Who should the trademark of _Hong Kong Intellectual Property Exchange, Ltd.

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The annual "double 11" Shopping Festival is going on, but there are still disputes about the ownership of the "double 11" trademark. Beijing Jingdong three hundred and sixty degree e-commerce Co., Ltd. (hereinafter referred to as Jingdong company) holds that Alibaba Group Holding Co., Ltd. (hereinafter referred to as Ali group), the holder of the "double 11" trademark, has not actually used the trademark within three years, so it should be revoked. After reexamination, the State Intellectual Property Office (SIPO) held that the registration of the trademark involved in the case should be maintained in advertising and other services, but should be revoked in other services.

Ali group and Jingdong company both said they were not satisfied with the review decision of the State Intellectual Property Office, and the two companies sued respectively to the Beijing Intellectual Property Court. Yesterday afternoon, the two trademark administrative cases surrounding the "double 11" trademark were heard in Beijing Intellectual Property Court.

One trademark dispute, two companies sit in the plaintiff's seat

On November 1, 2011, Ali group applied for registration of the "double eleven" trademark on the service of category 35 advertising and was approved to register on December 28, 2012.

In 2018, JD Company believed that Ali group did not use the "double 11" trademark in the three years from November 2015 to November 2018, so it filed an application to the State Intellectual Property Office to cancel the trademark.

In May this year, the State Intellectual Property Office (SIPO) reexamined and reviewed that Ali group had truly and effectively used the "double 11" trademark in the services of "advertising, displaying goods on the communication media for retail purposes, and promoting sales for others", and the registration of trademarks on these services should be maintained. However, it was not used in many services such as "commercial management assistance and business information", so it was revoked Trademark registration for the rest of the services.

Both Jingdong company and Ali group were not satisfied with the review decision. Jingdong company was not satisfied with the part of the registration maintained, and Ali group was not satisfied with the part of the revoked registration. The two companies respectively filed a lawsuit with the Beijing Intellectual Property Court, requesting the court to order the State Intellectual Property office to make a decision again.

Yesterday afternoon, two cases were heard. Jingdong company and Ali group participated in the proceedings as the plaintiff in the two cases. The defendants in both cases were the State Intellectual Property Office.

Jingdong: "double 11" belongs to public language

The State Intellectual Property Office said that the review decision was made in response to the actual use of the trademark involved in the case raised by Jingdong company, and did not involve the dispute over the significance of the trademark. After examination, the trademark involved in the case was used within a specified period of time, so that the relevant public can know the time of promotion activities through the above-mentioned use, which plays the role of advertising and promotion. The decision of the accused is based on the law and should be maintained.

However, Jingdong company said that "double 11" is a habitual expression of the shopping festival on November 11 every year. Now it is not only used in the e-commerce field, such as education, aviation and other industries, but also used in the promotion activities of the shopping festival. The whole society participates in it. It should belong to the category of public language and should not fall into the scope of private monopoly.

At the same time, Jingdong company pointed out that Ali group used in combination with other trademarks when holding shopping festivals, such as the words "tmall double 11". The common usage in the society is to add the enterprise name or trademark before the "double 11" to distinguish the shopping promotion activities of different enterprises. In his opinion, the essence of this kind of use is to use the "tmall" trademark instead of the "double eleven" trademark.

In addition, the registered trademark is a "double eleven" in the form of full text. However, Ali group mostly uses "double 11", "11.11" and other forms in its use, which should not be regarded as the use of the trademark involved in the case. From 2015 to 2018, Ali group did not use the trademark involved in the case, so it should be revoked according to law.

Ali: I am the founder of "double 11"

Ali group claims that it is the founder of the "double 11" Shopping Festival. In 2009, Alibaba group applied the "double 11" in online promotion activities for the first time, and applied for trademark registration and was approved in 2011. During the promotion activities every year, Alibaba Group will apply the word "double eleven" to the products participating in the promotion activities in the aspects of advertising, business promotion agreement and shop decoration, so that consumers can distinguish service sources and identify promotional products.

As for the "double 11" trademark, Ali group said that it has continuously invested a lot of manpower, material resources and intellectual resources, and the annual promotion and marketing expenses are huge, which makes the shopping festival have such a great influence. As for the specific use form of the trademark, no matter the words or numbers, the call and meaning are not different. The company will use different ways to design in different scenes to reflect the aesthetic feeling and enhance the publicity effect.

Ali group agreed to maintain the trademark registration part of the review decision of the State Intellectual Property Office. For the cancelled part, Alibaba group submitted a number of promotion agreements and marketing activities related evidence to prove that it also used the trademark in the service of "business management assistance; business information".

The State Intellectual Property Office explained that the use of services such as "business management assistance; business information" refers to the business information services provided by industrial and commercial enterprises, while the evidence submitted by Ali group is to promote to consumers, and no consideration has been obtained from it. This is inconsistent with the requirements of trademark purposes. The sued decision to cancel the trademark registration of this part of services should be maintained 。

Neither case was adjudicated in court.

[warm tips] source: Beijing daily client, reporter: Liu Suya. The copyright belongs to the original author. If there is something wrong, please contact to inform us of modification or deletion. Thank you.

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