▍ Is Bilibili a well-known trademark? - How to protect a well-known trademark in China

Written by Lei Tan | Oct 31 2022

Recently, the failure of Bilibili in the litigation against its trademark Bilibili triggered a heated debate among netizens. Bilibili (aka “Station B”) is a well-known video-sharing platform founded and owned by Shanghai Huandian Information Technology Co., Ltd. ("Shanghai Huandian"). After the development of more than ten years, Station B now covers more than 7000 multicultural communities of various interest circles. It once won  first place in both lists of "Generation Z’s Preferred Apps" and "Generation Z’s Preferred Entertainment Apps" selected by the QuestMobile Research Institute. It was also listed among the "2019 BrandZ’s Top 100 Most Valuable Chinese Brands". How could Station B, as such a well-known and successful video-sharing platform, fail in the trademark invalidation lawsuit? What can we learn from this case? 

Case facts:

Station B received complaints from users reporting that some snacks assumed to be co-branded products of Station B were of bad quality. Actually, Station B has nothing to do with these products. In 2017, the trademark “哔哩哔哩bilibili” (No. 26269334) was registered in class 29 by Siji Self-made Culture Co., Ltd. This trademark was later assigned to Jinjiang Jiande Food Co., Ltd. ("Jinjiang Jiande"). Jinjiang Jiande produced and sold snacks like jellies on major e-commerce platforms under the trademark “哔哩哔哩bilibili”, which gave consumers the impression that the snacks were co-branded or authorized by Station B. Therefore, Shanghai Huandian filed an invalidation against trademark No. 26269334 in 2020. However, the invalidation was not successful and the disputed trademark was maintained. Shanghai Huandian was not satisfied with the decision and further filed an appeal to the Beijing IP Court.

Trademark in Dispute:   
(Trademark Number: 26269334)
Class: 29
Designated goods: Gelatin; jelly; edible jelly; pectin for cooking; alginate for cooking; crystal jelly; agar (edible); gum base. 

Cited trademark: (Trademark Number: 15362394)
Class: 41 
Designated services: Training; arranging and organizing training courses; organizing fashion exhibitions for entertainment; publishing text (excluding advertising materials); publishing online electronic books and magazines; providing online electronic publications (non-downloadable); radio and television program production; film production, other than advertising films; providing online games on a computer network; club services (entertainment or education).

In this case, the disputed trademark and the cited trademark are in two different classes which are hardly relevant to each other. According to Article 13 (3) of China Trademark Law, where a trademark of a different or dissimilar kind of goods is a reproduction, imitation, or translation of another person's well-known trademark registered in China and it misleads the public so that the interests of the owner of the registered well-known trademark are likely to be impaired, no application for its registration may be granted and its use shall be prohibited. Therefore, it is crucial to ascertain whether the cited mark shall be recognized as a well-known trademark subjected to cross-class protection.

The Beijing IP Court did not uphold the appeal from Shanghai Huandian because the evidence provided by Shanghai Huandian was not sufficient enough to prove its trademark is well-known in class 41.

In addition, Shanghai Huandian filed a trademark invalidation against trademark “哔哩哔哩bilibili” No. 26264549 in class 30 owned by Jinjiang Jiande in 2019. Similarly, the Beijing IP Court did not uphold the appeal either, for the same reason that the evidence was not sufficient.

Lessons:

1.Keeping and accumulating evidence regarding the popularity of a trademark plays an important role in  brand protection. The main reason for the failure of the appeals to the Beijing IP Court is that the submitted evidence from Shanghai Huandian failed to fully reflect the continuous use, sales, sales region, market share, geographical scope, industry ranking, etc. of the cited trademark in China before the application date of the disputed trademarks. When the goods/ services of the disputed trademark and the cited trademark are quite different, the sufficiency of the evidence regarding the popularity of the cited trademark relates directly to the result of a dispute. 

2.The evidence regarding the popularity of a trademark should be accurately and sufficiently collected. From the cases above, we can see that the requirement for the recognition of well-known trademarks is high. The applicant is required to provide evidence with high sufficiency, completeness, and authority. According to Article 14 of China Trademark Law and Article 5 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving the Protection of Well Known Trademarks, evidence of popularity should be collected from five perspectives: (1) Market share and sales volume; (2) Duration of use; (3) Publicity input; (4) Protection records as well-known trademarks; (5) Market reputation. Accordingly, only ample and accurate evidence can clearly show the facts. Therefore, when preparing evidence for a well-known trademark, it is necessary to collect evidence that can support its popularity in many aspects according to the characteristics of the business model.

3.Enterprises need to be active in brand protection and a long-term vision of the protection strategy is crucial. Loopholes in brand protection strategy led to  frequent infringements on the core trademark of Shanghai Huandian. If Shanghai Huandian had taken defensive measures (such as all-class trademark registration) to protect its trademark in advance, it may be able to avoid these trademark infringements.

The second appeal of the class 29 case is not yet concluded. However, judgment on the second appeal of the class 30 case has come out. Shanghai Huandian won the lawsuit! The Supreme People's Court finally acknowledged that Shanghai Huandian’s trademark is well-known and decided that trademark in class 30 shall be invalidated. We will keep on monitoring the follow-up progress of the class 29 case.