The author | Ke Yi
In recent years, China's new consumption characterized by new formats and models such as online shopping, mobile payment, and online and offline integration has developed rapidly. In the process of responding to the new crown pneumonia epidemic this year, the digital economy has become a new engine to promote China's economic and social development. At the same time, trademark protection under the new online format has also aroused widespread public concern, and all parties are actively exploring how to strengthen the protection of trademarks in new formats.
On September 28, 2020, the "Forum on Trademark Protection under New Online Formats" (hereinafter referred to as the "Forum"), sponsored by the Center for International Intellectual Property Studies of Peking University, was held in Beijing. Many authoritative experts in the field of trademark intellectual property protection in China gathered together to speak successively, and conducted in-depth discussions on issues such as trademark similarity judgment under the new network format and cross-class protection boundaries of well-known trademarks.
Whether the <h1 class="pgc-h-arrow-right" > causes confusion is a key point in judging the similarity of trademarks</h1>
In December 2012, Want Want Food was dissatisfied with Alibaba's registration of the "Taobao Want Want" trademark and submitted a complaint to the TRAB to revoke the trademark, which was not supported. The TRAB believes that "Want Want" is still in the category of everyday terms, and its significance is low compared to "Taobao". The Beijing Municipal First Intermediate People's Court held a trial of the "Want Want" dispute and ruled on the spot: the two "Want Want" are very different, and Taobao.com operated by Alibaba can continue to use the "Taobao Want Want" trademark.
Regarding trademark similarities, ip cases in the Internet industry are not uncommon. "Want Want" and "Taobao Want Want", "Pai Ke" and "Sina Pai Ke", "Good Doctor" and "Ping An Good Doctor", "Toutiao" and "UC Toutiao", these trademark dispute cases that occurred in the context of new formats, became the hot topic of discussion among the participating experts.
"Judging from these cases, there are striking similarities, 'Taobao', 'Sina', 'Ping An', are all well-known big brands in China." The prefix, or suffix, has a valid trademark that has been registered before, why does it agree that it does not constitute confusion and does not constitute infringement? There's a reason for that. Wu Handong, honorary president of the China Intellectual Property Law Research Association, believes that "good doctors", "headlines", "shooters", such trademarks are descriptive, and the exclusive effect is limited. "Such terms are registered as trademarks, the distinctiveness is not high, more is a sign of public resources, superimposed on the use of more distinctive well-known brands, people will not be confused."
Kong Xiangjun, professor and dean of the Law School of Shanghai Jiao Tong University and vice president of the China Intellectual Property Law Research Association, elaborated on the determination of trademark similarity from the three dimensions of "sound, meaning and shape", and proposed that in actual judicial application, it is necessary to consider whether the source of the trademark is registered in bad faith and other factors.
"The core of the similar determination of trademarks is still differentiation. For example, three words and five words, the image displayed to the public is completely different. "Liu Chuntian, president of the China Intellectual Property Law Research Association, believes that the similar identification of trademarks should pay attention to the differences between them, and at the same time emphasize the trademark system and the legislative system, and the most fundamental principle is to protect transactions and protect property." The commercial order and social wealth that the law should protect should be treated with caution. It cannot be simply and rudely treated. ”
Zhang Ping, a professor at Peking University Law School and vice president of the China Intellectual Property Law Research Association, also believes that some common and descriptive words, plus distinctive words as trademarks, will not confuse the public and can be used in their own regulations.
<h1 class="pgc-h-arrow-right" > trademarks have common words but different core businesses Cross-class protection of well-known trademarks should be treated with caution</h1>
"You're famous for selling shoes, does that mean you're also famous for selling bread?" Cross-class protection requires a strict definition. Li Yang, director of the Intellectual Property Research Center of Sun Yat-sen University and vice president of the China Intellectual Property Law Research Association, said bluntly that there are some problems worth reflecting on the cross-class protection of well-known trademarks.
Previously, the trademark case between "Ping An Good Doctor" and "Good Doctor" in Sichuan triggered a heated public discussion. Li Yang used this case analysis to say that Sichuan's "Good Doctor" focuses on "medicine" and is an enterprise with pharmaceutical manufacturing as the core; while "Ping An Good Doctor" focuses on online diagnosis and treatment services, which is a medical and health service platform with internet medical APP as the core.
Li Yang frankly said that if it is famous in a certain province and a certain region, it is debatable whether it can also be recognized as a well-known trademark nationwide. "The commercialization of well-known trademarks, if excessively widespread, has side effects on the development of the market economy."
"A well-known trademark is a translated imported product, which should have meant 'public awareness'." Li Shunde, vice president of the China Intellectual Property Law Research Association, elaborated on the historical origin of cross-class protection of "well-known trademarks", and bluntly said that in practical application, the boundary between cross-class protection of well-known trademarks and anti-monopoly should be paid attention to to avoid creating a monopoly of public resources. "Well-known trademarks should never be unrestricted cross-class and cross-border protection."
Feng Xiaoqing, director of the Intellectual Property Research Institute of China University of Political Science and Law and vice president of the China Intellectual Property Law Research Association, also believes that similar to common, everyday, descriptive vocabulary, is a public resource, and if this public resource is registered, it cannot be used too broadly. "The cross-class protection of well-known trademarks must have strict boundaries, otherwise it will create a monopoly." Ma Yide, deputy to the National People's Congress and vice president of the China Intellectual Property Law Research Association, said bluntly that judicial adjudication should comprehensively consider various factors, including social benefits and economic benefits.
Yi Jiming, professor at Peking University Law School and director of the International Intellectual Property Research Center of Peking University, believes that in the context of the rapid development of new network formats, some cases that have emerged in recent years have aroused the attention of the industry. For the similar judgment of trademarks and the cross-class protection of well-known trademarks, we must respect the laws of the market, agree with the social status quo recognized by consumers, and maintain the existing economic and social order.
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(Responsible editor: Li Jianhua Intern: Guo Jinwen)