"Double Eleven" Trademark Case Opens
Who should own the "Double Eleven"
On the afternoon of November 10, an administrative dispute over the "Double Eleven" trademark cancellation review was heard in Beijing Intellectual Property Court.
Beijing Jingdong Sanbailushidu Electronic Commerce Co., Ltd. (JD.com) believes that Alibaba Group Holding Co., Ltd. (Alibaba), the holder of the "Double Eleven" trademark, has not actually used the trademark within three years and should be revoked.
After the review, the State Intellectual Property Office held that the registration of the trademark involved in advertising and other services should be maintained, but it should be revoked for many other services.
Alibaba and JD.com both expressed dissatisfaction with the review decision of the State Intellectual Property Office, and the two companies sued the Beijing Intellectual Property Court respectively.
A reporter from Beijing Youth Daily noted that the two major domestic e-commerce giants Alibaba and JD.com have been competing for the ownership and use of the "Double Eleven" trademark for many years.
In 2019, the Beijing Intellectual Property Court heard a number of administrative litigations regarding the invalidation of trademark rights of the two companies regarding the trademarks "Double 11·11 and Figures" and "JD Double Eleven" that JD.com applied for registration.
This case entered judicial proceedings for the first time after the "Double Eleven" trademark dispute between Ali and JD.com.
Today, the dispute continues, and the two e-commerce giants once again go to court.
dispute
Whose "Double Eleven"?
On November 1, 2011, Alibaba applied for the registration of the "Double Eleven" word mark on the 35th category of advertising and other services, and was approved for registration on December 28, 2012.
After that, Jingdong Company applied for the registration of five trademarks including "Double 11·11 and Pictures", "JD Double Eleven", and "Double 11·11 on Jingdong and Pictures", which were approved to be used in the 35th category "Advertising, Computer Network Online advertising"; category 38 "TV broadcast"; category 41 "education" and other services.
In October 2014, a "Notice of Rights Protection" issued by Alibaba entered the public eye, causing a wave of waves with one stone.
The “Notice Letter” stated that “a small number of e-commerce companies” used “Double Eleven” in their media advertisements and were suspected of trademark infringement. “Using the influence of the “Double Eleven” campaign to increase their reputation is a disregard for intellectual property rights. To achieve the purpose of taking advantage of the situation and even ignore the facts."
According to news, the "small number of e-commerce companies" referred to in the "Notice Letter" are JD.com.
Since then, the battle between Alibaba and JD.com for the "Double Eleven" trademark has started and continues every year.
In 2018, JD.com believed that Alibaba did not actually use the "Double Eleven" trademark during the three years from November 2015 to November 2018, so it filed an application for cancellation of the trademark with the State Intellectual Property Office.
After review, the State Intellectual Property Office found that the evidence submitted by Alibaba was sufficient to prove that it had used the "Double Eleven" trademark in a true and effective manner, and decided to maintain it.
JD.com refused to accept it and filed a review with the State Intellectual Property Office on September 23, 2019.
In May of this year, the State Intellectual Property Office found that Alibaba had actually and effectively used the "Double Eleven" trademark in the service of "advertising; displaying goods on communication media for retail purposes; selling for others". The registration of trademarks on some services should be maintained; however, the trademark registrations of the remaining services were cancelled because they were not used in many services such as "business management assistance; business information".
A reporter from Beijing Youth Daily noticed that both JD.com and Alibaba were dissatisfied with the review decision in the same decision. JD.com refused to maintain the registration part and Alibaba dissatisfied with the deregistration part. The two companies filed suits with the Beijing Intellectual Property Court respectively and requested the court Order the State Intellectual Property Office to make a new decision.
Jingdong
"Double Eleven" should not fall into a private monopoly
On the afternoon of November 10, two cases were heard in Beijing Intellectual Property Court. JD.com and Alibaba participated in the litigation as plaintiffs in the two cases.
As a result, JD.com and Alibaba changed the seats of the plaintiff and the third person back and forth; while in the dock, both were the State Intellectual Property Office.
First, JD.com sued the State Intellectual Property Office and Alibaba appeared in court as a third party.
JD.com believes that "Double Eleven" is a habitual expression for the shopping festival on November 11 each year. Now it is not only in the field of e-commerce, but also in various industries such as education and aviation. The use and participation of the whole society should belong to the category of public language and should not fall into the scope of private power monopoly.
In court, JD.com stated that when Alibaba held shopping festivals, it was mostly used in combination with other trademarks, such as the words "Tmall Double Eleven".
The most common way of use in society is to add company names or trademarks before "Double Eleven" to distinguish shopping promotion activities of different companies.
It believes that the essence of this use is the use of the "Tmall" trademark instead of the "Double Eleven" trademark.
In addition, the registered trademark is "Double Eleven" in full text, but Alibaba uses "Double 11" and "11·11" in its use. This should not be regarded as the use of the trademark in question. Between 2016 and 2018, Alibaba did not use the trademark involved in the case as a trademark, so it should be revoked according to law.
The State Intellectual Property Office stated that the review decision was made in response to the actual use of the trademark in question raised by JD.com and did not involve disputes over trademark distinctiveness.
After review, the trademark in question was used within the specified period, so that the relevant public could know the time of the promotion through the above use, which played a role in advertising and sales.
The decision being sued is based on law and should be maintained.
Ali
Has invested huge sums of money to create "Double Eleven"
Then, Alibaba sued the State Intellectual Property Office, and JD.com appeared in court as a third party.
Alibaba maintains that it is the founder of the "Double Eleven" shopping festival.
In 2009, Alibaba applied "Double Eleven" to online sales promotion for the first time, and applied for trademark registration in 2011 and was approved.
During the annual promotion activities, Alibaba will apply the words "Double Eleven" to products participating in promotional activities during advertising, merchant promotion agreements, store decorations, etc., so that consumers can distinguish the source of services and identify the promotional products.
Regarding the "Double Eleven" trademark, Alibaba said that it has continued to invest a lot of manpower, material resources, and intelligence, and the annual promotion and marketing expenses are huge, which makes the shopping festival so influential.
As for the specific use of trademarks, whether in words or numbers, there is no difference between the call and the meaning. The company will use different methods to design in different scenarios to reflect the beauty and enhance the publicity effect.
Alibaba agreed to maintain the part of the trademark registration involved in the review decision of the State Intellectual Property Office, and for the revoked part, Alibaba submitted multiple promotional agreements and marketing activities related evidence to prove that it was also in the "business management assistance; business information ”And other services used trademarks in dispute.
In court, the State Intellectual Property Office explained that the use of "business management assistance; business information" and other services refers to the business information services provided by industrial and commercial enterprises, and the evidence submitted by Alibaba is to promote to consumers , And no consideration was obtained from it, which was inconsistent with the requirements of the trademark category. The defendant decided to cancel the trademark registration of this part of the service should be maintained.
Neither case was sentenced in court.
Text / Our reporter Zhu Jianyong, intern Tian Yiming