(By You Yunting) In China, there are two apps similar with Uber, i,e, Didi Taxi and Kuaidi Taxi. According to news reports, recently, a Hangzhou-based company wondered that Didi Taxi (English-transliterated from Chinese“嘀嘀打车”), a popular taxi booking apps in China, has infringed the exclusive right to its trademark under Class 9. (note: the link is in Chinese). But the operating company of Didi Taxi has no response. After our preliminary research, we found that legal risks of Didi Taxi (“Didi” for short) encompasses far more than such trademark infringement, because Didi operating company has yet applied for its trademark under its involved services under different classification. Furthermore, it also exposes the universal trademark protection problems in the era of mobile internet, in which we will discuss in today’s post.
1. Trademark conflicts under different classifications in the era of mobile internet
Online to Offline (the “O2O”) refers, a characteristic of mobile internet, to attracting users online and directing them to physical stores in the offline realm. Many mobile apps are always providing O2O goods and services with various trademarks applying for different classifications. As such, in the event that one apps only applies for a trademark under a classification, it is easy to be at higher risks. Recently, there are two disputes:
(1) The Tencent’s WeiYun Trademark Dispute. A Shanghai-based company instituted a lawsuit against Tencent, alleging that Tencent’s WeiYun, a Tencent Cloud storage mobile app, infringed its trademark under Class 42. However, actually, Tencent has already applied for the “”WeiYun” trademark under Class 9.
(2) the “115网盘” Trademark Dispute. A Handan-based company filed a complaint against Guangdong 115 Technology Co., Ltd (the “115 Company”), alleging that 115 Company infringed its “115” trademark under Class 9. However, actually, 115 Company holds “115” trademark under Class 42. (We were lawyers in handling complaints with Appstore, Google Play Store and other app markets in “115网盘” trademark dispute.)
2. Didi should apply for trademarks in accordance with its services provided.
It is the courts that judge the rights and wrongs of this case. This post is designed to address about how enterprises evade trademark risks. As a trademark lawyer, I think, an enterprise should apply for trademarks under different classifications in accordance with its goods or services provided. For example, Didi provides at least the following services:
(1) Map Service: Users could see the surrounding maps;
(2) Application program: Didi is a downloadable application program;
(3) Intermediate Brokerage: For drivers and customers, Didi is just an intermediary which may involve brokerage.
(4) Radio function: Customers’ demands are broadcasting through Didi to drivers nearby.
(5) Message sending of reservation and affirmation;
(6) Reservation function;
(7) Application updates.
3. Trademark classifications that Didi involves
Upon our research on the trademark database of the Chinese Trademark Office, Didi operating company has filed applications both for “滴滴” trademark and “嘀嘀” under Class 9. On the positive side, Didi has also applied for its euphony words “滴滴” as a trademark. However, the biggest question of their application is that it has not yet applied for a trademark under most of its functions. Didi’s major competitor Kuaidi Taxi has applied for “Kuaidi” trademark respectively under Class 9, Class 38 and Class 42, inadequate for all services that the apps involves. We have also noted that Uber being used in China has not yet applied for trademark with the Chinese Trademark Office. According to the 2014 version of the Chinese Goods and Services Classification, we think Didi must involve at least the following six classifications for trademarks, not necessarily accurate but basically associated:
|9||0901||Computer programmes recorded, Computer operating programs recorded, Electronic publications (downloadable), Computer programs (downloadable software)|
|38||3801||Broadcasting, Radio broadcasting|
|3802||Message sending, Electronic bulletin board services (telecommunications services), Communication (telephone shopping)|
|39||3901||Brokerage (transport-), information (transport-), Transport reservation|
|3911||Travel reservation, booking of seats for travel|
|42||4220||Computer software (updating of -), Rental of computer software, Maintenance of computer software|
|4221||Map publishing service|
4. How to handle down with some previous applications or registrations under some certain classification?
We have mentioned several classifications and theoretically the Didi operating company shall apply for the trademark under all classification. However, in practice, one would note that some good trademarks have been applied for or registered under various classifications. In the event that I encountered such problem, I would suggest my clients as follows.
(1) Focus on core classification. Even though there are various classifications for a trademark, they also separate core-classification and non-core classification in function. As such, focus on whether the core classification has been applied or registered;
(2). Focus on other approaches to acquire the trademark. Even though there are previous applications or registrations, other approaches to acquire the trademark will be taken. For example, purchase the previous registered trademark. Pay attention to whether previous applications or registrations contain all sub-classes, because we always find that the identical trademark can be registered on different sub-classes. Instituting a removal proceeding against the previous trademark, which had not even been used for over three years in China, and at the same time filing an application will be also a good choice, but applicant shall be careful for the coming a legal risk filed by the trademark holder.
(3) Attention to the risk evaluation. Although there are previous applications or registrations, it is a question whether the trademark holder will institute a lawsuit. In fact, many companies that hold trademarks may not institute an action regarding trademark infringement unless falling into the same operating field or industry. As such, the probability of being prosecuted is low.
A good trademark is very important to an enterprise and thus is likely that some enterprises would take risks to utilize the registered trademark. However, preparations in advance will be the right suggestion. Enterprises will firstly do an evaluation through a professional IRP agency, and then make a preplan for final decision making. Taking a blind risk is not a wise choice. For taxi apps companies that grow in the stage of increasingly development, a suggestion shall be reminded that pay attention to your trademark enforcement and risk prevention, not always boost cash rebates to customers.