The case lodged by I Lan Foods Industrial Co., Ltd (I Lan) challenging the Trademark Review and Adjudication Board (TRAB) under the State Administration for Industry and Commerce was rejected by Beijing No.1 Intermediate People's Court on December 11. The court ruled in favor of Taobao, China's largest internet retail platform run by Alibaba, over the trademark dispute case.
The plaintiff claimed that I Lan has owned over 2,100 registered trademarks in China's mainland, 417 of which relate to the Chinese character "旺". Taobao filed "淘宝旺旺" and its figures for registered trademark and acquired the registration approved by TRAB in 2004. I Lan maintained that "淘宝旺旺" and its figures were similar with their registered trademark "旺旺" and used in the same service which would mislead the public and injure its trade name right. Then I Lan requested the TRAB to revoke the registration of the trademark.
The court held that the trademark "淘宝旺旺" was not similar with I Lan's registered trademark "旺旺". Although the trademark in question includes the registered trademark "旺旺", Taobao and Alibaba have enjoyed high reputations in the public and there is an exclusive corresponding between Taobao and Alibaba. As a common expression, "旺旺" has lower distinctiveness than that of Taobao. Public would not be led to believe there is a certain association between "淘宝旺旺" and the plaintiff's registered trademark "旺旺". The court rejected the appeal and sustained the TRAB's original judgment. The disgruntled I Lan then made clear that it would continue its appeal.
The battle for the trademarks dated back to five years ago when Alibaba's another trademark "阿里旺旺" acquired the registration in Taiwan in 2007. In 2009, I Lan challenged the trademark on the ground of similarity with their registered trademark "旺旺" and sought rejection of registration. Then the trademark "阿里旺旺" was revoked in Taiwan.
The two trademarks owned by Alibaba had different judgements attributed to the different jurisdictions between Taiwan and the mainland. The word "淘宝" constituted the main part of "淘宝旺旺". In that case, when the public saw the trademark "淘宝旺旺", the first thought brought to mind was Taobao's website. The key point to define the trademark infringement was whether the trademark in question caused the confusion in the public or not. To judge trademark infringement was to judge misidentification. From the perspective of the purpose of legislation, no trademark should be revoked as long as it did not mislead the public, as some experts noted.
(China IP News)2013-07-17