“Good Doctor” finally won “Ping An Good Doctor” in trademark battle

Jiang Yubin,[Trademark]

 

Summary
The constant high-intensity input in the brand's intellectual property protection perspective makes Good Doctor Company have zero tolerance towards the entangling trademark infringement. It also makes the "Good Doctor" v. "Ping An Good Doctor" trademark invalidation case become a typical case in the high-quality development of market economy and enterprise's business environment optimization. It has provided a sample for reference for privately-owned enterprises to combat trademark infringement, strengthened intellectual property protection, and enhanced the brand's influence.
 
When the "Good Doctor" encountered with "Ping An Good Doctor", the long-lasting trademark battle officially kicked off. Who can be called a "Good Doctor"? Good Doctor Pharmaceutical Group and China Ping An Insurance (Group) Company, Ltd. held their own opinions. On June 10 this year, the Beijing High People's Court made the final judgment: maintain the Beijing Intellectual Property Court's original judgment result. According to the original ruling, the Court determined that the Good Doctor Company's "Good Doctor" trademark was a famous Chinese Trademark in the fifth category, "Human medicine" products; the trademark should deserve famous trademark protection, and thus revoked the China National Intellectual Property Administration's decision regarding the validity of "Ping An Good Doctor and graph"; the seven "Ping An Good Doctor" series trademarks that Ping An Insurance Company preemptively register in medical and health industry finally announced invalid by Law.
 
Until 2011, "Good Doctor" has been approved for registration in 44 categories of Trademark Category No.1-43, and No. 45. The continuous high-intensity input in the brand's intellectual property protection perspective makes Good Doctor Company have zero tolerance towards the entangling trademark infringement. It also makes the "Good Doctor" v. "Ping An Good Doctor" trademark invalidation lawsuit become a typical case in the high-quality development of market economy and enterprise's business environment optimization. It has provided a sample for reference for privately-owned enterprises to combat trademark infringement, strengthened intellectual property protection, and enhanced the brand's influence.
 
Case review: "Ping An Good Doctor" trademark invalidation twists and turns
 
The "Ping An Good Doctor" series of trademark registrations can be traced back to 2014. Ping An Insurance Company entered in the Internet Medical and Health field, and successively applied for registration of trademarks including "Ping An Doctor", "Ping An Health", "Ping An Good Doctor", "Ping An Good Medicine", and "Good Doctor came" etc. According to public information, on November 7, 2014, Ping An Health Internet Co. Ltd., owned by Ping An Insurance, promoted and launched the the "Ping An Health Manager" App, and renamed "Ping An Good Doctor" on April 21, 2015. On May 4, 2018, Ping An Health landed on the Hong Kong Stock Exchange, and it is called "Ping An Good Doctor" for short.
 
 
 
On May 2, 2018, on the eve of Ping An Health Company listed on the stock exchange, Good Doctor Company filed an application for invalidation to the former Trademark Office of the State Administration for Industry and Commerce regarding the seven trademarks (disputed trademarks) of the Good Doctor Company, which are No. 17554331, No. 17554570, No. 17554767, No. 17554836, N o . 17554844, N o . 17556160, a n d N o . 17556302, infringed the China Trademark Law (2013). Good Doctor Company filed the disputed trademark right invalidation announcement application. On March 29, 2019, the Trademark Office made the judgment towards the disputed trademark invalidation announcement request. It is difficult to decide that the behavior of register disputed trademark constitutes trademark plagiarism and copy towards Good Doctor Company's "Good Doctor and the graph" trademark. The disputed trademark registration would not mislead the public and did not constitute the situation specified in Article 13 Paragraph 3 of the Trademark Law (2013). Therefore1, the Good Doctor Company's related proposals were not supported, and the disputed trademark was maintained.
 
Good Doctor Company refused to accept the judgment and filed an administrative lawsuit to the Beijing Intellectual Property Court within the statutory time limit. Beijing Intellectual Property Court did not support a part of the Trademark Office's ruling and recognized that the conclusion of the disputed trademark did not infringe Article 13 Paragraph 3 of the Trademark Law (2013) made by the Trademark Office, and the mistaken part should be corrected. On November 11, 2019, Beijing Intellectual Property Court made the judgment according to Article 70, Provisions 1 and 2 of the Administrative Procedure Law, PRC: the ruling was canceled; and CNIPA made a new ruling.
 
