Are there pitfalls when registering a trademark? How to avoid infringement risks? Let’s hear what professional lawyers have to say

Professional lawyers discuss trademark registration pitfalls and ways to avoid infringement risks

Seller A: I have already registered my trademark in China. Will it also be protected for cross-border e-commerce exports?

Seller B: Is there any particular method for naming and selecting a trademark?

Seller C: Does registering a trademark first mean that you own the trademark rights?

Seller D: I have applied for a text trademark. If someone else uses the same text for a graphic trademark, would it be considered infringement?

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In the last week of April, Amazon Global Store launched the “2023 Cross-border E-commerce Intellectual Property Education Week” series of events. Amazon specially invited authoritative experts and lawyers who have deeply cultivated overseas intellectual property to teach core knowledge of intellectual property from the perspectives of trademarks, copyrights, and patents in live broadcasts, helping everyone to quickly solve intellectual property problems and easily and efficiently enter the global market!

Because there is too much valuable information in the two live broadcasts, today we will only discuss trademarks! We will start with four questions, summarize the most common and easily overlooked trademark infringement issues for cross-border e-commerce sellers in the field of intellectual property, and provide suggestions from authoritative experts.

The two authoritative experts in the field of trademarks participating in this sharing are:

Note: The organization of relevant laws, regulations, and policies is for reference only, and it is not exhaustive, nor does it represent Amazon’s interpretation of or legal advice on relevant laws, regulations, and policies. If you have any questions about relevant laws, regulations, and policies, please contact your supervisory department or legal advisor.

Yes! Knowing trademarks is the first step to success in going global.

Trademarks are everywhere in our lives, but many sellers don’t really understand them. Only by mastering their elements and forms can we fully understand trademarks and start on the right track for our brand to go global.

Zhen Shuqi

There are not many elements to a trademark, but there are many forms. Sellers can choose a suitable trademark based on their own needs.

1. The three elements of a trademark:

Person: The user or owner of the trademark, like all sellers;

Object: Goods or services, the products sold or services provided by the sellers;

Intention: Logo, words, graphics, letters, numbers, etc.

If we were to define a trademark, it is a distinctive sign used to identify the source of goods or services.

2. The various forms of trademarks:

Trademarks come in a variety of forms, with the most common being words, graphics, letters, numbers, and their combinations. In addition, there are many “interesting” forms that can also be registered as trademarks, such as three-dimensional logos, sounds, smells, and movements. Well-known examples include the QQ notification tone and the “salt sprinkle” movement by a Turkish internet-famous chef, both of which have applied for trademarks.

Fun fact:

Smells and movements are new forms of trademarks, which means that a specific smell or movement can be used as a trademark for certain goods. In countries or regions where smells and movements are accepted as registered trademarks, sellers should be reminded to avoid infringement when selling locally!

A scent trademark can be registered in countries/regions such as the United States, United Kingdom, Canada, Germany, France, Spain, South Korea, Japan, Singapore, Russia, and India.

A motion trademark can be registered in countries/regions such as the United States, European Union, United Kingdom, South Korea, Japan, Canada, and Mexico.

After understanding the basic concept of a trademark, how can sellers choose a suitable trademark? What should be considered in the process of selecting a trademark?

Choosing a trademark based solely on being memorable is far from enough. Pay attention to the “4 principles” when choosing a trademark to avoid making mistakes.

In the existing concepts of some sellers, there is little difference between a trademark and a brand, and they tend to pursue trademarks that are “pleasant-sounding, easy to remember and even have good luck properties”. At first glance, in general, brands and trademarks are the same. However, at the legal level, there is a difference between the two:

A brand is a marketing concept that can exist independently of a product/service;

A trademark is a legal concept used to distinguish the source of a product/service. Therefore, choosing a trademark cannot be arbitrary. It is necessary to avoid infringement risks in advance and consider the protection strength of the trademark.

As a legal mechanism for protecting brands, a trademark can help a brand maintain its vitality for a long time, but it can also cause infringement problems and unnecessary trouble for sellers. Therefore, when choosing a trademark, certain principles must be followed to enhance the protection strength of the trademark.

1 . Choosing a trademark should follow 4 principles

Distinctiveness . The trademark should have distinctive features that are easy for consumers to recognize.

No conflict with prior rights . Avoid infringing on the prior rights of others, causing consumer confusion and misidentification.

Compliance with other laws .

