly dilute the brand distinctiveness and value of GreenTree.
News reports say GreenTree Inn Hotel is not the only hotel brand of fame being "Shan Zhai" (a Chinese slang referring to the activity to imitate the others’ famous brands, but provide goods/services of inferior quality). Other leading brands in hotel industry such as "Home Inn", "7 Days Inn" with over 1,000 chain hotels around China, also have to face these similar "Shan Zhai" hotels. The court’s ruling in this case will encourage the said chain hotels to take measures to safeguard their exclusive trademark rights. (Contributed by Luo Jingjing)
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