Case Overview:

The disputed trademark was registered under No. 36012722 and was applied for by Guangzhou Ci Tou Information Technology Co., Ltd. on January 18, 2019, for services in Class 42, including "technical research" and "data conversion of computer programs and data (non-tangible conversion)," among others. "iconfont.cn" is Alibaba's vector icon management and communication platform launched in 2014. Before the application date of the disputed trademark, Alibaba did not apply for the "iconfont" trademark. Upon receiving the client's mandate, our firm analyzed the case, applied Article 32 of the Trademark Law, and argued that the "iconfont" logo was first used by and enjoyed a certain influence under Alibaba, asserting that the registration of the disputed trademark constituted a preemptive registration of a trademark already in use. The China National Intellectual Property Administration (CNIPA) ultimately declared the disputed trademark invalid.

 

Case Commentary:

 

In this case, there were three major challenges surrounding the application of Article 32 of the Trademark Law, which states that one cannot unfairly register a trademark that others have already used and enjoys a certain influence.

 

• 1. Proving that the "iconfont" Logo was "Already Used and Enjoys a Certain Influence":

Given that "iconfont.cn" is a professional and niche platform primarily targeting web designers, product developers, etc., with limited mainstream media coverage, proving its influence was challenging. Our team narrowed the scope to the relevant public, focusing on this group. We provided evidence from knowledge-sharing platforms, such as Blog Garden, CSDN, SegmentFault, and online discussions on platforms like WeChat, Zhihu, Weibo, as well as articles in journals like "Fujian Computer" and "Computer and Network" mentioning "iconfont.cn," demonstrating its recognition among the targeted audience.

 

• 2. Proving the Disputed Trademark's "Unfairly Obtained" Registration:

Guangzhou Ci Tou Information Technology Co., Ltd., the applicant, only applied for 20 trademarks, not imitating other brands, and had no direct cooperation with Alibaba or an obvious connection as a business operator in the same industry.

 

• 3. Explaining that the Designated Services of the Disputed Trademark are the Same or Similar to the Services Used by "iconfont":

The disputed trademark's designated services included various technical and design-related services. We argued that the services provided by "iconfont.cn," a platform for vector icon management and exchange, were closely related. We highlighted the platform's role in helping designers and its provision of services like electronic data storage, data conversion, and graphic design, which align with the designated services of the disputed trademark.

 

In addressing these challenges, our firm took the following approaches:

• 1. Proving the "iconfont" logo has "already been used and enjoys a certain influence":

• We narrowed down the scope of "relevant public" to professionals such as web designers, product developers, etc., as "iconfont.cn" is considered professional and caters to a niche audience.

• We demonstrated the influence of "iconfont.cn" in this field by searching for recommended articles and their readership (selecting articles with over 10,000 readings, with the highest reaching 180,000+) on knowledge-sharing platforms like Blog Garden, CSDN, SegmentFault, and online learning platforms like Mooc.

• We also considered the discussions and recommendations on platforms such as WeChat, Zhihu, Weibo, as well as articles mentioning "iconfont.cn" in journals like "Fujian Computer" and "Computer and Network."

 

• 2. Proving that the disputed trademark was registered "unfairly":

• We argued that the respondent, who developed the "Daiyan Bao" product, uses real video presentations on corporate websites to attract viewers' attention, claiming that it is essentially a marketing tool for businesses. The applicant is also involved in providing various marketing products, suggesting that both parties operated in the same industry.

• We pointed out that on the "Daiyan Bao" official website, the respondent listed the applicant's "Alibaba Cloud" as a partner, claiming to have participated in Alibaba Cloud AWD2014 and received praise from the Alibaba Cloud president, indicating that the respondent is familiar with the applicant.

• Lastly, we analyzed the respondent's trademark application history, noting the registration of trademarks such as "Youziku" (the world's first Chinese web font service platform) and "web font" (a network font aimed at solving the display problem of special fonts on web clients), indicating that the respondent is well-versed in the field and aware of the widely recommended "iconfont.cn" website.

 

• 3. Explaining that the disputed trademark's designated services are the same or similar to the services used by "iconfont":

• We emphasized that "iconfont.cn" serves as a platform for vector icon management and communication, providing services such as online icon retrieval, download, upload, and project icon management.

• We highlighted services such as "electronic data storage" provided by "iconfont.cn" during the process of users uploading and others accessing and downloading icons. This service aligns with the related services specified in the disputed trademark's Class 4220.

• We stressed the significant relevance between the services provided by "iconfont.cn" and those specified in the disputed trademark, such as "graphic art design," "handwriting analysis (graphology)," "graphic design of advertising materials," and the broader category of "technical research."

 

In summary:

The Trademark Office comprehensively considered factors such as the influence of "iconfont.cn" among relevant audiences, the respondent being a competitor in the same industry who maliciously registered the trademark with knowledge of its prior use, and ultimately declared the disputed trademark's designated services and those used by "iconfont.cn" as the same or similar.

 

The significance of this case lies in accurately defining the high entry threshold for relevant audiences, searching and selecting authoritative websites related to the field for discussions and recommended articles, demonstrating its influence among "relevant audiences" who have "already used and have a certain influence." Additionally, by analyzing the services provided by the website, relating them to the disputed trademark's designated services, and demonstrating the respondent's business situation, promotional activities, and trademark application history, our team was able to argue that the registration was unfair, leading to the invalidation of all designated services of the disputed trademark.