Both the CNIPA and Ping An Insurance Company disagreed with the judgment of the Beijing Intellectual Property Court, and filed an appeal to the Beijing High People's Court, applied to revoke the original judgment and maintain the accused ruling. On June 10, 2020, Beijing High People's Court made the final judgment and held that the original judgment result is not improper, and determined that Good Doctor Company's "Good Doctor" trademark was a famous Chinese trademark in the fifth category "human medicine" product, and provide famous trademark protection, and revoked the CNIPA's decision regarding the validity of "Ping An Good Doctor and the graph" according to law. So far, seven "Ping An Good Doctor" trademarks preemptively registered by Ping An Insurance Company in the Medical and Health industry were finally announced to be invalid by Law, and the "Ping An Good Doctor" series of trademark invalidation lawsuit's administrative procedure came to an end.
 
The case's administrative litigation result has fully demonstrated that China's judiciary departments provide highly intensive protection for the intellectual property and trademark building of privately-owned enterprises. In the civil litigation field, Good Doctor Company won the lawsuit in the first and second instances of the Ping An Health Company trademark infringement case. On April 27, 2018, Good Doctor Company filed a lawsuit regarding Ping An Health involved in the "Good Doctor and the graph" trademark infringement to Chengdu Intermediate People's Court. The Court ruled that No. 1908463 "Good Doctor and the graph" was infringed according to law, and ruled that Ping An Health Company should instantly stop the behavior of using the "Ping An Good Doctor" and "Good Doctor" as the brand, which has infringed the trademark exclusive rights of Good Doctor Company; compensate Good Doctor Company economic loss and reasonable cost of three million yuan in total, and publicize an announcement on the China Consumer Journal to eliminate the adverse effects.
 
Ping An Health Company refused to accept it and appealed to the Sichuan High People's Court in the second instance. The second instance court maintains the original judgment. However, until September 11, which was the last statutory date to stop the infringement, Ping An Health Company has not stopped the infringement behavior of using the "Ping An Good Doctor" trademark. As its significant traffic portal, the "Ping An Good Doctor" App can still be retrieved, downloaded, and used. It was reported that Intermediate People's Court of Sichuan Liangshan Yi Autonomous Prefecture issued a civil ruling on September 7 to freeze the 70 million yuan in the bank account of Ping An Health Company. After the trademark dispute for more than two years, "Ping An Good Doctor" may face the final moment.
 
Judgment focus: Controversy over the identification of well-known trademark infringement continues
In this case, both parties had constant disputes about the famous trademark identification of "Good Doctor and the graph" and whether it constituted infringement. According to Article 14 of the current Trademark Law, it should be based on the litigant's request's as the fact needs to be affirmed and identify famous trademark." According to verification, in October 2010, Good Doctor Company's "Good Doctor and graph" series of trademarks were determined by the Trademark Review and Adjudication Board as "have been well-known to consumers nationwide" in the human drug products, according to Article 13 of the Trademark Law in the "Trademark dispute ruling in writing-Business Examination (2010) No. 28873.
 
However, the defendant ruled that the application for registration date of the disputed trademark was on March 30, 2006. Prior to this, although Good Doctor's Company's "Good Doctor and the graph" trademark has become relevant to the public among the human drug products through long-term utilization and promotion. However, as for "Good Doctor" as an existing Chinese word phrase, its originality is weak, and there is a difference between the disputed trademark and the "Good Doctor and the graph" trademark of the Good Doctor Company in constituent element, pronunciation, meaning, and the overall appearance. Based on the above, it is difficult to affirm that the behavior of Ping An Assurance Company register disputed trademark constitute plagiarism and imitation towards the Good Doctor Company's trademark "Good Doctor and the graph", which has a relatively high reputation in human drug products. Therefore, the sued ruling judged that the disputed trademark registration does not mislead the public and lead to the damage of the Good Doctor's benefits and did not constitute the prohibited situation in Article 13, Paragraph 3 of the Trademark Law.
 
While in the administrative litigation of the first instance, regarding several proposals that were raised by the Good Doctor Company, whether the disputed trademark violated the regulation of Article 30 and Article 31 of the Trademark Law, and whether the disputed trademark harmed the plaintiff's prior right of trade name, Beijing Intellectual Property Court supported the conclusion of the Trademark Review and Adjudication Board. Regarding whether the disputed trademark violated Article 13, Paragraph 3 of the Trademark Law, the Court integrated the evidence and concluded that the Good Doctor Company’s series of cited trademarks are on human drug products. The disputed trademark has already owned widespread public awareness and relatively high reputation before the disputed trademark application date, which has reached the extent of a famous trademark that is required in the Article 13 Paragraph 3 of the Trademark Law. Meanwhile,regarding whether the "Ping An Good Doctor and the graph" trademark is suspected of plagiarism or imitating the "Good Doctor and the graph" trademark, Beijing Intellectual Property Court considered that the disputed trademark and the cited trademark are similar in words constitution, words pronunciation, and overall appearance from the trademark's Chinese obvious recognition sectors. In this way, it was ruled that the disputed trademark constituted plagiarism and copy towards the cited trademark.
 
