Law & Practice

CHINA: ‘618 CARNIVAL’ Trademark Invalidated

Published: October 6, 2021

Hongxin Wang

Hongxin Wang NTD Patent & Trademark Agency Ltd. Beijing, China INTA Bulletins Committee—China Bulletin Subcommittee

Verifier

Xitong Chen

Xitong Chen Jiaquan IP Law Guangzhou, China

The number “618” is widely associated in China with June 18, the date of the largest mid-year shopping event in China. Beijing Jingdong 360 Degree E-commence Co., Ltd. (JD.com) began the June 18 annual shopping promotion in 2004, but since then, the event has grown exponentially and was adopted by all major e-commerce platforms in China.

JD.com registered a trademark in China for “618 CARNIVAL” (618狂欢节) (Registration numbers 15554856 and 20334031) (the disputed trademark) on December 7, 2015, and August 7, 2017, respectively. The mark covers two different descriptions of services in Class 35 for sales promotions, marketing, and personnel consultancy, etc.

On May 15, 2019, an individual, Zhao Hanlei, filed an invalidation action against the disputed trademark with the China National Intellectual Property Administration (CNIPA), on the following grounds:

  • “618” is not only a combination of numbers but a generic term used widely in promotional and sale activities on and around June 18;
  • The disputed trademark has become a generic name used in retail, e-commerce, and logistics, so lacks distinctiveness;
  • The use of the disputed trademark in relation to the services in Class 35 causes confusion among relevant consumers;
  • The use and registration of the disputed trademark runs against public order and social customs.

On May 12, 2020, CNIPA decided that the invalidation requests were not justified and that the two registrations should be retained.

Ms. Zhao appealed before the Beijing IP Court which, on July 8, 2020, held that the disputed trademark is descriptive and lacks distinctiveness. In addition, the court agreed that the use of the disputed trademark is likely to cause confusion among consumers. Accordingly, it was held that CNIPA’s decision should be canceled.

On April 6, 2021, JD.com, together with CNIPA, appealed the decision with the Beijing Higher Court. It upheld the judgment of the Beijing IP Court and made a final judgment on June 29, 2021, with the following findings:

  • As there is no carnival in China on June 18, use of the disputed trademark in the approved services could mislead consumers into thinking that content and quality of services are related to a carnival, and the trademark is therefore deceptive;
  • The use of the disputed trademark in the services of marketing and sales promotion is easy to lead the relevant consumer into thinking that it is a descriptive or publicity slogan for promotional activity and lacks distinctiveness.

The case is noteworthy since the disputed mark, as used by JD.com in China for a few years, has not only been canceled but can longer be used in the Chinese market as it is deemed deceptive.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2021 International Trademark Association

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