On the afternoon of November 29, Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (QBPC) Luxury Goods IWG held the third offline IP salon in 2022. IWG coordinator Miller Wang (MCM) moderated the event, and Peter Chong from LV made opening remarks. Lawyer James Luo from Beijing Roger Law firm was invited to make a presentation. 19 representatives from 10 member companies attended the event.
First of all, James Luo elaborated on the protection of trade name rights. Article 6 of the Anti-unfair Competition Law stipulated that "a business operator shall not commit the acts of confusion such as using an influential trade name of others without authorization to mislead a person into believing that he has a particular connection with another person." He cited Louis Vuitton MALLETIER vs. Nantong Louis Vuitton Ecological Textiles Co., Ltd. for trade name infringement and Swedish Electrolux Co., Ltd. vs. Qingdao Electrolux Electric Appliance Co., Ltd. for trade name infringement, in both which he was the authorized agent. He pointed out that the plaintiff should consider the following four issues in preparing for the litigation. The first was the right basis of right holder and the scope of protection. The second was the subjective aspect of the defendant's unauthorized use of the trade name. The third was confusion, misunderstanding and specific connections while the last was about coexistence.
In terms of the first issue, the plaintiff had to provide evidence to prove the level of international and domestic popularity and influence of the trade name, e.g. whether it was of general popularity and influence, or high popularity and influence, or even extreme high popularity and influence. The degree of popularity and influence was related to the scope of judicial protection; In respect of unauthorized use of others’ tradename, the plaintiff only needed to prove that the defendant "knows or should know" instead of having subjective "knowledge". The consensus of judicial decisions was to adopt the principle of presumption. The facts for consideration might include maliciously clinging to the plaintiff's goodwill, bad-faith registration of the plaintiff's trademark, copying the plaintiff's product line, seizing the plaintiff's customers and market trading opportunities, and so on. When examining whether an act constituted an unfair competition behavior, the existence of actual confusion was not a necessary constitutive element. If there was a possibility of confusing, there existed a damage, which could definitely become the basis for the right holders to claim the existence of unfair competition. Of course, a market research report on actual confusion could help to prove the existence of confusion. About whether both trade names of the defendant and the plaintiff could coexist, it did not meet the premise of coexistence due to the illegal nature of the defendant’s acts of trademark registration. To achieve market scale and brand reputation by violating the principle of good faith could not be the factual basis for coexistence.
After that, QBPC Internet Committee (IC) Vice Chair Esther Dong briefly introduced the recent offline communication between members of IWG and Douyin e-commerce. The participants discussed the IP protection of Douyin e-commerce, including the penalty imposed by Douyin e-commerce platform on infringing merchants and the need for a unified window for brand licensing verification. In response to the issue of platform responsibility, QBPC IC will hold an Internet Brand Protection Lecture Theatre in December, to which well-known scholars, platforms and lawyers would be invited to discuss platform responsibility.
The participants also brainstormed on various topics, including personal information protection and the problem of the transmission of information abroad, public education and public evaluation mechanism, appraisal qualifications of third-party organizations and The Opinions on Strengthening the Convergence of Intellectual Property Identification Work, active prevention/control cases on online platforms and challenges, The Opinions on Further Standardizing Fees for Lawyer Services as well as the joint action plan of IWGs in 2023. The participants spoke freely, interacted actively and gained a lot from this event.
At the end of the meeting, Miller Wang once again thanked the speakers and delegates, and looked forward to the next event of the IWG.