In the current Internet market, who could unite each of the companies who are competing fiercely to defend against the enemies? The answer may surprise many people. At the start of last year, a special trademark dispute case has drawn strong attention from all sectors of society. On February 19, 2019, Tencent Technology (Shenzhen) Co. Ltd. (refers to as Tencent Company) filed an objection requisition against Meizhou Xindu Science and Technology Industrial Co., Ltd, which has applied to register the “A-Jing-Teng-Bai” trademark in forty-five commodities and service types. Surprisingly, there are three other co-applicants for this application,which are: Alibaba Group Holding Ltd., Baidu Online Network Technology (Beijing) Co. Ltd., and Beijing Jingdong Three Hundred Sixty Degree Electronic Commerce Co., Ltd.
In recent years, with the prosperous development of the trademark market in China, the “free-ride” type of improper trademark applications for registration are not uncommon. A number of well-known enterprises and famous brands suffered even more. While the public in society has seen the endless occurred trademark “free-riding” news as typical, “A-Jing-Teng-Bai（“阿京腾百”） trademark case still caused heated debate of the public, which is enough to demonstrate the specificity of this case. Whether the “A-Jing-Teng-Bai” trademark belongs to the improper trademark registration application? If regulate on the trademarks similar to “AJTB”, then which legal regulations should be based on? There is a significant disagreement of various sectors on society towards this above issue. However, through the chaos disputes of different parties and deeply explore the legal principles and rationale behind the case, it is not hard to find out the constant essentials that support us to make correct judgment under the appearance of the ever-changing trademark market.
Case review: “BATJ” vs. “A-Jing-TengBai”
All of the disputes and controversies of the case should start from the opposed party Xindu Company. Compared with the “BATJ ‘Supreme Group (refers to the four companies: Baidu, Alibaba, Tencent, and JD)’”, Xindu Company is apparently a little-known side. However, Xindu Company has the ambition which is incompatible to its reputation and quantity. On May 11, 2018, Xindu picked each of the first characters of “Alibaba”, “JD”, “Tencent” and “Baidu”, and applied a batch of “A-Jing-Teng-Bai” trademark to National Intellectual Property Administration, PRC, and pointed forty-five types of commodities and services in Similar Commodity and Service (As shown in Table 1). The first batch among these trademark applications received preliminary examination announcement on November 20, 2018, and the second batch has received the preliminary examination announcement on November 27, which was a week later.
|
No. |
Application/Registration No. |
International Category |
Application date |
Trademark name |
Applicant's name |
|
1 |
30860940 |
30 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
2 |
30860940 |
26 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
3 |
30860940 |
28 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
4 |
30860940 |
25 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
5 |
30860940 |
29 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
6 |
30860940 |
27 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
7 |
30860940 |
31 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
8 |
30860611 |
36 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
9 |
30860611 |
37 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
10 |
30860611 |
35 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
11 |
30860611 |
33 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
12 |
30860611 |
32 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
13 |
30860611 |
38 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
14 |
30850852 |
34 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
15 |
30850852 |
4 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
16 |
30850852 |
2 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
17 |
30850852 |
6 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
18 |
30850852 |
1 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
19 |
30850852 |
3 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
20 |
30850852 |
7 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
21 |
30850852 |
5 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
22 |
30846909 |
13 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
23 |
30846909 |
11 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
24 |
30846909 |
9 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
25 |
30846909 |
10 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
26 |
30846909 |
8 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
27 |
30846909 |
12 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
28 |
30846312 |
45 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
29 |
30846312 |
41 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
30 |
30846312 |
39 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
31 |
30846312 |
44 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
32 |
30846312 |
43 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
33 |
30846312 |
40 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
34 |
30846312 |
42 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
35 |
30841883 |
20 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
36 |
30841883 |
17 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
37 |
30841883 |
21 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
38 |
30841883 |
16 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
39 |
30841883 |
14 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
40 |
30841883 |
23 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
41 |
30841883 |
15 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
42 |
30841883 |
19 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
43 |
30841883 |
24 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
44 |
30841883 |
22 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
|
45 |
30841883 |
18 |
11-May-18 |
A-Jing-Teng-Bai |
Meizhou Xindu Science and Technology Industrial Co., Ltd |
Table 1 Search result of “A-Jing-Teng-Bai” series of trademarks
After the preliminary examination announcement, “A-Jing-Teng-Bai” series of trademarks passed almost the entire announcement period without trouble. However, on the eve of the first batch of the “A-Jing-Teng-Bai” trademark preliminary examination announcement, on February 19, 2019, four companies including Tencent, Alibaba, JD, and Baidu united and filed a dispute against the “A-Jing-Teng-Bai” series of trademarks to CNIPA. So far, the “A-Jing-Teng-Bai” series of trademarks has broken through the circle and triggered widespread heated discussion in society.
