On September 28, the Forum on Trademark Protection under New Forms of the Internet (hereinafter referred to as "the Forum") was held in Beijing sponsored by the International Intellectual Property Research Center of Peking University.

Research association Liu Chuntian Intellectual Property Law in China, honorary President of Chinese society for the study of Intellectual Property Law Wu Han-dong, Deputy to the National People's Congress, China's Intellectual Property Rights Law Institute Vice President Ma Yide, Peking University School of Law professor, Director of the International Intellectual Property Research Center of Peking University Yi Jiming domestic experts in the field of trademark protection of intellectual property, has carried on the in-depth exploration regarding the new forms of network trademark approximate judgement, well-known trademark across class protection boundary question.

The judgment of trademark approximation should pay attention to whether it causes confusion

In recent years, China's new consumption is characterized by new forms of business and new models such as online shopping, mobile payment and integration of online and offline activities. It has developed rapidly, which meets the needs of residents and plays a vital role in uncovering the potential of domestic consumption and promoting economic development. In responding to the COVID-19 epidemic this year, the digital economy has become a new engine driving China's economic and social development. Meanwhile, the protection of trademarks under the new Internet format has also aroused broad public concern.

Concerning trademark similarity, intellectual property cases in the Internet industry are not uncommon. The analysis of these cases has become a hot topic among experts attending this forum. "Wangwang" and "Wangwang on Taobao", "Pai Ke" and "Sina Pai Ke", "Good Doctor" and "Ping An Good doctor", "Toutiao", and "UC Toutiao" these trademark dispute cases occurred in the context of the new business format. These have caused the domestic experts in the field of trademark intellectual property protection to have deeper thinking.

"In these cases, there are striking similarities. Taobao, Sina and Ping An are all well-known brands in China, and the prefix or suffix has a valid trademark that has been registered before. Why do we all agree that it does not constitute confusion and infringement? There's a reason for that." Wu Handong, honorary President of the China Intellectual Property Law Institute, said trademarks such as "Good Doctor," "Toutiao," and "Patopter" are descriptive and have limited exclusivity. "As trademark registration, the significance of such terms is not high, it is more of a symbol of public resources, and people will not be confused by the superposition of well-known brands with more significance."

In December 2012, because of dissatisfaction with Alibaba's trademark registration of "Taobao Wang Wang," Wang Wang Food submitted an appeal to the commercial judges to revoke the trademark, which was not supported. Commercial judges believe that "Wang Wang" still belongs to the category of everyday language, and its significance is relatively low compared with "Taobao". Beijing Court of First Intermediate People's Court held a court hearing on the dispute and ruled that the two "Wang Wang" websites are very different, and Alibaba's Taobao website can continue to use the trademark "Taobao Wang Wang".

Kong Xiangjun, professor and Dean of Law School of Shanghai Jiaotong University and Vice President of China Intellectual Property Law Institute, expounded the identification of trademark similarity from the three dimensions of "sound, meaning and form". Kong Xiangjun proposed that in the actual judicial application, factors such as whether the trademark's origin has malicious registration should be considered.

"The approximate identification of the trademark, whether it is core or differentiation. For example, it presents a completely different image to the public if there are three words and five words." Liu Chuntian, President of The Intellectual Property Law Institute of China, believes that the similar identification of trademarks should pay attention to the differences between them while emphasizing the trademark system and legislative system. The most fundamental principle is to protect transactions and protect property." The business order and the wealth of society that should be protected by law should be treated prudently."

According to Zhang Ping, a professor at Peking University Law School and Vice President of the China Intellectual Property Law Institute, some generic and descriptive words, together with distinctive ones, will not confuse the public and can be used according to norm respectively.

The cross-category protection of well-known trademarks should be treated with caution

"You're famous for selling shoes, does that mean you're famous for selling bread? In terms of cross-class protection, a strict definition is needed." Li Yang, Director of the Intellectual Property Research Center at Sun Yat-sen University and Vice President of the Intellectual Property Law Institute of China, believes that some problems are worth reflecting on the cross-category protection of well-known trademarks.

Li Yang admits frankly that famous in a specific province, or a particular region does not necessarily mean that it can also be identified as a well-known trademark throughout the country, it is worth discussing." The commercialization identification of well-known trademarks, if excessive, will have side effects on the development of the market economy."

"The well-known trademark is an import from the translation; the original meaning should be 'public awareness." Li Shunde, Vice President of China Intellectual Property Law Institute, explained the history of cross-category protection of "well-known trademark." "In practice, the boundary between cross-class protection and anti-monopoly of well-known trademarks should be paid attention to, and to avoid monopolizing public resources," he said. "A well-known trademark should never be unrestricted cross-category and cross-boundary protection."

Feng Xiaoqing, Director of the Intellectual Property Research Institute at the China University of Political Science and Law and Vice President of the China Intellectual Property Law Institute, believes that generic, daily, and descriptive words are public resources. If a common resource is registered, it cannot be used too broadly. "Cross-category protection of well-known trademarks should have strict limits; otherwise, it will cause a monopoly." Ma Yide, a deputy to the National People's Congress and Vice President of the China Intellectual Property Law Institute, said a judicial trial should consider various factors, including social and economic benefits.

Yi Jiming, a law professor at Peking University and Director of the Center for International Intellectual Property Studies at Peking University, believes that against the rapid development of new forms of Internet business, some cases have emerged in recent years that have attracted the attention of the industry. For the similar judgment of trademarks and the cross-category protection of well-known trademarks, we must respect the market's law and maintain the existing economic and social order.