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Guidelines for Appealing Against IPR Infringement Complaints

 

 

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

please raise the appeal at

Alibaba.comhttps://appeal.alibaba.com/complaint/seller/appeal.htm

For more detailed information,please refer:

Alibaba.com:https://rule.alibaba.com/rule/detail/11000407.htm

Trademark rights

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

授权来源于经权利人授权的供应商(A- B-您店铺)

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

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

2)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.

3) 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:

1If 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 highlight 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. 

copyright

Formal proof of purchase

purchased from the complainant/ copyright owner

If the product is purchased from the complainant/right owner, you 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 copyright owner

If you are authorized by the right owner to use the copyrighted work. 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 copyrighted work.

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

purchased from an authorized supplier of the copyright owner

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

1)the copyright authorization letter showing that your supplier obtained the product from the right owner.

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

If you are authorized by an authorized supplier of the right 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 copyright authorization letter from a third-party dealer and

2)the copyright authorization letter that the third-party dealer obtained from the right owner.

3)The copyright 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 and list specific works.

5) It is recommended to provide the right owner's identity document, such as photos of the business license or both the front and back sides of the ID card. 

Claim differences

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If you think your product is substantially different from the complainant's work, you can provide a comparison (as shown below), select "Substantial Difference" for the appeal type and submit the appeal.

Note: Please compare the alleged product and the complainant's copyrighted work, circle the specific differences, and provide a detailed description of the differences in text. There should be differences in overall visual effect between the alleged product and the complainant's copyrighted work. Subtle differences cannot be used as evidence under defense of Substantial Difference.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

prior rights

prior online sales

To assert prior art or prior use right, you can provide evidence dated earlier than the date when the complainant's copyrighted work was published.

If you rely on defense of prior online sales,

please provide:

1)  complete screenshots of inquiries on the Platforms of Alibaba Group or prior orders on Alibaba platforms, such as AliExpress, Alibaba.com, etc., and

2)ensure the product information is consistent with that of the alleged product (such as product pictures and model) and

3)the transaction made prior to the date when the complainant's copyrighted work was published.

 

 

 

 

 

 

 

 

 

Prior offline sales

If you rely on defense of prior offline sales, please provide:

1) the purchase contract and invoice which shall be

2) signed or sealed by the two parties, and ensure that

3) the product information is consistent with that of the alleged product (such as product pictures and model) and

4) the transaction made prior to the date when the complainant's copyrighted work was published.

IP Right has been previously exposed or disclosed to the public

 

If you rely on defense of prior public disclosure, for example, in video, new media, or print media, please provide

1) the complete screenshots of webpages including the URL or photographs or scans of other materials, and ensure that

2) the screenshots include the specific publication date, and

3) the pictures and designs displayed on the webpages are clear and complete.

For example:

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 Please note that:

The complainant may further assert that you had accessed the work prior to the date of publication of the copyrighted work, and you may need to further prove that the prior work was created prior to the date of creation of the copyrighted work.

IPR ownd by seller

/

If you assert a ‘IPR owned by seller’defense, please provide:

1)  relevant valid evidence of your prior use right (such as trademark, copyright, and design patent) and

2) such right should be you claimed should be owned by you and

3)the filing date of such right should be earlier than the [date when the complainant's copyrighted work was published] and

4) such right should remain valid at the time when you file the appeal, and

5)the prior use right that you claimed should be consistent with that used in the alleged product/work.

Meanwhile, if you want to assert a defense that the copyrighted work is independently created by yourself, you can upload materials including but not limited to source files, manuscripts, creation ideas, original images, and other materials that can prove the originality of your work for review by the Platform. To ensure a fair and reasonable result, please provide as detailed evidence as possible. 

patent

Formal proof of purchase

Direct procurement/authorization

1If you claim that the alleged product is purchased from the patentee, please provide documents about the transaction made in recent six months before the complaint, such as contract or invoice, or purchase orders or receipts for overseas sellers. The contract or invoice must be signed or sealed by the two parties, and the purchased quantity must be appropriate (more than 20 pcs). The product purchased must be consistent with the alleged product (for example, product model and pictures). Do not use the invoice of any other product, which will result in a waste of appeal opportunities.

