Can Alibaba really monopolize the “Overseas Shopping” trademark?

More than 88% of “sea shopping” trademarks are applied for by “Ali Group”, so will “sea shopping” be monopolized by Alibaba?

The results of a search on the Trademark Office website (China Trademark Network) show that as of June 1, 2015, the Trademark Office has received a total of 17 applications for the "海淘" word trademark. In addition, there are 34 applications containing the word "海淘" totaling hundreds of "海淘"-related trademarks.

Among the 17 applications for the "海淘" word trademark that have been submitted, Alibaba directly submitted 9, and Alibaba's affiliated company Hunan Happy Taobao Cultural Communication Co., Ltd. submitted 6. In other words, more than 88% of the "海淘" word trademarks were submitted by the "Ali Group".

Many people may have questions in their minds: Why can "Haitao", which is now widely regarded as a synonym for "overseas shopping", be registered as a trademark? Will the "Haitao" trademark be exclusively owned by Alibaba? Will other e-commerce platforms or companies engaged in overseas shopping businesses be forced to "change their names"?

Obviously, the answer is not that simple.

Inventory of “Haitao” trademarks: the first application occurred in 2010

The results of the Trademark Office website (China Trademark Network) show that as of June 1, 2015, among the 17 "Overseas Shopping" trademark applications submitted, 8 have been registered, 5 have been invalidated, and another 4 are temporarily "pending application".

In fact, the earliest "Haitao" trademark application was submitted by Hunan Happy Taobao Culture Communication Co., Ltd. (hitao.com) on December 6, 2010. At that time, they applied for 6 "Haitao" word trademarks at one time, and the goods or categories applied for protection included: Class 28, Class 35, Class 38, Class 39, Class 41 and Class 42.

Many e-commerce professionals may be familiar with "HiTao.com" and Hunan Happy Taobao Cultural Communication Co., Ltd. This company, founded on March 4, 2010, was actually jointly funded by Taobao and Hunan TV Station.

On April 18, 2010, the TV program "The More You Shop, the Happier You Are", which was produced by the company and based on the integration of television and e-commerce, premiered on Hunan Satellite TV. It was hosted by the famous host Wang Han, who also joined the Tiantian Brothers to support "The More You Shop, the Happier You Are", and it was once very popular.

Many well-known Taobao sellers and buyers participated in the program. It is undeniable that the program played a huge role in spreading the concept, advantages and culture of online shopping.

HiTao.com subsequently adjusted its strategy several times, from its early focus on "flash sales" to its transformation into overseas product purchasing agency, and now to becoming an e-commerce platform focusing on women's beauty.

Obviously, judging from the development history of Hitao.com, their application for the "海淘" word trademark should have been a natural thing. On the one hand, the name of the website is "Hitao", which is homophonic with "海淘"; on the other hand, the website once focused on "overseas product purchasing on behalf of others", that is, it was engaged in the "海淘" business.

What can be proved is that among the 253 trademarks submitted by Hunan Happy Taobao Culture Communication Co., Ltd., in addition to "Haitao", there are dozens of trademarks containing the keyword "Hi", such as "Hi Mi", "Hi Jie", etc.

As of June 1, 2015, of the six “海淘” word trademarks submitted by Hunan Happy Taobao Culture Communication Co., Ltd. in 2010, two are in the “registered” status and the other four are “invalid”.

It can be seen from this that the "Haitao" trademark applied for by Hunan Happy Taobao Culture Communication Co., Ltd. "accidentally" has now become the focus of competition among major e-commerce companies due to the continued popularity of overseas shopping business.

Questioning the “Haitao” trademark: Why did Alibaba enter the market?

Alibaba directly applied for the "海淘" word trademark on March 13, 2013. At that time, Alibaba submitted 9 "海淘" word trademark applications at once, and the categories of goods or services applied for protection included: Class 9, Class 16, Class 35, Class 36, Class 38, Class 39, Class 41, Class 42 and Class 45.

As of June 1, 2015, of the 9 “海淘” word trademarks directly applied for by Alibaba, 2 are in the “application in progress”, 1 is “invalidated”, and 6 are “registered”. Among the 6 “registered” trademarks, 1 is in the “trademark opposition application in progress”.

If HiTao.com applied for the "海淘" trademark three years ago out of considerations for its own brand protection, Alibaba's re-entry into the "海淘" trademark application for protection three years later was more out of considerations for market competition.

As of now, Alibaba has successfully registered 6 "Haitao" trademarks, covering categories 9 (software-related), 16 (printing-related), 36 (finance-related), 41 (modeling service-related), 42 (design-related) and 45 (agency service-related).