On August 7, 2020, this Internet giants “Top Group” united ‘right protection case’ has received the latest progress. CNIPA has decided not to register the“A-JingTeng-Bai” series of trademarks in the entire forty-five types of commodities and services. This decision marks the initial success of the four giants in the Internet industry of this united right defense operation. However, the opponent still retains the right to apply for a review. The battle between “BATJ” and “A-Jing-Teng-Bai”has not yet completely ended.
Case analysis: why should “collaged-type” of trademarks be regulated?
In this case, the four opposers including Tencent Co. Ltd. filed several opposing reasons to CNIPA, which include: in the premise that Xindu Co. Ltd., which is the opposed party, has the relationship such as proxy representation and contract business transaction with the four objectors, Xindu still applied to register the same or similar trademarks regarding the same or similar commodity used by the four opponents in advance; it has violated the Paragraph 2 Article 15 of Chinese Trademark Law. The opposed party maliciously infringed the prior trade name right of the four opponents, the registration and utilization of the trademark challenged “A-Jing-Teng-Bai” was deceptive and easy to lead to a misunderstanding of the public towards the characteristics of commodities such as its quality, and origin. In response to the above reasons for objection, CNIPA did not support them due to lack of evidence. However, another affirmation of CNIPA has finally determined the battle; all of the malicious trademark applicants could not avoid and even more difficult to justify, which is the issue of subjective intention.
CNIPA stated in the decision of non-registration in the case that the objectors are four well-known world-class Internet enterprises in China, and “Ali”, “JD”, “Tencent” and “Baidu” are the abbreviations of the four objectors, and also the trademarks used by the objectors for a long time, which have a relatively high reputation and influence. The opposed trademark is composed of the first letter of the abbreviated trademark of the objectors. According to the investigation, the opposed person simultaneously applied to register the ‘A-Jing-Teng-Bai’ trademark in forty-five categories of commodity service and no evidence was submitted to prove that it has a reasonable intention to use it. In this way, CNIPA refused to register the “A-Jing-Teng-Bai” series of trademarks in all of the commodity service categories with the reason of “the people challenged has the intention to improperly use the objector’s market reputation which is likely to cause adverse social impact”, according to Article 10, Paragraph 1, Item (8) and Article 35 of the Trademark Law.
As mentioned above, CNIPA affirmed the feature of improper application of “A-Jing-Teng-Bai” series of trademarks in this case from the objective and subjective conditions:
From the objective perspective, the four worldly well-known enterprises Alibaba, JD, Tencent, and Baidu own extremely high market reputation, from the media report and public reaction after the case of “A-Jing-TengBai” series of trademarks was exposed, the series of trademarks will apparently let the consumers with general attention to naturally think of “Alibaba-JD-Tencent-Baidu”, which is very likely to cause confusion and misunderstanding. Therefore, “A-Jing-Teng-Bai” series of trademarks, by all means, are difficult to get rid of the suspicion of improper use of other’s market reputation, and the adverse social impact that it has caused has become the established fact.
From the subjective perspective, it has further confirmed the impropriety of the “A-Jing-Teng-Bai” series of trademarks. It can be known from the public channel search that as a small-sized company with registered capital of one million yuan, and staff size of no more than fifty people, the opposed Xindu Company has applied for fifty-three trademarks, and the “A-JingTeng-Bai” trademarks applied in all categories occupied the vast majority of places. Moreover, Xindu Co. Ltd. mainly operates in “e-commerce, business information consultation service etc.” applying for the “A-Jing-TengBai” trademarks in all categories obviously exceeded its reasonable scope of the needs of business activities. Unless its reasonable intention to use can be explained, otherwise, it will inevitably be difficult for the behavior of Xindu Co. Ltd. applies for the “A-Jing-Teng-Bai” trademark in all categories to escape from the suspicion of squatting and hoarding of trademarks. While in the process of objection, Xindu Co. Ltd. was not able to submit any powerful evidence regarding this issue.
