8 June 2021
Case Spotlight
Tiktok was Identified as a Well-known Trade Mark and Awarded Compensation of RMB 500,000
“抖音”被认定为驰名商标并获赔50万元
Date: 2021-05-18
The Jiangsu Higher People's Court recently issued its judgement on the trade mark and unfair competition infringement dispute between Bytedance and Beijing Microlive Vision Technology Co., Ltd. (“Microlive Vision”) v. Zhoukou Yida Food Co., Ltd. (“Yida Food”) and Gusu District Daxiaobai Snack Store (“Daxiaobai Snack Store”).
ByteDance has the exclusive right to use the trade mark “Douyin” and “
”, and its original short video sharing platform “Tik Tok” has a high reputation in both domestic and overseas markets. Microlive Vision has been authorized by ByteDance to obtain the exclusive right to use the trade mark "Douyin" in Mainland China and to defend its rights. Both ByteDance and Microlive Vision discovered that the "Love Douyin Crispy Noodles" produced by Yida Food and sold by Daxiaobai Snack Store uses the "Love Douyin" and “” logos in the outer packaging of the product, along with Douyin user nicknames, promotional images, popular song lyrics, and other elements closely related to “Douyin”. Bytedance and Microlive Vision filed a lawsuit with the Suzhou Intermediate Court claiming that the acts of Yida Food and Daxiaobai Snack Store constituted as trade mark infringement of the “Douyin” trade mark and unfair competition.
In its first instance, the Suzhou Intermediate Court held that although the registration of the "Tik Tok" trade mark for well-known trade mark protection was filed late, the Internet industry in which the "Tik Tok" trade mark is located in has the characteristics of rapid information dissemination. In the mobile Internet era, the fragmentation of users’ time, the maturity of smartphone software and hardware technology, and the form of short video dissemination of information caters to the needs of young people to highlight their personality and gain attention, which objectively promotes the rapid and large-scale spread and diffusion of short videos in the current mobile Internet era. These features have accelerated the spread and proliferation of the trade marks involved, allowing them to accumulate a high market reputation in a relatively short period of time. Therefore, although the time of registration is relatively late, it still has the factual basis for being recognized as a well-known trade mark. In the end, the court made a judgment on the basis of determining that the "Douyin" trade mark involved was a well-known trade mark, and determined that Yida Food should pay RMB 500,000 in compensation for the infringement.
After the judgment of the first instance, Yida Food and Daxiaobai Snack Store appealed to the Jiangsu Higher People's Court, but later withdrew the appeal on the grounds that the two parties reached a settlement.
Source: https://mp.weixin.qq.com/s/o7TF9Fd4xX8ZhirQJ3ga3w
Arbitration is also the preferred method of dispute resolution for cases involving China because foreign judgments are not enforceable there. While the Chinese courts are an option – and despite the substantial improvement in the Chinese IP litigation system – many parties prefer to arbitrate dispute rather than litigate.
The COVID-19 pandemic has seen intense cooperation efforts in the pharmaceutical and life sciences areas as well as significant leaps in the development and use of technology, all of which may in the longer term lead to disputes over the scope and terms of the cooperation agreements and rights to inventions and other developments.
Rouse’s Global Head of Dispute Resolution, Doug Clark, will talk about how he sees the future of IP dispute resolution in Asia, focussing on China, as well as the various options for arbitration IP disputes in Asia. In doing so he will discuss key issues that have arisen in recent arbitration disputes he has handled both as an arbitrator and as counsel.
