On July 28, Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (QBPC) held a seminar on legal practice related to trade name and trademark conflict with Alibaba Anti-Counterfeiting Alliance ("AACA") in Shanghai. QBPC Chair Michael Ding, Legal Committee Chair Michael Yu, Vice Chair Chen Xi and nearly 40 QBPC members attended this seminar.
In his opening remarks, Michael looked forward to enhancing cooperation with AACA in order to jointly fight against counterfeiting and infringement, and make efforts to optimize the business environment for intellectual property rights. The seminar was divided into three sessions. The first topic was the administrative and judicial approaches to solve the conflict between trade name and trademark. Michael Yu presided over the session.
The first speaker was Lin Yu from Intellectual Property Protection Division of Guangzhou Market Supervision and Administration Bureau. He went through the laws and regulations including the Trademark law, Provisions on the Recognition and Protection of Well-known Trademarks, Trademark Infringement Judgment Standard and Interpretations of the Supreme People's Court on some Issues concerning the Application of the Law to the Trial of Civil Trademark Disputes (amended in 2020) for the participants, and explained the manifestation of the conflict between the trademark right and the trade name right through specific cases. Mr. Lin specifically mentioned that it was critical to understand the core of the two laws when the two rights were in conflict, based on which the right holders could decide whether to apply the Trademark Law or the Unfair Competition Law. Then, he introduced the ways and practices of safeguarding trademark rights, including seeking administrative protection such as administrative punishment, administrative ruling, administrative mediation and administrative guidance. The right holders could also report or make complains on such administrative punishment. Lin also introduced the general principles and related practices of Guangzhou Database of Forbidden and Restricted Words in handling the conflicts between trademark right and trade name right. He also talked about how well-known trademarks could be included in the database.
The second speaker was Judge Cheng Wenjuan of the Yuhang District People's Court in Hangzhou. In the first part of her speech, Judge Cheng mentioned the legal basis of prominent and non-prominent use in the conflict between the later registered trade name and the earlier trademark. Furthermore she analyzed the trial path through specific cases concerning Article 57 and 58 of the Trademark Lawand Article 6 of the Anti-Unfair Competition Law. In case of the conflict between the inferior trademark and the previously registered trade name, Judge Cheng not only reviewed the legal basis, but also expounded the elements that should be considered when judging whether the contested trademark infringed on the prior trade name. She also advised how the right holders should protect their rights. In the third part of the later registered trade name and the first registered trade name conflict, she went through some typical and instructive cases to help attendees better understand the legal basis of prominent and non-prominent use. Finally, she reminded the right holders of the legal risks, e.g. the registered trade name should be chosen with caution, the imitation of others’ well-known trademark or trade name should be avoided, the trade name should be used properly after registration and simplification or non-prominent use should be avoided, etc. In preparation for the lawsuit, the right holders should focus on collecting evidence of trade name and brand recognition.
The second topic of the seminar was to share the best practice in resolving the conflicts between trade names and trademarks. Patent and Innovation Committee Vice Chair Frank Liu and Legal Committee Vice Chair Chen Xi explained to the participants the strategies to handle related problems. Vicky Wang, Deputy Director of Brand Cooperation for Platform Governance of Alibaba, moderated the discussion.
Frank Liu went through the background and status quo of the trade name attached to the famous brand. According to his analysis, infringement patterns tended to be complex, cross-border and hidden. He also pointed out that the negative impact of copycat enterprises should not be underestimated since it not only caused great damage to the brand of right holder, but also imposed a huge cost on right protection. Therefore, Frank discussed countermeasures, including lawsuits, administrative complaints and warning letters. At the end of his presentation, he made suggestion from the perspective of right owners. He hoped relevant authorities could abandon the traditional approach of "handling the case after obtaining enough evidence of production of fake goods" and be fully aware of the fact that free-riding on others’ well-known brands was by nature an act of tort. They should focus on the malice of infringer and, the possibility of confusion rather than actual damage. Furthermore the administrative law enforcement should be strengthened.
Chen Xi offered his ideas on how to handle the relevant cases, such as demanding the market Supervision Administration to ban it and filing civil lawsuits. Then, in terms of civil litigation, he analyzed the liability of the seller, legal representative and shareholder in details, and enumerated a large number of cases. Chen also distinguished unfair competition and trademark infringement from the perspective of the Trademark Infringement Judgment Standard and Interpretations of the Supreme People's Court on some Issues concerning the Application of the Law to the Trial of Civil Trademark Disputes, the Trademark Law and the Anti-Unfair Competition Law, saying that in most lawsuits against copycat trade names was grounded on unfair competition. In view of the amount of compensation and the methods of determining, Chen explained the analytic hierarchy process of tort compensation and the corresponding strategy for evidence collection.
The last topic of the seminar was the name of copycat enterprises under the new Internet business mode. Deputy director of Alibaba legal research center, Qiu Fuen talked about conflicts between trademarks and trade names that e-commerce platforms had encountered, including the trade name in conflict with others’ trademark was used for physical commodities or the description of goods, the trademark of others was used for shop signs, shop decoration or shop name. He also cited some cases as examples. Qiu said that there were several reasons for the conflict between trademarks and trade names, e.g. different understanding, contradiction between relevant laws, the multiple administrative management, and the delay in the connection between judicial judgment and administrative enforcement. Accordingly, he proposed some solutions, such as expanding the scope of trademark infringement and improving the management system of trade name registration.
The last speaker was Dr. Zhong Kang from DJL. He mainly discussed the systematic solution to the problem of copycat trade name. According to him, such problems could be solved mainly through administrative and judicial means, namely, complaints to the market supervision authority or civil proceedings. Then, with case study, he shared with the participants his thoughts on the systematic solutions, the basis of prior rights, the retrieval of nationwide registered enterprises information through keywords, the evaluation of peers and other infringement facts, enterprise renaming, reorganization and other historical changes. Based on the above points, he put forward a systematic method to deal with the problem of copycat trade name: in the early stage, through technical means, the right holder should periodically monitor and identify the infringer; in the interim, the treatment plan shall be formulated through manual review and further analysis; in the late stage, according to the civil litigation process, the IPR case management system + professional staffing should be adopted to complete the case litigation.
In the Q&A session, members asked questions about the administrative protection in the conflict between trademark right and trade name right, the approaches of judicial review, the difficulties and challenges faced by enterprises in anti-unfair competition, the hot and difficult issues in handling trade name cases, the name of copycat enterprise, and the conflict between trademarks and trade names on e-commerce platforms. The speakers made responses to the questions. The seminar was successfully concluded.