The trademark infringement determination, in this case, is closely related to whether the disputed trademark and the cited trademark constitute similar trademarks used on similar products. In the trial of the second instance, Ping An Insurance Company believed that the original judgment regarding the determination of Article 13, Paragraph 3 of Trademark Law (2013), violated the principle of identification of famous trademark protection on-demand and should be corrected. However, according to Article 30 of the Trademark Law (2013), "the trademarks that are applied to be registered, once it was not in accordance with the related regulations of the Law or same or similar to the registered or preliminary approved, will be rejected by the Trademark Office and not be announced. In response to Ping An Insurance Company’s claim that there is obvious difference between the "Ping An Good Doctor and the graph" trademark and "Good Doctor" trademark, it will not cause confusion and misunderstanding, and the litigating reasons including the subjective and intentional of free-ride Good Doctor Company's brand of Ping An Insurance Company do not have any support. Beijing High People's Court held that the judgment of identical or similar trademarks should be based on the perspectives of trademarks font style, pronunciation, meaning and graphic composition, design and overall manifestation, utilizing the approaches of overall observation and contrast the main components, and should also consider the related trademark's distinctiveness and reputation, the degree of relevance to the commodities that are used, with the criteria of whether the related public's general attention would be confused or misunderstood with the origin of the commodity. Therefore, Beijing High People's Court made corrected and supplemented the decisions of the Trademark Review and Adjudication Board and the first instance court, and determined that the first instance's facts were clear, and the application of laws was correct, the procedures were legal, and the ruling result of the first instance was maintained.
 
Behind the case: trademark invalidation announcement and famous trademark protection
It was pointed out in the "Famous trademark affirmation and protection regulation" that famous trademarks refer to those that are widely known by the related public in China and have a relatively high reputation. Strengthening the famous trademark's protection is the only way for China to fulfill relevant international convention's obligations, protect the interests of a famous brand's right owners and consumers, and continuously optimize the business environment. "Good Doctor" trademark case reveals the objective and fairness of China's administration of justice towards intellectual property protection, and releases the strong protection signal of judicial departments towards the brand's intellectual property regarding famous brands, which have been driven by innovation for decades.
 
Regarding the China famous trademark and the infringement identification standards, the Vice President of China Intellectual Property Law Research Association, former President of Beijing Intellectual Property Court, Su Chi said that according to the Paris Convention for the Protection of Industrial Property, the affirmation of trademark infringement is to determine the possibility of confusion and misunderstanding, which constitutes infringement. However, in China, the infringement determination criteria are that confusion and misunderstanding have been generated, then infringement is determined to be have been constituted. There are also differences in the famous trademark determination. The foreign standard is that the relevant field can be determined by the relevant personnel. China's standards are more demanding. Su Chi emphasized that regarding the right holders of intellectual property cases should adopt strict protection principle, and remind at the same time that "responsible entrepreneurs should have an awareness of intellectual property protection, and the infringers should also understand that if you keep investing in an infringing trademark, you will eventually face the risk of zero reputation and related assets."
 
In China's current economic governance environment, there is a strong demand for legislation to strengthen intellectual property infringement punishment and increase statutory compensation amount to a large extent. The way to identify trademark malicious infringement and determine punitive compensation amounts becomes a hot topic among experts, scholars and practitioners in the field of intellectual property. Regarding this, the director of Beijing Junce Intellectual Property Development Center, Wang Ze, believes that in the Internet era, it could provide convenience for enterprises to achieve rapid development and expand public awareness by infringing on the right of famous trademarks. He advocated that strictly punish trademark infringement behavior should not be affected by factors including the scale and size of market share of infringers. Some infringing enterprises insist that they have developed and reached a certain scale, and the infringing trademark owns a particular extent of reputation and has formed the so-called market order with the prior famous trademarks owned by others. There is an opinion that requiring enterprises such as these to stop infringement and make compensation will affect the already formed market order. But I recognize that it should not cancel the litigation towards these kinds of trademarks easily, and judicial policies cannot be substitutes for the law, enterprise’s development and trademark application should be based on honesty. Once the honesty principle is violated, no matter how large the market scale is, it should not be protected." Wang Ze said.
 
