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Guidelines for Appealing Against Trademark Infringement Complaints

 

This article divides into four parts and will provide guidance to business on how to file an appeal for trademark infringement complaints:

I. What is a trademark

II. Consequences of trademark infringement

III. How to search the complainant's registered trademark

IV. How to prepare appeal material and raise an appeal

I. Basic knowledge - What is trademark

A trademark is a recognizable sign that identifies a product or service of a particular source from those of others, so that the product or service is clearly associated with the provider, and carries the goodwill of the product or service provider. A phrase, word, graphic, number, 3D symbol, color combination or sound could be considered as a trademark and eligible for registration. Without permission from the trademark owner, the use of a trademark which is identical with or similar to a registered trademark of others on a product or service (including the product or information page) which is likely to cause confusion among consumers would be constituted as trademark infringement.

Similar trademark: Similar trademark refers to a situation where two trademarks are similar in shape, pronunciation, connotation, color or graphic composition, or in overall composition upon the combination of these elements.

Types of trademarks: Trademarks commonly seen on the Platform are classified as follows:

1) Trademarks and service marks: As the name implies, a trademark is a mark that appears on a product to identify the source of the product, while a service mark is a mark that appears on a service, such as shipping services.

   a. Trademarks

   b. Service marks

2)   2D trademarks and 3D trademarks: Trademarks could be further divided as 2D and 3D trademarks based on their shapes. For example, a 3D trademark registered in the United States could be the shape of the product itself or the packaging in which it is sold. A 3D service mark could be, for example, the interior design of a restaurant, the exterior design of a retail establishment or the point-of-sale display, such as a costume used by the service provider or in connection with the services.

a. 3D trademark (A 3D trademark is the appearance of the whole or part of a product. The part shown in dotted lines is not a part of the mark.) 

b. 2D trademark (consisting of words, letters, numbers, colors, or graphic designs to identify the source of a product)

Trademark infringement: As defined under the Trademark Law of the People's Republic of China, trademark infringement refers to the use of a trademark which is identical with a registered trademark on the same or similar products without the consent of the trademark owner, or unauthorized use of a trademark which is similar to a registered trademark on the same or similar products which is likely to cause confusion among consumers. Such behavior is prohibited on the Platform. If you use a mark which is identical with or similar to a registered trademark of others on the same or similar product, you may face a complaint or even punished by the Platform.

II. Consequences of trademark infringement and related rules

Please note that any intellectual property right violations are prohibited on the Platform.

When you received a complaint that your product infringes the complainant's exclusive right of its registered trademark,

if you are a seller on Alibaba.com, please refer:

https://rule.alibaba.com/rule/detail/11000393.htm?spm=a271m.8038972.0.0.1de86d82myvghT

Types of Infringements

1Serious violations: Unauthorized use of a trademark which is identical with or similar to a registered trademark on the same type of products (and use as a trademark in other ways). Your violations will be recorded by the Platform. When the number of violations reach a certain threshold, your account will be closed.

2) General violation: Improper use of a registered trademark without the permission of the trademark owner. Platform will provide a warning for first-time violation. For subsequent violations, you will be imposed point penalty based on the severity of the violations. When the penalty points reach a certain threshold, your account will be closed.

In case of any product violation and infringing act, the Platform has the right to impose punishments, including but not limited to: (1) deleting products/information; (2) restricting the listings of products; (3) temporarily freezing the account; and (4) closing the account. For sellers whose accounts are closed, the Platform has the right to prevent them from signing up again.

Please note that if you believe you did not infringe any trademark and want to appeal: 

For Alibaba.com, please raise the appeal at: https://appeal.alibaba.com/complaint/seller/appeal.htm

III. How to search the complainant's registered trademark

1)Download directly: Access the Appeal page sent by the Platform, go to Intellectual property Attachment - Download Attachment, and download the complainant's trademark registration certificate:

2)Search online:

China: Search the website of the Trademark Office of China National Intellectual Property Administration by inserting the registration number: http://sbj.cnipa.gov.cn/sbcx/ 

United States: Search the website of the United States Patent and Trademark Office: https://www.uspto.gov/trademarks/search

 EU: Search the website of the European Union Intellectual Property: https://euipo.europa.eu/ohimportal/trade-marks

IV. How to file an appeal if you received a complaint of infringement of a registered trademark? What material should you prepare?

If you received a trademark infringement complaint, you can file an appeal in different ways including but not limited to the following ways:

 

Formal proof of purchase

purchased from the complainant/trademark owner

If the product is purchased from the complainant/trademark owneryou need to provide

1)documents (such as contract or invoice, or purchase orders or receipts for overseas sellers)about the transaction made in

2)recent six months before the complaint or within a reasonable period,

3)The contract or invoice must be signed or sealed by two parties,

4)and the purchased quantity must be appropriate (more than 20 pcs except for special cases).

5)the information of the purchased product must be consistent with that of the alleged product (for example, product model and pictures).

Do not use the invoice of any other product in support of the appeal, which will result in a waste of appeal opportunities.

authorized by the trademark owner to use the trademark

If you are authorized by the trademark owner to use the trademark. You need to provide

1) the authorization letter from the trademark owner.

2) The authorization letter must be sealed or signed by the trademark owner and

3)specify the authorized trademark/brand.

4)Make sure that the trademark authorization is still valid when the complaint is filed.

purchased from an authorized supplier of the trademark owner

 

If the alleged product is purchased from an authorized supplier of the trademark owner, please provide

1)the sales authorization letter showing that your supplier obtained the product from the trademark owner.

2)The authorization letter must be signed or sealed by the trademark owner.

