China International Travel Service (CITS) and China International Travel Services (U.S.A.), Inc. (hereinafter referred to as CITS USA) recently settled a trademark infringement case through mediation before Shanghai No.1 Intermediate People's Court. CITS USA agreed to immediately cease infringing CITS’s exclusive use rights of trademarks including the globe device,“CITS” and “Guolv” (CITS’ shortened company name in Chinese), cease false advertising on its website, and pay CITS compensation of RMB 10,000 .

Between 1995 and 1996, CITS registered the aforementioned trademarks, recognized by China’s Trademark Office as “Wellknown Trademarks,” for use in travel services in 1999.

Yu Jun, legal representative of CITS USA, was a former employee of a branch of CITS in China. In February 2003, he established CITS U.S.A in the United State. In August 2004, he set up a representative office of CITS USA in Hangzhou. On July 19, 2005, he registered a globe device, identical to CITS’s trademark, in the U.S.

In November 2006, CITS USA attended the China International Travel Mart. It used both its Chinese and English company names together with the globe device on its exhibition booth, promotional materials and staff business cards. On its business cards, the words “CITS USA” were printed directly below the globe device. In addition, on its website, CITS USA described itself as an overseas office of a major Chinese travel agency.

The court mediated a settlement between the parties, and CITS USA fulfilled its obligations within one week of the mediation agreement taking effect.

Lawyer's Note

CITS's trademark is a wel l -known trademark registered in China for use in travel services. While CITS USA registered the globe device in the U.S., it did not do so in China and its use of the globe device,“CITS” and “Guolv” in China infringed CITS’s trademark right. Statements on its website were inconsistent with facts, constituting false advertising and thereby unfair competition against CITS.

It is not uncommon for well-known Chinese trademarks to be registered by others in other countries. Affected Chinese companies can generally have their rights to the exclusive use of the trademarks protected through litigation in China, but they are not so fortunate in overseas markets. Therefore, companies should pay attention to trademark registrations abroad and take steps to protect their trademarks. At the same time, they should protect their interests by taking the initiative to bring cases abroad and put a stop to infringement.