(By Luo Yanjie) The Taiwan-based Yilan Food Industry Co., Ltd. (“Yilan”) is a well-known food manufacturing company, and owns the registered trademark “旺旺” (read as “Wang Wang” in Chinese) in several classes. Alibaba (China) Co., Ltd. (“Alibaba”) is a renowned e-commerce company based in Mainland China; it owns and maintains a subsidiary that develops and promotes its instant messaging software called “淘宝旺旺” (read literally as “Tao Bao Wang Wang” in Chinese). When Alibaba attempted to register the trademark for its software application, Yilan immediately filed a protest against it. In today’s post, we will concentrate primarily on this case. The main issue surrounding the case is relatively simple: a trademark can be considered a type of rare “resource” for its owner to make use of, and if in this case the trademark “旺旺” is already owned and registered by another entity, does it seem reasonable that a subsequent registrant simply attaches the prefix “淘宝” to it to avoid inevitable issues surrounding confusion as a result of the similarity of the two?

Introduction to the Case:

Yilan filed an application for the trademark “旺旺” in Class 9, including computer software and hardware, in October 2004. Subsequently, Alibaba applied for the registration of its mark “淘宝旺旺 and image” (“disputed trademark”) in the same class in May 2006. Within the opposition period, Yilan filed its complaints against Alibaba’s application with the Trademark Review and Adjudication Board (“Board”), on the basis that the disputed trademark looked substantially similar to its own trademark, which had attained a great degree of notoriety through its use, and that its trademark “旺旺” was well-known in the food industry. For the above reasons, Yilan contended that protection for its mark should extend across all classes. However, the Board rejected Yilan’s opposition, and in response Yilan brought a lawsuit against Alibaba in the Beijing No. 1 Intermediate People’s Court on December 28, 2011.

The case was heard in two instances, with Alibaba eventually emerging the victor. The court first explained that, despite the disputed trademark containing the reference trademark “旺旺” in its entirety, it cannot be ignored that the mark “淘宝” is solely related to Alibaba; furthermore, the court stated that “旺旺” is simply a repeat of “旺”, a common term in regular use, which is on its face far less distinctive than that of “淘宝”. Therefore, the court held, when the relevant public sees the disputed mark, they would first notice “淘宝”, and would not likely establish a connection with the trademark “旺旺” owned by Yilan. Based on these findings, the court ruled that the disputed mark did not constitute a substantially similar trademark in similar or identical classes with the reference trademark.

In addition, Yilan failed to provide sufficient evidence to prove the reputation of its reference trademark through long-term use before the application date of the disputed trademark, which, if met, could allow It to constitute a well known trademark. However, because of this lack of evidence, its request to have the court determine the reference trademark to be a well-known one, enjoying protection across several classes, was ultimately rejected by the court.

Finally, as for Yilan’s claim that the disputed trademark’s application would damage its previously registered trademark, the court determined that Yilan provided inadequate evidence to prove it had utilized a similar or identical trademark name in relation to the disputed trademark. In addition, the court determined that Yilan did not prove with substantial evidence that its mark had accumulated sufficient influence in Mainland China such that it would be granted cross-class protection. Keeping these facts in mind, the court rejected Yilan’s trademark infringement claims. As a result, the court sustained the Board’s decision.

Lawyer Comments:

The case hearing can be seen as concentrating on three main points:

1. In regard to the question of similar trademarks

The core problem in this case is that the marks “旺旺” and “淘宝旺旺” could not coexist with each other in class 0901. As provided for in Article 28 of the Trademark Law:

“Where a trademark the registration of which has been applied for is not in conformity with the relevant provisions of this Law, or it is identical with or similar to the trademark of another person that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application and shall not publish the said trademark. ”

The term “similar trademarks” refers to those appearing to be similar with respect to their literal meaning, pronunciation, visual combinations of shapes and colors, or even the overall similarity of the marks in determining similarity as a result of a combination of the above elements. All of these factors may cause the public to misunderstand the origin of a branded product or assume an association between the two products that does not actually exist. In determining whether “淘宝旺旺” is similar to “旺旺”, the key inquiry in the court’s judgment is determining which part or element the public pays the most attention to, in this case being “淘宝” or “旺旺”. As described in the court’s decision, due to the mark “淘宝” being linked solely to Alibaba, the public would likely associate any branded product as being Alibaba’s product, and therefore the two trademarks were not considered similar for the purposes of determining trademark infringement.

In the author’s opinion, if Yilan were an IT company, and also manufactured computer software and hardware products, the court would be far more likely to find confusion among the relevant public over the marks “淘宝旺旺” and “旺旺”. Perhaps unfortunately for Yilan, it is a food company, and for this reason the court determined there would not be confusion found in Class 9.

2. On the question of well-known trademarks

Yilan also registered the trademark “旺旺” in food classes, and its well-known trademark claim within that class of goods is certainly supported by fact. Regardless, to determine a mark as being well known requires a high standard of proof. That being said, any evidence submitted to support such a determination should concentrate on an established reputation within Mainland China, especially so if the trademark holder wishes its mark to be granted cross-class protection. In this case, claiming cross-class protection may not have been one of Yilan’s main points, and it is possible that the court denied its claim that its mark was a well-known mark in Mainland China due to this.

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