3)Same as direct procurement, you also need to provide the documents (invoice or contract) about the transaction made

4) in recent six months before the complaint.

5)The transaction documents must be signed or sealed by two parties,

6)and the purchased quantity should be appropriate or consistent with the actual quantity sold. The products shipped from your supplier should be no more than the supplier has purchased.

7)Ensure that the information of the purchased product is consistent with that of the alleged product (for example, product model and pictures). 

authorized by an authorized supplier of the trademark owner

If you are authorized by an authorized supplier of the trademark owner (e.g., I am authorized by B, and B is authorized by A, so I also have the authorization). To assert that you have an indirect authorization, please provide

1)the sales authorization letter from a third-party dealer and

2)the sales authorization letter that the third-party dealer obtained from the trademark owner.

3)The authorization letter must be signed or sealed by the trademark owner.

Please make sure that the seal is legible and the authorization is authentic.

4) Please make sure that all authorizations are valid when the complaint is filed.

IPR owned by seller

IPR owned by seller

 

If you have already registered the trademark, you can use it to defend the complaint, but you need to provide both the front and back sides of the trademark registration certificate sealed/signed by the China National Intellectual Property Administration or a foreign trademark authority. Make sure the trademark used on the alleged product is consistent with and covers the same scope of product/service categories as your registered trademark.

Fair use

Non-trademark use

 

Non-trademark use is the use of a trademark which is a general term in the industry or is recognized by the relevant authority as a reasonable description of a product, and that you cannot avoid mentioning the trademark when you describe your product. For example, corn, wheat, and other words that represent the types of the product. You can provide the following material for verification to the Platform:

 1) Decisions or rulings issued by government agencies, including but not limited to market regulators or judiciary authorities, which confirm that the use of the trademark is classified as non-trademark use.

 2)  Verdicts on national or industry standards issued by related agencies. For example, "chrysotile asbestos" in a National Standard of the People's Republic of China: Chrysotile Asbestos (GB/T 8071-2008). The use of such words in a reasonable description of a certain product category does not constitute as trademark infringement if there is no misrepresentation or improper use.

3)  Professional reference books, dictionaries and books which include the product name in the glossary, related history literature, ancient books, annals or local chronicles, and pharmacopeia. You can list the explanations of the trademark words in the authoritative Xinhua Dictionary, English dictionary, or historical classics.

4)  Papers, books, or publicity materials dated earlier than the trademark application date, which proves the trademark was a common word at that time. You should provide at least two such books or papers dated earlier than the trademark application date to prove the trademark is a reasonable expression or common term in the industry. Please note that if the complainant's trademark was registered abroad, you need to provide evidentiary material

such as books or papers from overseas to enhance the strength of the evidence. We recommend you to provide more than two books or papers describing the complainant's trademark as a term with a particular meaning.

Prior trademark use

In some cases, if you have already used the mark as a trademark on a product or in publicity material before the complainant applied for trademark registration, you could rely on prior use. Prior use defense varies across countries and is subject to stringent requirements. Therefore, the appeal is evaluated on a case-by-case basis. 

Generally speaking, if you want to rely on prior use as a defense to an infringement complaint of a trademark registered in China, you need to fulfill the following requirements:

prior use in good faith; the trademark user shall have used the trademark before the trademark owner applied for trademark registration; the two parties use identical or similar trademarks on the same or similar products; there is substantial influence of the earlier trademark; the prior user continues using the trademark within the original scope of use. Specifically speaking, you can provide the following materials:

1 If you rely on defense of prior online sale, please provide complete and legible screenshots of inquiries on the Platforms of Alibaba Group or the order number, and ensure the product information is consistent with that of the alleged product (such as product pictures and model) and the transaction time is earlier than the trademark application date.

2)If you rely on defense of prior offline sale, please provide the purchase contract and invoice signed or sealed by the two parties, and ensure that the product information is consistent with that of the alleged product (such as product pictures and model) and the transaction time is earlier than the trademark application date.

3)Other prior use scenarios. 

The Platform will evaluate the case after receiving your appeal material.

Outside the scope of the trademark protection (trademark classification)

You can also assert that the product category you sell falls outside the scope of the trademark protection (as shown in the following figure). You can check the classification included in the trademark application in the Class section of the complainant's trademark registration certificate.

 To assert that the products you sell are outside the scope of the trademark protection, you need to specify the classification to which the alleged product belongs.

For example, you can specify that the complainant's registered trademark covers XX products of Class XX, while your product belongs to Class XX.

Outside the scope of the trademark protection (trademark differences)

If you believe that the trademark used on the alleged product is not identical with or similar to the complainant's trademark and is unlikely to confuse consumers, please specify it in your appeal. Please circle the specific differences and compare the two trademarks in text, and provide clear descriptions of the differences.

Trademarks are compared in pronunciation, shape, connotation, and overall visual appearance. Subtle differences are not enough to prove that two trademarks are not identical or similar.
 

For example

 

Other 

Malicious trademark registration application

Basis: Article 32 of the Trademark Law of the People's Republic of China: The trademark application shall neither infringe upon another party's prior existing rights, nor be an improper means to register a trademark that is already in use by another party and enjoys substantial influence.

You can file a complaint that the complainant infringes your prior use right with evidence. The Platform will handle the case as appropriate. 

Notes:

1) The asserted prior use right should be owned by yourself.

2) The trademark involved must be consistent with the asserted prior use right. For example, to assert that the trademark owner has registered a trademark using your prior work and complained that your work infringed his/her registered trademark, you need to ensure that your work is identical to the registered trademark. 

 

 

 

 

 

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