* This article is the English translation for Mr. Wang’s article in Chinese published on China Trademark magazine (Issue 6, 2012) and Trademark Communications magazine (Issue 5, 2012). China Trademarkmagazine is sponsored by China Trademark Association under supervision of the State Administration for Industry and Commerce (SAIC) overseeing the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB). Trademark Communications magazine is the internal magazine of the CTMO.

In April 2012, the Trademark Review and Adjudication Board (TRAB) announced the latest list of well-known trademarks recognized in China, including “Sina & design, Sina, SINA NET in Chinese,” and “SOHU in Chinese.” Up to date, around ten trademarks have been recognized as well-known in the Internet industry in China. This article is to comment and analyze the well-known trademarks in the Internet industry from two aspects: (1) Goods and services under the trademarks in the Internet industry, and (2) Evidence proving the fame of the trademarks in the Internet industry.

I. Brief Introduction to Well-known Trademarks in the Internet Industry

Currently, owners of trademarks recognizedas well-known in the Internet industry include not only foreign companies engaging in business globally, but also Chinese domestic companies focusing on business in China; those trademark owners include not only companies merely providing Internet services, but also companies covering both the Internet and traditional industries;the trademark disputes involved include cases before the Chinese Trademark Office (CTMO) for oppositions and administrative complaints for civil infringement, cases before the TRAB for opposition reviews and dispute cancellations as well as infringement lawsuits before the Court for civil infringement.

In April 2006, Shenzhen Luohu District Court recognized the trademarks “Penguin design” (Registration No. 1955912)and “QQ design” (Registration No. 1962825) owned by Tencent Technology (Shenzhen) Co., Ltd. as well-known for services of “Message sending; Communications by computer terminals; Telecommunications information” in Class 38 in the trademark civil infringement cases.[1] In April 2009, the CTMO recognized the trademark “QQ” owned by Tencent Technology (Shenzhen) Co., Ltd. as well-known for services of “Information transmission; Providing telecommunications and global computer network connection services; Computer terminal communication” in Class 38 in an administrative complaint for trademark civil infringement. [2] The trademarks “Penguin design” and “QQ design” were registered in November 2002 and February 2003 respectively. The trademark “QQ” (Registration No. 3508823) was registered in January 2005.

In September 2007, the CTMOrecognizedthe trademark “GOOGLE” owned by Google Inc. as well-knownfor services of “Providing customized search engines for others” in Class 42 in an administrative complaint for trademark civil infringement.[3]In April 2009, the CTMO recognized the trademark “GOOGLE” as well-known again for services of “Extraction and retrieval of information and data mining by means of global computer networks” in Class 42 in a trademark opposition case.[4]The trademark “GOOGLE” (Registration No. 1471705) was registered in November 2000.

In March 2008, the CTMO recognized the trademark “BAIDU in Chinese” owned by Baidu Online Network Technology (Beijing) Co., Ltd. as well-known for services of “Providing Internet search engine via computer information networks” in Class 42, and the trademark “CTRIP in Chinese & CTRIP” owned by Ctrip Computer Technology (Shanghai) Ltd. for services of “Providing tourist information via computer networks, travel arrangements” in Class 39 as well-known in an administrative complaint for trademark civil infringement.[5] The trademark “BAIDU in Chinese” (Registration No. 1579950) was registered in May 2001 and the trademark “CTRIP in Chinese & CTRIP”(Registration No. 1579950) was registered in January 2001.

In January 2010, the CTMO recognized the trademarks “YAHOO! in Chinese” and “YAHOO!” owned by Yahoo! Inc. as well-known for services of “Providing Internet search engines”in Class 42 and the trademark “51JOB in Chinese & design” owned by 51JOB Information Technology Co., Ltd. as well-known for services of “Posting employment advertising on global computer networks, newspapers, magazines; Posting personnel recruiting advertising on global computer network, newspapers, magazines” in Class 35 in a trademark opposition case.[6]The trademarks “YAHOO!” (Registration No. 1109289) and “YAHOO! in Chinese” (Registration No. 1327419) were registered in September 1997 and October 1999 respectively. From January 2010 to March 2012, the CTMO and the TRAB have recognized the trademarks “YAHOO! in Chinese” and “YAHOO!” as well-known in 26 trademark oppositions, opposition reviews, and dispute cancellations. The trademark “51JOB in Chinese & design” (RegistrationNo. 1639711) was registered in September 2001.

In November 2011, the CTMO recognized trademarks “SHANDA in Chinese” and “SHANDA” owned by Shanghai Shanda Networking Development Co., Ltd. as well-known for services of “Providing online game” in Class 41 in an administrative complaint for trademark civil infringement.[7]The trademarks “SHANDA in Chinese” (Registration No. 3231899) and “SHANDA” (Registration No. 3231898) were registered in September 2003 respectively.