After the news of the uniting right protection action came out, around the issue of how to determine the nature of “A-Jing-Teng-Bai” series of trademarks, there are a number of adverse opinions appeared in society. A part of the opinion considered that “A-Jing-Teng-Bai” trademark is not any inherent vocabulary or combination of words in terms of text. It has a certain distinctiveness in itself and cannot be naturally associated with “AliJD-Tencent-Baidu”. However, such views are inevitably separated from the specific social and market background; its isolated perspective led to a biased understanding of the real nature of the event.
In fact, for the improper trademark registration application that formed through collaging several famous enterprises’ trademark and the firm name just like “A-Jing-Teng-Bai” is not an isolated case. Earlier in 2014, a text trademark application named “Ali-Hengda” (Table 2) has drawn the attention of the public. The trademark application finally rejected by the opposition process. However, the trademark’s “scissor hands” did not stop there. Trademark registration application such as “Jing-Tao-Ya-Ma” in 2017 (Table 3), and “Tao-Pin-Jing”, “Tao-Pin-Jing-Mao” in 2019 (Table 4) has successively sparked heated discussions. The ancients have been seen before, and the people have been seen afterwards. In the current trademark market, “collage-type” trademarks such as “A-Jing-Teng-Bai” will continuously arise.
|
No. |
Application/Registration No. |
International Category |
Application date |
Trademark name |
Applicant's name |
|
3 |
14840104 |
11 |
June 11, 2014 |
Ali-Hengda |
Shenzhen Weidi Electric Co., Ltd |
|
4 |
14815084 |
2 |
June 10, 2014 |
Ali-Hengda |
Foshan Jinhong Building Materials Co., Ltd |
|
5 |
14812642 |
25 |
June 9, 2014 |
Ali-Hengda |
Wenzhou Yipu Clothing Co., Ltd |
Table 2 “Ali-Hengda” series trademark search results
|
No. |
Application/Registration No. |
International Category |
Application date |
Trademark name |
Applicant's name |
|
1 |
26075763 |
41 |
August 25, 2017 |
Jing-Tao-Ya-Ma |
Jilin Zhenghedao Catering Management Co., Ltd. |
|
2 |
26070458 |
43 |
August 25, 2017 |
Jing-Tao-Ya-Ma |
Jilin Zhenghedao C,atering Management Co., Ltd. |
|
3 |
26060232 |
35 |
August 25, 2017 |
Jing-Tao-Ya-Ma |
Jilin Zhenghedao Catering Management Co., Ltd. |
Table 3 “Jing-Tao-YaMa” series of trademark search results
|
No. |
Application/Registration No. |
International Category |
Application date |
Trademark name |
Applicant's name |
|
1 |
42027791 |
35 |
October 31, 2019 |
Tao-Pin-Jing-Mao |
Ningbo Kaimu E-Commerce Co., Ltd |
|
2 |
42016357 |
42 |
October 31, 2019 |
Tao-Pin-Jing-Mao |
Ningbo Kaimu E-Commerce Co., Ltd |
|
3 |
42001979 |
9 |
October 31, 2019 |
Tao-Pin-Jing-Mao |
Ningbo Kaimu E-Commerce Co., Ltd |
|
4 |
35811290 |
35 |
January 8, 2019 |
Tao-Pin-Jing |
Shanghai Bida Construction Engineering Management Co., Ltd. |
Table 4 “Tao-Pin-Jing”, “Tao-Pin-Jing-Mao” series of trademark search results
Furthermore, there are some trademark applicants even disassembling others’ well-known trademarks and apply for several times, attempt to achieve the goal of “restore” others’ well-known trademarks after the trademarks are successfully applied. For example, a company once applied for three trademarks “Liufeng”, “Biwei”, and “Jujiang” on the 30th category “Condiments: Seasoning Sauce”, and therefore to collage it as the wellknown pickle brand “Liubiju Flavored Sauce” (Table 5); a natural person applied for two trademarks “Dongyueqi” and “Fengdaya” on the 11th and 12th automobiles and other commodities, so as to collage the well-known car brand “Dongfeng Yueda Kia” (Table 6). It is not difficult to imagine that if the “A-Jing-Teng-Bai” series of trademarks are approved to be registered; then will it be far away to have the “Li-Dong-Xun-Du” to come? At that time, without people trying to think about it, the words of “AliJD-Tencent-Baidu” will be clearly restored in front of consumers.