In recent years, after the cultivation, education and guidance of many e-commerce platforms including Taobao, "sea shopping" has become synonymous with "overseas purchasing" or "online shopping for overseas products."

Driven by national policies such as the "Free Trade Zone", cross-border e-commerce has become the common choice of current mainstream e-commerce platforms, and more and more e-commerce platforms have launched "overseas shopping" services.

In this context, Alibaba's application for "Overseas Shopping" trademark protection to achieve "monopoly" over a specific scope of "Overseas Shopping" is bound to trigger a battle for "Overseas Shopping" trademark protection among e-commerce platforms.

The “Haitao” trademark has been withdrawn: other e-commerce companies can only change their names?

Around the time of last year's Double 11, a round of trademark disputes broke out over the term. Information circulating online at the time showed that Alibaba had sent letters to television, newspapers and other media outlets, claiming that "Double 11" was its registered trademark and that the media were not allowed to use "Double 11" when publishing advertisements for other manufacturers.

There is a certain amount of hype in this, because the scope of protection of a registered trademark is limited to the category of goods or services for which it is applied for protection, and areas that have not been applied for do not enjoy exclusive rights.

Returning to the competition for the "Haitao" trademark, leaving aside the trend that "Haitao" is becoming a "generic name" for specific e-commerce businesses, even if Alibaba holds the "Haitao" trademark, it does not mean that other e-commerce platforms must change their names.

First, other manufacturers can continue to apply for trademarks containing the word "海淘". The results of the Trademark Office website (China Trademark Network) show that as of June 1, 2015, the Trademark Office has accepted hundreds of applications for "海淘" related trademarks, including 34 trademarks containing the word "海淘", such as "海淘团", "海淘园", and "海淘客".

Simply put, other manufacturers or platforms engaged in overseas shopping business can continue to apply for trademarks in the form of "brand name + overseas shopping" or "overseas shopping + brand name" if they feel it is necessary.

Because the original intention of a trademark is to distinguish the source of goods or services, as long as the applied trademark does not violate prohibitive provisions, has distinctiveness or has distinctiveness through use, and will not cause confusion or misidentification among the relevant public, then the corresponding trademark may be approved for registration.

Secondly, Alibaba can continue to apply for the "Haitao" trademark in categories other than those it has registered. If e-commerce platforms like JD.com, which like to compete with Alibaba, are still unwilling to give up, they can continue to apply for the "Haitao" trademark in categories of goods or services that Alibaba has not registered but that are involved in their own business.

Finally, the "opposition" or "invalidation" procedure can be initiated for the "Haitao" trademark submitted by Alibaba. Depending on the status of the "Haitao" trademark submitted by Alibaba, the degree of "opposition" or "invalidation" can be initiated depending on the situation.

Regarding "objection", according to Article 33 of the Trademark Law, prior rights holders and interested parties may raise objections to the Trademark Office within three months from the date of announcement of the preliminary approval of the trademark.

Regarding "invalidity", according to Article 44 of the Trademark Law, if a registered trademark is suspected of violating the registration prohibitions of the Trademark Law, or is registered by fraud or other improper means, the Trademark Office shall declare the registered trademark invalid; other units or individuals may request the Trademark Review and Adjudication Board to declare the registered trademark invalid.

It is particularly worth mentioning that as "Haitao" becomes a synonym or common name for overseas shopping, the risk of "Haitao" trademark being revoked is increasing. Article 49 of the Trademark Law stipulates that if a registered trademark becomes the common name of the goods for which it is approved for use or is not used for three consecutive years without justifiable reasons, any unit or individual may apply to the Trademark Office for the revocation of the registered trademark.

Of course, whether it is "Double Eleven" or the current "Overseas Shopping", these cases are enough to show that Alibaba's awareness of trademark protection is indeed strong, and this awareness of early layout will also play a positive role in its leading or curbing competitors in a specific period of time.

This is indeed worthy of learning and reference by other e-commerce platforms or Internet companies including JD.com.

As a winner of Toutiao's Qingyun Plan and Baijiahao's Bai+ Plan, the 2019 Baidu Digital Author of the Year, the Baijiahao's Most Popular Author in the Technology Field, the 2019 Sogou Technology and Culture Author, and the 2021 Baijiahao Quarterly Influential Creator, he has won many awards, including the 2013 Sohu Best Industry Media Person, the 2015 China New Media Entrepreneurship Competition Beijing Third Place, the 2015 Guangmang Experience Award, the 2015 China New Media Entrepreneurship Competition Finals Third Place, and the 2018 Baidu Dynamic Annual Powerful Celebrity.