[2] Well-known trademarks are no joke; unauthorized use of their popularity comes with consequences

[2] Compiled from: Red Star News, IP Beijing
 
Case review
[3] The brand DiDi Chuxing is household name. Xiaoju Company and DiDi Company are successive owners of the registered trademark "滴滴" (No. 14229622) for Class 39 services including "passenger transport; passenger carriage; traffic information; taxi transport."

 
A company offering golf, combat sports, and other training services not only made extensive use of the "DiDi Golf Butler" logo in its promotions but also changed its corporate name to Beijing DiDi Golf Butler Technology Development Co., Ltd. (referred to as DiDi Golf Company). As a result, the owner of the "DiDi" trademark filed a lawsuit against DiDi Golf Company in court.
 
The defendant Didi Dache Company, without authorization, extensively used logos such as "Didi Dache Manager" containing the text "Didi" and "DiDi" in its mobile application, WeChat official account, website, and company decorations, and provided services including reservation of venues for golf, combat sports, and karting, reservation of coaching courses and teaching appointments, cultural and sports training, and organization of sports events.
 
On March 31, 2016, the defendant changed its enterprise name from “Beijing Haochen Yirong Information Consulting Services Co., Ltd.” to “Beijing Didi Golf Butler Technology Development Co., Ltd.”
 
The two plaintiff companies claimed that Didi Dache Company’s alleged conduct infringed upon the lawful rights and interests of the well-known trademark No. 14229622 “Didi”. They therefore filed a lawsuit with the Beijing Intellectual Property Court, requesting an order for the defendant to cease the infringement, cease using the enterprise name containing “Didi,” and pay 3 million yuan in damages.
 
 
Relevant legal provisions
Trademark Law of the People's Republic of China
Article 13
For a trademark well known to the relevant public, if the holder believes that its rights are being infringed, it may request protection as a well-known trademark in accordance with the provisions of this Law. Where a trademark applied for registration for identical or similar goods is a reproduction, imitation, or translation of another person's well-known trademark not registered in China and is likely to cause confusion, it shall not be registered and its use shall be prohibited. Where a trademark applied for registration for dissimilar goods is a reproduction, imitation, or translation of another person's well-known trademark already registered in China, and is likely to mislead the public, thereby potentially harming the interests of the registrant of the well-known trademark, it shall not be registered and its use shall be prohibited.
 
Article 14
A well-known trademark shall, upon the request of the party concerned, be recognized as a fact that needs to be ascertained in handling trademark-related cases. To recognize a well-known trademark, the following factors shall be taken into consideration: (1) the degree of knowledge of the trademark among the relevant public; (2) the duration of use of the trademark; (3) the duration, extent, and geographical scope of any publicity work for the trademark; (4) the record of the trademark being protected as a well-known trademark; (5) other factors contributing to the trademark’s well-known status. During the trademark registration review or the investigation and handling of trademark violations by the administrative department for industry and commerce, if a party concerned asserts rights in accordance with Article 13 of this Law, the Trademark Office may, as needed for reviewing or handling the case, make a determination as to whether the trademark is well-known. During trademark dispute proceedings, if a party concerned asserts rights in accordance with Article 13 of this Law, the Trademark Review and Adjudication Board may, as needed for handling the case, make a determination as to whether the trademark is well-known. During the trial of civil or administrative trademark cases, if a party concerned asserts rights in accordance with Article 13 of this Law, a people’s court designated by the Supreme People’s Court may, as needed for trying the case, make a determination as to whether the trademark is well-known. Producers and operators shall not use the words “well-known trademark” on goods, packaging or containers of goods, or in advertising, exhibitions, and other commercial activities.

 
 

 
[1] Court Opinion
After comprehensively considering evidence such as the duration of publicity and use of the "Didi" trademark under registration No. 14229622, the geographical scope of its influence, the degree of knowledge among the relevant public, and records of recognition as a well-known trademark, the Beijing Intellectual Property Court determined that the trademark had reached a well-known status at the time of the alleged acts, constituting a registered well-known trademark. The defendant's prominent use of identifiers containing "Didi" or "DiDi" on its website, public accounts, employee business cards, etc., as a whole constituted a reproduction, imitation, or translation of the well-known "Didi" trademark, easily leading the relevant public to mistakenly believe that the above services were provided by the plaintiff, the owner of the "Didi" trademark, or that there was a specific relationship such as a licensing arrangement or affiliated enterprise, falling under the circumstance of "misleading the public, potentially harming the interests of the registrant of the well-known trademark," and infringing upon the plaintiff's exclusive right to use the registered "Didi" trademark.
 
The Beijing Intellectual Property Court further held that, with full knowledge of the reputation of the trademark "Didi" at issue, the defendant changed its corporate name from "Beijing Haochen Yirong Information Consulting Services Co., Ltd." to "Beijing Didi Golf Butler Technology Development Co., Ltd." and used it in commercial activities. Its subjective malice in free-riding on the reputation of the "Didi" brand was evident, in violation of the principle of good faith and recognized business ethics, and thus constituted unfair competition.
 
Ultimately, the Beijing Intellectual Property Court ordered the defendant to cease the trademark infringement, stop using the company name containing the word "Didi," and pay compensation for economic losses and reasonable expenses totaling 700,000 yuan. Neither party appealed, and the judgment has taken effect.
 
 
[1] The author's perspective
In the author's view, given the prominence and influence of well-known trademarks, they are highly likely to embody substantial commercial value. Some unscrupulous enterprises, seeking to ride the “tailwind” of the commercial value of well-known trademarks, use such trademarks as their trade names. This conduct not only violates the principle of good faith, harms the market interests of the trademark owner, and disrupts normal market order, but may even constitute an act of unfair competition.
 
It can be seen that the Trademark Law contains not only extensive administrative authorization and confirmation provisions but also infringement protection provisions, making it a law with both public and private law characteristics, reflecting both the protection of civil rights and the emphasis on maintaining social public order. The needs and functions of well-known trademarks in these two aspects undoubtedly exceed those of ordinary registered trademarks. Therefore, special protection and cautious recognition of well-known trademarks complement each other, ultimately aimed at better safeguarding the enormous economic value carried by well-known trademarks.