2If you claim you have obtained a patent license from the patentee, please provide the patent licensing agreement or related proof, which must be signed or sealed by the two parties, and ensure that the license is still valid when the complaint is raised. The patent number involved in the licensing agreement must be consistent with that of the complainant's patent.

purchased from or authorized by an authorized supplier of the trademark owner

 

You need to provide relevant purchase documents issued by an agent (such as contract and invoice) and the agent's procurement document or authorization letter issued by the patentee.

The authorization letter must be signed or sealed by the patentee. Ensure the seal is legible, the authorization is authentic, and the procurement document and invoice are legible and traceable.

Claim difference

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If you believe that the overall appearance of your product is different from the complainant's design patent or your product does not fall under the patent’s protection scope, you can appeal based on the difference.

How to claim the differences?

Design patent infringement complaint — You can claim that the design of the alleged product is significantly different from the complainant's patented design.

Invention/utility model patent infringement complaint — You can claim that the alleged product does not contain any technical features identical or equivalent to those described in the claim of the patent, and therefore does not fall into the scope of protection of the patent. You need to provide a specific comparison description or comparison table.

Example: You can submit a comparison table and description similar to the following table to claim the differences, which must include: (1) the prior design (the design most similar to yours, if applicable); (2) the complainant's patent; and (3) your product involved, and explain why they are different. If you cannot find a prior design, you can only illustrate by providing the six-sided comparisons between the complainant’s patent and your product.  

 

 

 

 

 

 

 

Note: What if my appeal is not accepted even I have claimed differences? 

The appeal against a design patent infringement complaint requires overall visual comparisons. Partial , immaterial and differences in the material cannot be used as proof of non-infringement. Such subtle differences have no significant impact on the visual effects of the overall design of a product.

In the case of an invention/utility model patent infringement complaint, if your product contains one or more technical features identical or equivalent to those described in the claim of the patent, it may fall under the scope of protection of the patent.

Prior rights

prior order on Alibaba platforms or prior inquiry on alibaba.com

If you believe the complainant's patent has already been publicized, you can provide materials to prove that the alleged product has been sold before the complainant applied for a patent. If the complainant’s patent has a priority date, you need to provide materials to prove that the alleged product has been sold before the priority date of the patent.

The proof of prior use includes relevant public information that proves the complainant's patented technology or design (for example, prior sales order or that the product style, design, or plan was publicized) has been disclosed before the application date or the priority date of the patent (if any).

 

If you assert prior use based on online sales order, please provide the prior sales orders on any platform of Alibaba Group, such as Taobao, Tmall, and 1688.com (provide the order number and screenshot). The screenshot should contain the relevant order number, order time, and product information.

If you assert prior offline sales, please provide the sales documents dated earlier than the patent application date, including but not limited to, the sales contract (with product pictures), invoice, and shipment document.

Please note that the style, design, or plan of the product in the order must be complete and verifiable and the order/contract must be placed earlier than the "application date" of the complainant's patent, or earlier than the priority date of the complainant’s patent (if any).

IP Right has been previously exposed or disclosed to the public

For the proof of public disclosure on other platforms such as Weibo, major video sites, newspapers, magazines, and books (provide links and screenshot of related content), the platform will evaluate as appropriate.

For example: Mr. Zhang opened a Taobao store selling water guns and other toys. One day, he received a design patent infringement complaint. He found a prior video on a public video site. If he wants to raise an appeal with the proof of public disclosure, what should he do?

Answer: He needs to verify that the video was published earlier than the application date/priority date of the complainant's patent and the water gun shown in the video must be the same as the alleged product.

 

 

 

 

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