In the perspective of the Trademark Law amendment and new policy introduction, to strengthen the protection of trademark exclusive right and build a good business environment, in April 2019, the National People's Congress Standing Committee passed the decision regarding amending the Trademark Law. The amendment of the Trademark Law revised some of the clauses, and increased the punishment regarding the behavior of trademark exclusive right infringement, raised the punishment amount of malicious violation of trademark exclusive right from one to three times to one to five times, and raised the maximum amount of legal compensation amount from three million to five million yuan. Whereafter, to further deepen famous trademark protection, CNIPA researched and drafted the department regulation of "Several regulations regarding trademark application and registration behavior". From the perspectives of clarifying the requirement of applying for trademark registration, and the types of irregular application, clarifying the management of malicious trademark registration application in the whole procedure of trademark review, and detailing the administrative punishment towards the malicious applicants and trademark agents, the regulation implemented the amendment of the Law, provided legal reference and detailed practical measures for combat malicious application and registration behavior, strictly punished trademark infringement behavior, and strengthened trademark rights protection.
 
Under the current trademark registration system, how could enterprises complete trademark protection, cope with trademark infringement disputes, and win the market share? Good Doctor Company won the litigation in the "Ping An Good Doctor and the graph" series of trademark invalidation case was a perfect sample of protecting famous trademarks through trademark right invalidation announcement system. It provided a referable experience for privately-owned enterprises to walk out the trademark layout and brand's high-quality development path. It is known that China's protection of famous trademark in the registered trademark invalidation announcement system, reveals in the current "Trademark law" Article 13 and Article 45. Among them, Article 13 stipulates the relative reasons for prohibiting registration; one of them prohibits registering famous trademarks that others have not registered in China on the same or similar commodity; the other prohibits registering well-known brands have registered in China in all categories. Article 45 stipulates that within five years from the date of trademark registration, prior right owner or interested parties can file an invalidation announcement request towards the disputed registered trademarks. Under normal circumstances, the owner of famous trademarks must file within five-year-period from the trademark registration date; however, if it is approved that this trademark registration is malicious registration, it is not subject to the five-year-period requirement. The above regulation reveals China's strict regulation of administrative and judicial strict regulations on infringement of famous trademarks. Building the system of filing invalidation announcement requests towards malicious trademark registration is beneficial to protect litigants' legitimate rights. It will positively affect promoting trademark reasonable and legal registration and drive the healthy and orderly development of the marketing economy.
 
It is just the right time to strengthen the protection of famous trademarks. On November 19, 2019, CNIPA issued the Notification on strengthening the investigation and prosecution of famous trademarks protection in trademark violation cases, from three perspectives of strictly following the statutory authority and time limit of investigating cases involving famous trademarks, effectively regulated famous trademarks' identification applications and utilization, highlighted the key points and strengthen the famous trademark protection. The Notification proposed that famous brands' significant effect in accelerating intellectual property strong country and building a good business environment should be fully played. The Notification clarified the detailing requirement of further strengthens the investigation of famous trademark protection work in the illegal trademark cases. On September 25, 2020, CNIPA explicitly stated in the "Reply to the proposal of the third meeting of the 13th CPPCC National Committee" that it should strengthen the protection of famous trademark, strictly combat the behavior of maliciously preemptively register famous trademark and infringement, prevent enterprises utilize famous trademarks to conduct the unfair competition, continuously optimize the business environment, and protect the benefit of related right owners and consumers.
 
Trademarks have gradually become a powerful means for enterprises to participate in market competition; trademark protection capabilities can reflect to a certain extent the level and comprehensive capacity of enterprises' intellectual property management work. The strong input into the brand in the thirty-four years journey of Good Doctor Company from establishment till now has become the most powerful subscript that the case finally announced the "Ping An Good Doctor" series of trademark invalid, and affirm the "Good Doctor" trademark as China's famous trademark. It reveals large privately-owned enterprises' manner to fully cultivate and protect the trademark under the legalized market economy environment. As China continues to strengthen the implementation of relevant measures for trademark protection, the protection of famous trademarks, further regulating market order, and exerting its brand effect will expand deeper and broader in the future.
 
 
 
 
 
Bibliography
1 The Paragraph 3 of Article 13 of the “Trademark Law” stipulates: “The trademark applied for registration of different or dissimilar goods is the reproduction, imitation, or translation of a well-known trademark already registered in China by others, misleading the public and causing the registrant of the well-known trademark, if the interests of the company may be harmed, registration shall not be granted and use”.

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