(By You Yunting) According to the news, Alibaba Group, an Chinese e-commerce that provides consumer-to-consumer business-to-consumer and business-to-business sales services via web portals, has already obtained the registration of the trademark “双十一” (meaning “double 11”, actually the date of November 11th) (the “disputed trademark”) and authorized its affiliated Tmall.com to the exclusive use of the disputed trademark. Moreover, Alibaba delivered letters to various news media arguing that the JD.com’s use of “双十一” infringed the rights of its trademark. However, JD.com, one of the largest B2C online retailers in China by transaction volume, replied that the date of “November 11th” has already became a shopping day for all retailers and Alibaba’s registration on the “双十一” is accused of having the monopoly. Actually, Sunning Appliance, Gome and Amazon have suffered such impacts as well as JD.com.
Alibaba attempted using trademarks to protect its brands, which convinced me for its intellectual property consciousness from the bottom of my heart. Furthermore, Alibaba used its trademark as an effective weapon at the height of its campaign against JD.com before November 11th, which both took another swipe against its competitors as well as strengthened its marketing and promotion. However, in my opinion, considering that the disputed trademark is trapped in the meaning constraints, the subsequent competitions should be long lasting and perhaps it will lead to the disputed trademark invalidity, being a disposable weapon. The following is just my analysis.
- Why did Alibaba claim its rights after more than one year since it obtained the disputed trademark?
Upon my examination on the trademark office’s website, it is at the end of December 2012 that Alibaba has obtained the disputed trademark under Class 35 for advertising and sales promotion. And in consideration of three-month publication and trademark license printout, Alibaba should have obtained its disputed trademark license in April or May 2013. Where the disputed trademark could have been used to claim for its right as early as last year, why did Alibaba use the disputed trademark before the promotion for November 11th’s shopping day?
If I were in charge of trademark affairs in Alibaba, I would also take the claiming of rights into careful consideration. Pursuant to the Trademark Law, the following signs shall not be registered as trademarks: (1) names, devices or model numbers that are generic to a class or group of goods; (2) marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods on which the marks are used. These signs may be registered as a trademark where it has acquired distinctiveness through use and is readily distinguishable. In this case, the “双十一” is a name of sales promotion on November 11th. Therefore, the “双十一” is likely to consider as a name that is generic to sales promotion, or as a mark that indicates a date of sales promotion according to the preceding regulation.
If the trademark examiner, in charge of the “双十一” trademark application under Class 35, were familiar with the Internet, he may reject the application. Because the “双十一”mark should be in the public domain rather than an enterprise. As though the Alibaba would like to acquire the disputed trademark, Alibaba should have proved that the mark has acquired distinctiveness through use and is readily distinguishable before Alibaba obtained the disputed trademark. However, Alibaba effortlessly received the disputed trademark which is inadequate for trademark distinctiveness. In the use of the disputed trademark, Alibaba shall take into prudent consideration that if wrongly used, the disputed trademark may be not valid, messing up the sure thing.
- How could JD.com legally counter against the disputed trademark?
It is apparent that JD.com would prefer to the satiric method to encounter Alibaba’s monopolize use of the disputed trademark. Actually, JD.com may have lots of legal settlements to compete against Alibaba.
(1) Positive Settlement: Trademark invalidation proceeding can be filed with the Trademark Office.
Article 44 of the Trademark Law stipulates that other organizations or individuals may request that the Trademark Review and Adjudication Board make a ruling to cancel the registered trademark if the registration belongs to the mark that is generic to a class of goods or merely indicates the quality or other features of the goods. The Trademark Review and Adjudication Board may make a decision within 9-months of receiving the request. This also means, JD.com, if filed a request to the Trademark Review and Adjudication Board, may receive a preliminary decision. In the event that JD.com is dissatisfied with the decision made by the Trademark Review and Adjudication Board, JD.com may file an administrative proceeding. As for the invalidation request, however, Alibaba may claim as a defense that the descriptive “双十一” trademark mark where it acquires distinctiveness through its use and is readily distinguishable shall be protected.
(2) The JD.com may send a counterclaim of trademark non-infringement to news media.
Now that Alibaba has delivered letters on JD.com’s infringement to news media, JD.com could also inform news media of trademark non-infringement on the grounds that the “双十一” used by JD.com was to describe the sale promotion on November 11th constituting fair use. Beijing Higher People’s Court once regulated that the following three requirements are to constitute fair use: (i) using with good will; (ii) not using as a trademark for its goods; (3) using the mark to explain or describe its goods. Even though the JD.com’s use of the “双十一” mark met the aforesaid requirement of fair use, however, the problem is that it is the news media instead of the people’s court that received the letters from Alibaba. Considering that news media do not know whether JD.com constituted trademark infringement or not, how well JD.com’s counterclaim does affect depends on subsequent communication, which will test out the execution of Alibaba and JD.com.
(3) The JD.com may file an affirmative lawsuit for non-infringement.
JD.com may file a lawsuit to its local court, requesting that the court makes a ruling to affirm that JD.com’s use of the “双十一” trademark constitutes trademark non-infringement against Alibaba. If necessary, JD.com could apply for litigation injunction, requiring the court to prevent Alibaba from delivering letters against JD.com. Certainly, this would be a bit challenging. However, the trademark dispute between Alibaba and JD.com substantially reflects the market competition among Internet enterprises.
In closing, the dispute of the “双十一” trademark is a good example to popularize intellectual property laws. We hope that intellectual property officials in Alibaba and JD.com could make a full and fair competition, informing China and even the rest of the world about our own intellectual property appearance.