|
No. |
Application/Registration No. |
International Category |
Application date |
Trademark name |
Applicant's name |
|
1 |
3102560 |
30 |
February 28, 2002 |
Liufeng |
Renqiu Guiyuanzhai Pickles Food Co., Ltd. |
|
2 |
3102559 |
30 |
February 28, 2002 |
Biwei |
Renqiu Guiyuanzhai Pickles Food Co., Ltd. |
|
3 |
3102558 |
30 |
February 28, 2002 |
Jujiang |
Renqiu Guiyuanzhai Pickles Food Co., Ltd. |
Table 5 Category 30 “Liufeng”, “Biwei”, “Jujiang” trademark application
|
No. |
Application/Registration No. |
International Category |
Application date |
Trademark name |
Applicant's name |
|
1 |
21272938 |
12 |
September 12, 2016 |
Dongyueqi |
Xu Rongfen |
|
2 |
21272937 |
12 |
September 12, 2016 |
Fengdaya |
Xu Rongfen |
|
3 |
17949248 |
11 |
September 22, 2015 |
Dongyueqi |
Xu Rongfen |
|
4 |
17949247 |
11 |
September 22, 2015 |
Fengdaya |
Xu Rongfen |
Table 6 Categories 11 and 12 “Dongyueqi” and “Fengdaya” trademark applications
Enlightenment after the case: well-known enterprises unity right defense, more for business than for personal gain
In summary, “A-Jing-Teng-Bai” trademark’s application for registration only have a seemingly legal coat, but there is absolutely no reasonable core at all. The emergence of “A-Jing-Teng-Bai” trademark also represents a countercurrent that cannot be ignored in the trend of China’s trademark market standardization.
In recent years, China’s trademark administrative departments have continuously stepped up efforts to crack down on improper trademark registration application: in 2018, Trademark Office of CNIPA successively rejected more than 16,000 cases of trademark registration applications and instructed to crack down on improper trademark registration application behavior suspected of hoarding trademarks. In October 2019, “Several regulations regulating trademark application registration” deliberated and approved by the State Administration for Market Regulation has added principles on regulating application for trademark application should follow the principle of good faith. The application shall not be registered if the registration is malicious and do not have the purpose of use, copy, imitate or translate others’ well-known trademarks, applying for trademark registration with defeating or other improper approaches, or other trademarks with adverse effects. Meanwhile, the majority of enterprises are increasingly value their own intellectual property, including trademark, actively protect their legal rights and interests, including trademarks and firm names through right protection actions. However, in this context, many malicious trademark applicants still continue to adopt new strategies to free-ride others’ well-known firm name and to avoid legal administration and justification. “Collaged-type” text trademarks such as “A-Jing-TengBai” are just a tip of the iceberg in the complicated and refurbished trademark malicious application.
In the huge black-and-gray industrial chain of intellectual property, the Internet enterprises with enormous quantity, high reputation, and perfect market reputation often become the victims that are most often attacked and bear the greatest losses. Confronting the interception of a large number of malicious trademark applicants, many well-known Internet enterprises cooperate and break the situation altogether and actively fight to protect their own legal rights and social public’s benefits. In addition to the united opposition of Tencent, Alibaba, JD.com and Baidu this time, recently three enterprises including Tencent, Alibaba, and Baidu collaborate filed a complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre against Zhang Peishun for malicious registration the domain name case. In March 2020, WIPO Arbitration and Mediation Centre Expert Group made a ruling to transfer the forty-nine disputed domain name including aliyunar.com.cn, ar-qq.cn, ar-weixin.cn to the three complainants of Tencent, Alibaba, and Baidu. The judgment result of this case and “A-Jing-Teng-Bai” series of trademarks disputes case both marked the initial victory of the uniting right protection by well-known Internet companies.
Through the “A-Jing-Teng-Bai” series of trademarks case, we should recognize that under the overall trend that the regulation of malicious registration applications for trademarks is still severe, uniting rights protection actions of well-known enterprises not only focus on protecting the enterprises’ own interests, but its widespread social impact would also extend further into the social public interest area. In a market economy, no matter large and medium-sized enterprises or small and micro-sized enterprises, and also regardless of producers and consumers, all of which would become the potential targets of malicious trademark registration applications. Therefore, trademark right protection and combating malicious trademark registration is not only related to the litigants but also involve everyone’s interests. While famous Internet enterprises depend on their own public topicality, could play the role of guiding enterprises to protect their rights, driving public attention, maintaining market order, creating typical cases, and deterring potential infringement. Under the shadow of the crisis of anomie of business ethics, we should also be happy to see the unity of well-known enterprises and shine the light on the road of honest working and legal operation.
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