According to a recent media report, someone made a malicious complaint against Wechat public accounts, resulting in a large number of public accounts containing the word “beauty” closed by Tencent, perhaps because the word “beauty” has been registered as a trademark and such an owner filed a complaint on this matter. Afterwards L’Oreal appealed for recovering its public account of “YSL Saint Laurent Beauty”. As such an incident has been heated up via the Internet, Tencent recovered all the public accounts it previously closed. Now let me introduce you approaches to deal with a malicious complaint against a public account.
Option 1. Appeal directly
As stated by the report above, the public account of L’Oreal was recovered soon after the complaint. For the We-Media that publish or operate contents on a platform, consulting with the platform directly is obviously the most efficient way to deal with a trademark complaint. Then how to appeal in an appropriate way?
The easiest way to appeal is reporting to the platform that you did not infringe the alleged rights. Back to the “beauty” case, the complaint was based on the alleged infringement of the “beauty” trademark under Class 35. So, other users may defend on the reasons as follows, of which the first and second points are respectively based on Section 1 and Section 3 of Article 59 in Trademark Law.
1. Reasonable Use
The Wechat public accounts are actually used to sell products which could be categorized to “beauty”. The word “beauty” contained in its name obviously referred to the “beauty” products sold through such accounts, which constituted a reasonable use pursuant to the Trademark Law of the natural meaning of the word “beauty”. The trademark owner could not prohibit such use.
2. Prior Use and Influence
According to the Trademark Law, if a WeChat public account is registered before the trademark and has a good influence by its operation and publicity, the trademark owner cannot prohibit the public account operator from using the trademark within the original scope. (But in the above case, the trademark in dispute was registered in 2007, prior to such WeChat accounts).
3. Whether the Ways of Usage Fall into the Scope of Product-Protection and Service
The complainant’s trademark in the above case falls into the subclass 3503 of Class 35, for which the main protection scope covered promotional and marketing activities for other persons. If the public account in question is only used to publish articles about “beauty” products without selling cosmetics, the act of using the account would be deemed as provision the publication services under Class 41, not within the protection scope of the complainant’s trademark. If the product brand sold through the public account was exactly called “beauty”, which would be deemed as a registered trademark under class 3, still not within the protection scope of the complainant’s trademark, either.
In brief, appealing means arguing with the complainant through the platform in a reasonable way. The provision of services on a platform, if legal and reasonable, will be finally allowed even if temporarily prohibited by the platform at the complainant’s request. Complainants usually entrust a legal officer or lawyer to prepare and issue their complaints. Commonly, the public account operator may lack capability of defending itself, so they had better seek professional advice before taking any steps.
Option 2. Take an Action Confirming Non-Infringement
In many cases, the appeal to the platform ended in failure, which causing the public account finally being closed. If the platform does not close the public account or explicitly dismiss such complaints, the complainant will continue writing to the platform administrator until the account is closed, leaving the account operator extremely insecure. In such cases the public account operator can take a special action, i.e. non-infringement action.
The non-infringement action means a lawsuit filed to the court where the public account operator’s or the complainant located by claiming that the public account hasn’t infringed the complainant’s trademark. If the court decides in favor of the owner of public accounts, such accounts being previously closed will be recovered soon, and the unsettled complaints involving the platform will be closed simultaneously. All complaints involving platforms including WeChat public accounts can be dealt with in this way. Platform operators are very pleased to see the parties involved in a dispute sue to the court. If the platform’s attitude has an adverse effect on my client dealing with a complaint, I will advise the client to sue to the court in order to ease the crisis. In most cases, being informed that the court accepts the case, platforms will leave the complaints aside until the court makes its decisions.
Based on my practical experience, compared with Taobao, Baidu and other similar platforms, Tencent WeChat deals with infringement complaints against public accounts more quickly, fairly and professionally. However, I think, this time, the Tencent’s legal team handled with the “beauty” case without deliberate considerations, which although corrected promptly, still brought about a bad social effect. Tencent should take further action, such as giving the legal team more professional training and improving the complaint-handling procedures, to avoid re-occurrence of similar incidents.
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You Yunting：86-21-52134900 youyunting@debund.com/yytbest@gmail.com
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