JD.com's "Double Eleven" trademark invalidity administrative dispute goes to court
The annual "online shopping spree" - "Double Eleven" - has come to an end. Beijing JD 360 e-commerce Co., Ltd. (hereinafter referred to as JD.com), sued the National Intellectual Property Administration to court for its registered five "Double Eleven" series trademarks.
On the afternoon of November 14, 2019, the Beijing Intellectual Property Court held a public hearing on the case. Alibaba Group Holding Limited (hereinafter referred to as Alibaba) participated in the lawsuit as a third party.
The court found that the trademarks involved in this dispute were the No. 15566477, No. 15566498, and No. 15566606 "Double 11. Double 11 and design" trademarks, the No. 13543909 "JD Double Eleven" trademark, and the No. 15566750 "Double 11. Double 11 on JD.com and design" trademarks (hereinafter referred to as the disputed series trademarks) applied for registration by JD.com, and approved for use in Class 35 "Advertising, online advertising on computer networks"; Class 38 "Television broadcasting"; Class 41 "Education" and other services.
Disputed series trademarks
On July 26, 2017, the third party, Alibaba, filed a request for invalidation of the above-mentioned disputed series trademarks. After review, the original State Administration for Industry and Commerce Trademark Review and Adjudication Committee held that the disputed series trademarks constituted similar trademarks on similar services with Alibaba's prior registered trademarks such as "Double Eleven", "Double Eleven Carnival", and "Double 11", violating Article 30 of the Trademark Law of the People's Republic of China (hereinafter referred to as the Trademark Law). Accordingly, it ruled that the disputed series trademarks should be declared invalid or declared invalid on some services.
Cited trademarks
JD.com was dissatisfied with the above ruling and filed an administrative lawsuit with the court within the statutory time limit.
The points of contention in this case are summarized as follows:
1. Do the plaintiff JD.com's disputed series trademarks such as "Double 11. Double 11 and design", "JD Double Eleven", and "Double 11. Double 11 on JD.com and design" constitute similar trademarks on identical or similar services with the defendant Alibaba's prior cited trademarks such as "Double Eleven", "Double Eleven Carnival", and "Double 11"?
2. Based on whether "Double Eleven" has distinctiveness as a trademark and whether Alibaba's prior "Double Eleven" series trademarks have notoriety, will JD.com's disputed series trademarks and Alibaba's prior cited trademarks cause confusion or misidentification among the relevant public?
"Double 11" and "Double Eleven" are both common names for the annual November 11 commercial promotion event, and lack the distinctiveness required of a trademark when used as a trademark on the services involved.
The services for which the disputed series trademarks are approved for use are identical or similar to the cited trademarks in terms of service methods, purposes, and target audiences, and belong to the same or similar services.
Although the disputed series trademarks have undergone some design, they are still easily identifiable as "Double 11". The cited trademarks are all the words "Double 11" and "Double Eleven", so the disputed series trademarks and the cited trademarks are similar in word composition and pronunciation. The relevant public, with ordinary attention, easily considers the above trademarks to be a series of trademarks.
The defendant, the National Intellectual Property Administration, argued that:
The services for which the disputed series trademarks are approved for use are identical or similar to the cited trademarks in terms of service methods, purposes, and target audiences, and belong to the same or similar services.
Although the disputed series trademarks have undergone some design, they are still easily identifiable as "Double 11". The cited trademarks are all the words "Double 11" and "Double Eleven", so the disputed series trademarks and the cited trademarks are similar in word composition and pronunciation. The relevant public, with ordinary attention, easily considers the above trademarks to be a series of trademarks.
If the disputed series trademarks and the cited trademarks coexist on the same or similar services, it is easy for the relevant public to believe that the disputed trademarks and the two cited trademarks' services originate from the same market entity or have some connection, thus causing confusion about the source of the services, which constitutes similar trademarks used on the same or similar services as referred to in Article 30 of the Trademark Law.
The appealed ruling is clear in its findings of fact, correct in its application of the law, and lawful in its procedure. It requests the court to dismiss the plaintiff's lawsuit and order the plaintiff to bear the litigation costs of this case.
The third party, Alibaba, believes that:
"Double Eleven" is a mark independently created and first used as a trademark by the third party. Through years of continuous publicity and use, before the application for registration of the disputed series trademarks, it has already established a de facto unique correspondence with the third party. The third party's "Double Eleven" trademark has the distinctive characteristics required by the Trademark Law, and the third party has legally registered and enjoys exclusive rights to the trademark, which should be protected by the Trademark Law.
The disputed series trademarks constitute similar trademarks used on identical or similar services with the third party's prior cited trademarks.
The plaintiff illegally uses the "Double Eleven" mark in its actual business operations, leading consumers to mistakenly believe that it is associated with the third party's "Double Eleven" brand. This behavior infringes on the third party's exclusive rights to its registered trademark, violates the principle of fairness and good faith, and disrupts the normal market order.
There is a long-term and intense competitive relationship between the plaintiff and the third party. The existence of the disputed series trademarks will greatly damage the high notoriety that the third party's "Double Eleven" brand has gained through substantial investment, causing confusion and misidentification among the relevant public, and seriously damaging the market order and the third party's good reputation. Subjectively, there is a clear intention of "free-riding".
In summary, the third party believes that the facts found in the appealed ruling are clear, the law applied is correct, and requests that the court dismiss the plaintiff's lawsuit.
The case was not pronounced in court and is still under further trial.