In April 2012, the TRAB recognized the trademarks “Sina & design,” “Sina,” and “SINA NET in Chinese” owned by Beijing Sina Internet Information Service Co., Ltd. as well-known for services of “Providing advertisement information via computer information network; Advertisement publicity via computer information network; Advertisement broadcast via computer information network” in Class 35 in the trademark opposition reviews and dispute cancellations. In the meanwhile, the TRAB recognized the trademark “SOHU in Chinese” owned by Beijing Sohu Internet Information Service Co., Ltd. as well-known for services of “Message sending; Computer-aided information and image transmission” in C lass 38 in the trademark opposition reviews and dispute cancellations.[8]The trademarks “Sina & design” (registration No. 1459585), “Sina” (Registration No. 1463676) and “SINA NET in Chinese” (Registration No. 1463781) were registered in October 2000 respectively, and the trademark “SOHU in Chinese” (Registration No. 1445852) was registered in September 2000.

II. Items of Goods and Services under Well-known Trademarks in the Internet Industry

The trademark applications for goods and services in the Internet industry are different from traditional industry. The difference mainly lies in as follows: The CTMO Classification of Similar Goods / Services (CTMO Classification) based on the Nice Agreement is lagging behind the development of the Internet industry in reality, items of goods and services under the trademarks in the Internet industry are not accurate enough, and items for goods and services under the trademarks in the Internet industry are comprehensive.

1. The CTMO Classification is lagging behind the development of the Internet industry in reality

Although items of goods and services recognized as well-known for the trademarks “GOOGLE,” “BAIDU in Chinese,” “YAHOO! in Chinese” and “YAHOO!” were all essentially services of “Internet search engine” in Class 42, specific descriptions for items under each trademark are different from each other, and the above services recognized as well-known are somewhat different from those designated under the trademark registrations thereof. The trademark “GOOGLE” was recognized as well-known for services of “Providing customized search engines for others” and “Extraction and retrieval of information and data mining by means of global computer networks” in Class 42 in 2007 and 2009. The trademark “BAIDU in Chinese” was recognized as well-known for services of “Providing Internet search engine” in Class 42. While the trademarks “YAHOO! in Chinese” and “YAHOO!” were recognized as well-known for “Providing Internet search engines” in Class 42. In fact, the item of “Providing Internet search engine” have been newly added in Class 42 until the CTMO Classification (2007 version), while the application date of all the well-known trademarks above is prior to 2007. Therefore, the CTMO has made some appropriate interpretations on items of services recognized as well-known according to items of services designated under the above trademark registrations.

Moreover, many new products and services in the Internet industry cannot find corresponding descriptions for items in the CTMO Classification. For example, online hard drive storage, online album, and other Internet services are virtual storage on network provided for users for the storage of electronic data or documents; while the item of “Physical storage of electronic data or documents” in Class 39 listed in the CTMO Classification seems to be limited to physical storage. Another example, both Telecommunications Regulations and Category of Telecommunications Business enacted in as early as September 2000 have already prescribed that scope of value-added telecommunications business includes e-mail, voice mail, on-line information database storage and retrieval, electronic data exchange, data processing and online transaction processing, value-added fax, Internet access services, Internet information services, and video conferencing services, etc. However, the descriptions of partial business above failed to be timely adopted to the CTMO Classification. The CTMO Classification seems to lag behind the development of practice forever, and will never fully and timely meet the needs of practice.

For descriptions of items not listed in the CTMO Classification, Chinese domestic trademark applicants tend to select other standard descriptions listed in the CTMO Classification which are somewhat relevant as the replacement; While foreign trademark applicants tend to select descriptions of items which are more relevant and more accurate to the goods or services in actual use, although this practice usually leads to receiving one or more Notice of Correction as office action. In order to overcome the potential adverse effects of not having appropriate items listed in the CTMO Classification, it is recommended that Internet companies try to select descriptions of items which are more relevant and more accurate to the goods or services in actual use, in addition to selecting other standard descriptions listed in the CTMO Classification which are somewhat relevant. It is also recommended that Internet companies conduct a thorough research on the technical nature and legal nature of goods and services in the Internet industry, and refer to existing trademarks in the Internet industry, especially trademark applications and registrations filed by the foreign companies. In addition, Internet companies may, from time to time, consider filing new applications for the same mark, in order to cover the updated goods and services which is newly adopted by in the CTMO Classification.

