(By You Yunting) Tudou.com (NASDAQ:TUDO) are connected with trademarks in different kinds of services relating entertainments under Class 41. However, Tudou.com failed to apply for its website name as a trademark by virtue of previous similar trademark. Tudou.com is focusing on providing services of video-sharing and video on-demand, but we found out its major services cannot be applied for trademark protection. Therefore, how to deal with this trademark application puts forward higher requests for trademark lawyers. In today’s post, we will introduce this case and discuss the comments in the following.
Introduction to the Case:
Appellant (Plaintiff at the first instance): Shanghai TuDou Network Technology Co., Ltd (the “Tudo.com”)
Respondent (Defendant at the first instance): Trademark Review and Adjudication Board (the “TRAB”)
Court of first instance: Beijing No.1 Intermediate People’s Court No.: (2011)一中知行初字第2507号
Court of second instance: Beijing Higher People’s Court No.: (2012)高行终字第571号
On April 9, 2007, Tudou.com filed an trademark application for “土豆 TOODOU” numbered 5987416 (the “disputed trademark”) under Class 41 for bookmobile services, arranging and conducting of conferences, providing on-line electronic publications (not downloadable), movie showing, digital imaging services, videotape editing, and providing on-online games.
On January 28, 2010, Chinese Trademark Office (the “CTMO”) made a refusal that all applied services of Tudou.com, except for bookmobile services, were rejected to apply for trademark registration, on the grounds that the disputed trademark constituted similar trademark with “小土豆英语 Small Potatoes English” (the “reference trademark”). Tudou.com who is dissatisfied with the refusal applied for a review with the TRAB. On June 8, 2011, the TRAB made a decision that the disputed trademark for all reviewable services must be unapproved resulting in rejecting its trademark application.
Dissatisfied with the TRAB’s decision, Tudou.com brought the case to the court. The court accepted the case and held that “土豆” was the major cognitive section in both the disputed trademark and the reference trademark. Considering the Chinese name plays an important role in trademark cognition, the popularity and awareness of a trademark was considered as one of factors, rather than the unique factor, in deciding whether the disputed trademark was similar with the reference trademark. For these reasons, the court of first instance affirmed the TRAB’s decision, holding that the disputed trademark was similar with the reference trademark.
Tudou.com refused to accept the ruling of the first instance and then appealed. Even though both the disputed trademark and the reference trademark contained the Chinese characters “土豆”, the two trademarks have different meanings with different features and thus are unlikely to cause confusion among consumers. As such, Tudou.com claimed that the two trademarks are not considered as similar trademarks. Furthermore, the disputed trademark, where it had acquired distinctiveness through use and promotion, formed a corresponding relationship with Tudou.com under Class 41 for the specified services, thus the disputed trademark is unlikely to lead consumers into false thinking that they are associated with each other and cause confusion.
The second instance decided that the two focuses of this case are as follows: the first is whether the disputed trademark was similar with the reference trademark and the other problem is whether the disputed trademark with high popularity and awareness is enough to acquire the distinctiveness as regulated in the Trademark Law.
Firstly, in the reference trademark, “英语English” lacked of trademark distinctiveness in the use of educational services and thus the major cognitive part is the “小土豆 Small Potatoes. Both the disputed trademark and the reference trademark are word mark and the “土豆” is the major cognitive part in both trademarks. Considering the Chinese name plays an important role in trademark recognition, the disputed trademark constituted similar trademark with the reference trademark.
Then, as Tudou.com claimed that the disputed trademark had acquired high distinctiveness, unlikely to cause confusion among consumers, Tudou.com decided that the disputed trademark did not violate Article 28 as regulated in the Trademark Law and，on this sense, shall be approved to be registered. However, in accordance with the evidences, Tudou.com used its trademark as a website name and thus had acquired popularity and awareness from its website name in the services for website operation. As such, the popularity and awareness of “Tudou.com” in the services for website operators is unlikely to obtain the distinctiveness of the specific services applied by the disputed trademark.
Therefore, the court second instance affirmed the original judgement and TRAB’s decision, on the grounds that the facts are clearly ascertained and the laws and regulations are correctly applied in the original judgment and TRAB’s decision.
Tudou.com shall have known the conflict with the previous trademark before its application. As such, Tudou.com may take the possible strategy in which they claimed for the distinctiveness through the use and tried to obtain the approval of the disputed trademark through the review of TRAB after the disputed trademark was rejected.
However, the two points in the judgment of both the first instance and the second instance made the failure of Tudou.com’s application. The first point is that the popularity and awareness of the disputed trademark was one of the factors to decide trademark application, not the unique factor. The second point is that Tudou.com provided services for website operation. In my opinion, I disagreed with the second point, because this description does not fully match up with the services provided by Tudou.com.
The service of Tudou.com which focused on website operation was too broad. Actually, the content of the website operation may consist of various services because almost every off-line service would become an online service through website operation. As such, every specific services of any website shall be determined on the basis of the actual situation.
Actually, Tudou.com provided the following two services: the first is to share and upload videos which can be providing video on-demand, similar to that of YouTube; the second is to broadcast online movies, similar with that of Hulu. Considering that such two services are relatively new, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the Chinese Goods and Services Classification has yet not included the two services.
With regard to such two services, the similar services are contained in Class 38 for television broadcasting and cable television broadcasting and in Class 41 for television entertainment and movie showing as well as online games. So in that sense, the services of Tudou.com should be similar to that of Class 38 and Class 41. However, actually Tudou.com has obtained great popularity and awareness in the two services. Thus its distinctiveness of the disputed trademark must be likely to distinguish from the reference trademark for educational services.
At last, there are numerous emerging network services in the Internet era. However, Chinese Goods and Services Classification does not always keep paces with protection for the emerging network services. For instance, as we previously introduced, cloud computing and tablet computer are newly added under protection in the Chinese Goods and Services Classification at the early this year, which deserves protection. At this moment, it puts forward higher requests for the judges and trademark lawyers. A trademark lawyer must provide explanations upon the nature of the applicable goods and services in order to help the courts clearly understanding the protection scope and better applying accurate laws.