[China Intellectual Property News] Fake "Didi" Convicted ofInfringement

February23, 2019   China Intellectual Property News   Page 8

Journalist: Feng Fei    Correspondent: Chen Yingying

　　Recently, Shanghai Intellectual PropertyCourt (hereinafter referred to as SIPC) concluded a case of dispute over trademark infringement and unfair competition between the plaintiffs Beijing Xiaoju Technology Co., Ltd. (hereinafter referred to as Xiaoju) & Beijing Didi Infinity Technology Development Co., Ltd. (hereinafter referred to as Didi) and the defendants Didi Removal Service (Shanghai) Co., Ltd. (hereinafter referred to as Didi Removal) & Shanghai Jiuye Removal Co., Ltd. (hereinafter referred to as Jiuye Removal). As the first-instance court, SIPC ruled that the defendants Didi Removal and Jiuye Removal should immediately stop trademark infringement and unfair competition, change the corporate name, stop using the domain name "didibc.com," and jointly pay the plaintiffs RMB 600,000 yuanas compensation for their economic loss and reasonable expenses.

"Didi" Cracks down on Counterfeit

Didi and Xiaoju alleged that they were the exclusive owners of the right to use the registered trademark “Didi,” which had already won a high level of public awareness after extensive use and continuous vigorous promotion. However, they found that Didi Removal took the liberty of using the logos "Didi" and "Didi Removal" on its corporate website and vehicles, registering and using a corporate name containing the word "Didi," and highlighting "Didi" and "Didi Removal" on its corporate website as its corporate name, without their permission. Didi Removal had also registered the domain name “didibc.com” and conducted related services through the domain name.

The two plaintiffs requested the court to determine that the trademark “Didi” had already constituted an unregistered well-known trademark in the transportation and travel service industry before being approved for registration. They held that the two defendants used the alleged infringing logos in the services the same with or similar to those of the plaintiffs’ that fell into the scope of their unregistered well-known trademark, before the plaintiffs' “Didi” trademark was approved for registration, which constituted a malicious copy and imitation of the plaintiffs’ unregistered well-known trademark. They also held that the two defendants used the alleged infringing logos the same with or highly similar to the plaintiffs’ trademark or unregistered well-known trademark in the same or similar services, and registered and highlighted a corporate name containing the word "Didi," and also registered and used a domain name containing the word "Didi." All these behaviors were considered by the plaintiffs to have constituted trademark infringement and unfair competition. So the plaintiffs requested the court to rule that the two defendants should immediately stop their behaviors of trademark infringement and unfair competition, and that Didi Removal should immediately stop operating the "didibc.com" domain name, transfer the domain name to either of the two plaintiffs, and publish a statement in newspapers to eliminate the bad impact, and that the two defendants should jointly pay the two plaintiffs RMB 600,000 yuanas compensation for their economic loss and reasonable expenses.

The defendant Didi Removal argued that the plaintiffs and the defendants operated in different business fields, had different logo marks, used different ways to combine the words, and Didi Removal was not included in the search results of Baidu. Didi Removal also argued that it hadn't committed unfair competition as its corporate name Didi Removal had been registered upon the approval of the administrative authority for industry and commerce, and it hadn't highlighted its corporate name, either. Another argument of Didi Removal was that it was justified to use the domain name involved as the domain name and the corporate name corresponded to each other in terms of Chinese pinyin system.

The defendant Jiuye argued that the two defendants hadn't committed joint infringement as they operated independently, kept separate accounts and distributed profits separately.

Didi Knockoff Convicted of Infringement

　　After hearing the case,SIPC held that, according to the relevant evidence in the case, although the "Didi" trademark hadn't been registered when the corporate name of the defendant Didi Removal was registered upon approval, it had already been quite popular with the public and gained a good reputation in the nationwide transportation and travel service industry,so the trademark met the law-required conditions for the recognition of well-known trademarks, and should be recognized as an unregistered well-known trademark.

　　Concerning the defendant Didi Removal's behaviors of registering and using a corporate name containing the word "Didi," an unregistered well-known trademark, and using the corporate name on its website, SIPC held that, the defendants had a subjective intention of hitchhiking and their behaviors would lead the relevant public to believe that the defendants were related to the plaintiffs or that the two sides were affiliated companies, thus misleading the public; and that the defendants' behaviors had constituted unfair competition against the two plaintiffs as they had violated the principle of good faith and the recognized business ethics, and had damaged the legitimate rights and interests of the two plaintiffs.

As for the alleged infringing domain name “didibc.com,” the main part of it was the transliteration of the unregistered well-known trademark “Didi." SIPC held that, although the corporate name of the defendant Didi Removal contained the word "Didi," the defendant was not justified to register and use the word, so its registration and use of the domain name involved didn't have the basis for civil rights and interests. Therefore, the defendant Didi Removal’s registration of the domain name and use of the website for e-commerce constituted trademark infringement. Also, the registration and use of the domain name showed the defendant’s subjective malicious intention of attaching itself to the goodwill of "Didi" in order to obtain interests by improper competition, so its registration and use of the domain name constituted unfair competition, too. Moreover, the defendant Didi Removal had used the words “Didi” and “Didi Removal” on its website and removal vehicles. The former word was the same as the involved “Didi” trademark, while the latter was similar to it. They might leadthe relevant public to be confused about the sources of service. This behavior had constituted an infringement on the rights of the trademark“Didi" involved.

SIPC decided to uphold the full amount of compensation claimed by the two plaintiffs after a comprehensive consideration of the nature, duration, scope and consequences of the two defendants' acts of infringement, and the subjective intention of the two defendants, the facts that proved the involved "Didi" trademark had already constituted an unregistered well-known trademark before its registration, as well as the trademark's public popularityand reputation after its registration.

As of the release of this news, the court has not received an appeal.

Don't Name Your Company Improperly

After the ruling was pronounced, Judge Yang Wei of SIPC said that of the key of the case lied in determining whether the involved trademark “Didi” was an unregistered well-known trademark when the defendant Didi Removal's corporate name was registered upon approval.

　　Yang Wei said, the relevant evidence provided by the two plaintiffs could prove that, Didi taxis had already been widely known by passengers and drivers nationwide before November 2015, and the "Didi" trademark had won a good reputation and a high level of public popularity. Moreover, the two plaintiffs and their affiliated companies had invested a lot of money and time in promotingthe "Didi" trademark in a wide area, making it well-known and highly acclaimed in the nationwide transportation and travel service industry. So the trademark met the conditions for the recognition of well-known trademarks required by the Trademark Act and the related interpretations, and should be recognized as an unregistered well-known trademark. Although the "Didi" trademark hadn't been registered when the defendant Didi Removal registered its corporate name, it had already become an unregistered well-known trademark in the transportation and travel service industry. The defendant Didi Removal's use of the word "Didi" in its corporate name might mislead the public.Didi Removal violated the principle of good faith and the recognized business ethics, and committed unfair competition.