2. Descriptions for goods and services under trademarks in the Internet industry are not accurate enough

Items recognized as well-known for the trademark “51JOB & design” fall under Subclass 3501 for “Advertising services.” In fact, however, Internet services corresponding to the traditional services like “Personnel recruitment; Employment agencies” in Subclass 3504 provide more accurate descriptions of the actual business. However, the above descriptions which are more accurate are not covered in the services designated under the trademark registration of “51JOB in Chinese.” It is the exact reason that the trademarks in Internet industry can hardly find the items of goods and services fully corresponding to its actual business during the trademark registration process. Accordingly, during the process of well-known trademark recognition, it can only be based on items of goods and services designated under the trademark registrations which are not accurate enough at the very beginning.

The items of services recognized as well-known for the trademarks “Sina & design,” “Sina,” and “SINA NET in Chinese” fall under Subclass 3501 for “Advertising services.” The trademark “SOHU in Chinese” was recognized as well-known for services of “Message sending; Computer-aided information and image transmission” in Class 38, which is same as “Instant messaging services” recognized for well-known for the trademarks “Penguin design,” “QQ design,” and “QQ.” However, as a general understanding, sites like Sina, Sohu, and Yahoo! fall under the scope of portal sites which provide Internet information services. It seems “Advertising services” of Subclass 3501 can hardly prescribe precisely the nature of actual business of the above portal sites. “Instant messaging services” in Class 38 can not reflect precisely the well-known services for the trademark “SOHU in Chinese” either. The services corresponding to the portal sites seem to be “Hosting computer sites (in Chinese language)” listed in the CTMO Classification (2002 version). This description was translated from the services of “Hosting computer sites” in Class 42 of the Nice Classification. However, after the CTMO Classification (2007 version) has amended the item of “Hosting computer sites” to read as “Entrusting computer sites [web sites]”, it seems difficult to find an appropriate description in the CTMO Classification. The reason is that both the item of “Entrusting computer sites [web sites]” and another item of “Creating and maintaining web sites for others” in Class 42 share the same nature, and both emphasize on providing technical services to others, and both are descriptions of B2B (business to business), C2C (customer to customer), B2C (business to customer) and other e-commerce sites.

3. Items of goods and services under trademarks in the Internet industry are comprehensive

All of the items recognized as well-known for the above trademarks are services, but it does not mean that trademarks in the Internet industry are limited to services. Actually, some trademarks in the Internet industry cover both goods and services. For example, instant messaging business covers not only the services of “Message sending; Communications via computer terminals” and other services in Class 38, but also goods of “Computer software (recorded); Computer programs [downloadable software]” and other goods in Class 9. Network dictionary business covers “Computer software services” in Class 42, as well as goods of “Electronic dictionary” in Class 9. Electronic publication business covers services of “Providing online electronic publications (not downloadable); Publication of electronic books and journals online” in Class 41, as well as goods of “Electronic publications (downloadable)” in Class 9. Online game business covers services of “Providing online game via the computer network” in Class 41, as well as goods of “Computer game programs” in Class 9.

In addition, some well-known trademarks in the Internet industry also cover multiple services in different Classes simultaneously. For example, social networking (Social Network Service, SNS) business is online social networking services, which integrate various functions like dating (“Dating services” in Class 45), chatting (“Message sending” in Class 38), information sharing (“Providing online electronic publications via the computer network” in Class 41), game (“Providing online games via the computer network” in Class 41). Another example, sites like Sina, Sohu, Yahoo!, also provide services like portal sites, e-mail, instant messaging, in addition to providing Internet search engine services in Class 42. It is not actually difficult for the portal site services to find the appropriate descriptions in the CTMO Classification. The fact is, portal services do not correspond to merely a single Class, but rather multiple Classes comprehensively. These services may include items in different Classes like “Providing entertainment information via the Internet” in Class 41, “Providing business information via the Internet” in Class 35, “Providing financial information via the Internet” in Class 36, and “Providing beauty information and/or dining information via the computer information network” in Class 42. It is the exact reason that goods and services designated under the trademarks in the Internet industry are comprehensive. Therefore, the trademark applications in the Internet industry should cover multiple key Classes of goods and services. The nature of the trademark in the Internet industry also determines that recognition of the well-known trademark in the Internet industry may probably involve more than one Class of goods and services.

III. Evidence Proving for the Fame of Trademarks in the Internet Industry

After obtaining a trademark registration in the Internet industry, which defines the boundary of trademark rights, the issues followed will include the enforcement of the trademark rights, request for well-known trademark recognition and evidence proving the fame of trademarks. The characteristic that the Internet industry differs from the traditional industry leads to the fact that evidence proving for fame of trademarks in the Internet Industry is different from that in the traditional industry.

First, there is an issue regarding emerging and rapid development in the Internet industry vs. long-term accumulation for fame of trademarks. In the traditional industry, fame of trademarks are usually formed and accumulated for a long period of time of several years or even generations. However, the Internet industry is emerging industry with short history, while the development is rapid. In the Internet industry, the situation is usually like this: Shortly after one Internet company has created a miracle and record, another Internet company will break the old record and create the new miracle. The issue is whether a trademark in the Internet industry as emerging industry may achieve the well-known status within a short period of time. On the early Internet stage particularly, investment for advertisement for the trademarks in the Internet industry was rare, and mostly rely on word of mouth. This is especially obvious during the well-known trademark recognition for trademarks of Yahoo! Inc. and Google Inc. at the early stage. According to the Trademark Examination Standard, one element required for applying Article 13 of the Chinese Trademark Law is that the cited trademark has achieved well-known status before the application date of the disputed trademark. It took five years for the trademarks “YAHOO! in Chinese” and “YAHOO!” to achieve the well-known status in September 2000, the application date of the opposed mark “YAHOO! in Chinese &YAHOO” (Application No. 1649903), since the foundation of Yahoo! Inc. in March 1995. It took three years for the trademark “GOOGLE” to achieve the well-known status in January 2002, the application date of the opposed mark “GOOGLE & Bao Hu in Chinese” (Application No. 3077519), since the foundation of Google Inc. in September 1998. These trademarks were used and promoted in a short time, and it may probably be difficult for the Internet companies to provide as sufficient and complete evidence of fame as trademarks in the traditional industry. However, there is no doubt that, the above trademarks are truly well-known trademarks widely known among the general public, and have achieved the well-known status. By contrast to the traditional industry, the Internet industry develops faster and changes quicker, and trademark in the Internet industry is more vulnerable to be infringed, which provides more urgent neccessity for the protection of the well-known trademark. Under these circumstances, Chinese authorities lowered the burden of proof for the trademark owners regarding the well-known trademark recognition, and recognized the above trademarks as well-known, and thus effectively and efficiently protected the well-known trademarks in the Internet industry.

Second, there is an issue regarding non-stability and easy modification of the Internet content vs. collection and preservation of electronic evidence proving the trademark use. Even if the current web pages of the Internet companies were preserved by the notary public, it can only prove the status of the web pages for the current moment when the notarization is conducted, and it is difficult to trace back to the history web pages before that. The Chinese Trademark Law, Judicial Interpretations of the Chinese Trademark Law, the Trademark Examination Standard, and other regulations mainly made references to goods and services in the traditional industry, and rarely involved the preservation and exhibition of electronic evidence, especially the evidence related to first use and specific period of trademark use on the Internet. It is really a technical and legal issue newly emerged regarding how to determine the use of trademarks on the Internet. In practice, it may be a feasible solution to retrieve historical web pages via neutral third-party websites like Internet Internet Archive (www.archive.org or www.waybackmachine.org) or tools with similar features to the function of “back in time.” In the three-year non-use cancellation case of “HUA JUN in Chinese & huajun,” the court held as follows: The web pages are persevered for Huajun web pages by searching on the famous archives website (www.waybackmachine.org) and the notarization of the real time printing, and such site preserving the achieve is the famous non government organization. Thus, it will usually be deemed as high degree of credibility. Without the contrary evidence submitted by the other party, the web pages preserved in the form of electronic archive on that site may be deemed as true and correct. Based on that, the court adjudicated that the trademarks in the Internet industry have been used in compliance with the law within the specified period of time, and shall not be deemed to be non-use in three consecutive years.[9]In Yahoo! Inc. v. Shenzhen Yahoo! Messenger Technology Co., Ltd. trademark infringement and unfair competition case, Yahoo! Inc. used the Internet Archive website with notarization as evidence as well. The court recognized the authenticity of the evidence and concluded that the evidence reflected the use of the relevant trademarks owned by Yahoo! Inc. [10]Therefore, in the process of proving the use and the fame for the trademark in the Internet industry, we may need to pay special attention to the characteristics of the Internet industry and provide the evidence innovatively.

In addition, there is the issue of the nature of cross-territory in the Internet industry vs. territory of fame for trademarks. The Internet has the nature and characteristics of cross-territory (including cross the boundary of nations), while the fame of trademarks has the nature of territory. Whether the nature of cross-territory may be recognized? How to prove the nature of cross-territory for the trademarks in the Internet industry? These issues involve not only legal issues but also technical and evidence issues. All of the similar questions need to be explored and developed through practice and theory in the future.