No conflict with local customs, etc. . For example, in some countries, a triangle represents a special meaning. If you choose a triangular trademark, you will encounter great obstacles in marketing.

Among the above 4 principles, “the distinctiveness of the trademark” is crucial!

2 . The distinctiveness of the trademark determines the level of protection

The protection intensity of the trademark does not depend on the form of the trademark, but on its distinctiveness . The stronger the distinctiveness of the trademark, the less likely it is to conflict with prior rights, and the greater the level of protection. Therefore, no matter which form of trademark you choose, you should pay attention to its distinctiveness.

Sellers may also ask, how to choose a “safe trademark”? You can measure the protection and safety of trademarks according to the “distinctiveness of the trademark” characteristics mentioned above, and follow the following step-by-step standards.

3 . Trademark selection step-by-step standards

First choice – Independently created vocabulary has a low probability of being registered or used by others, and has inherent distinctiveness with low infringement risk.

Second choice – Vocabulary that can imply products or services / indicate products or services / associate with products or services, with a certain degree of distinctiveness. For example, the nutritional supplement brand “Yi Yang” and the yogurt brand “Yogurette”.

Not Selected — Fixed vocabulary, such as “Peking University Medical Center” and “One Hundred Thousand Whys.” These types of words require significant usage before they can be registered.

Not Recommended — Descriptive/indicative vocabulary, such as SOS, Water Splashing Festival, 502, and nanometer. These words are in common use and do not possess significance.

Prohibited — National and international organizational logos, as well as symbols that are suspected of ethnic discrimination and harmful to public interests, are prohibited and cannot be registered or used.

Note

Trademark significance is crucial and is one of the key factors that determines whether a trademark can be successfully registered. Let’s take a look at some real-life examples.

The European Union trademark BLACK IRISH was applied for registration in categories such as “hot chocolate, coffee,” “beer, dark beer,” and “coffee beverages containing whiskey, cream liqueur, and alcohol.” However, it was rejected by the European Union Intellectual Property Office (EUIPO)!

The reason given by EUIPO was that the trademark only covers the characteristics of the goods – black, high cocoa content, and originating from Ireland – and lacks significance, thus the application was rejected.

Tips

A trademark is not the same as a brand. A brand can have no geographical restrictions, but trademark rights are territorial. This means that if you want to obtain trademark protection in the country/region where you intend to sell your products or report others’ infringement of your trademark rights, you must first have a valid registered trademark in that country/region!

Case Study

Mike obtained a US trademark (R mark) and completed Amazon brand registration. In 2022, he added his Amazon Germany and UK accounts to the brand registration backend. Although he has not yet obtained a European or UK trademark, can Mike report trademark infringement by other sellers who sell products under Mike’s brand?

Correct Answer

No. To report acts of infringement that occur on the German site, you need a valid trademark in Germany or the European Union; to report acts of infringement that occur on the UK site, you also need a valid trademark in the UK.

Registering a trademark as early as possible is important. However, it is also crucial to understand that some countries or regions provide protection for unregistered trademarks that are in prior use, which is one of the key factors affecting the timing of trademark registration!

Zhen Shuqi

Trademark registration is not complicated. To obtain a registered trademark faster, it is important to prioritize trademark registration based on long-term business development, pay attention to regulations in different countries or regions, and find a “reliable” team of lawyers to assist with overseas trademark registration.

1 . Consider long-term business needs when registering a trademark

Products that the company has already used or plans to use or develop within 1-3 years should all be included in the scope of trademark registration consideration. When actually registering, there is a priority distinction.

Products that have already been used or will be used within 1 year should be registered with priority, and products planned to be used within 1-3 years should be registered with secondary priority.

Top countries/regions, sales countries/regions, and production areas should be registered with priority, and neighboring countries/regions planned to be developed within 1-3 years should be registered with secondary priority.

2 . Must understand the trademark system in the place where the trademark is used

Priority of registration or priority of use

The trademark laws in different countries/regions are different. Many Amazon sellers currently sell on Amazon sites in different countries or regions, so everyone needs to understand whether the local trademark system prioritizes registration or use.

Priority registration means that the person who registers the trademark first enjoys the priority right. Therefore, early trademark layout is particularly important.

Using the trademark first means that the value of the trademark comes from its use. The person who uses the trademark first enjoys the priority right, and the person who registers first is not necessarily entitled to the priority right. That is to say, if there are multiple applicants for the same trademark in the same or similar goods or services, the applicant who used the trademark first has the priority right, and it is necessary to maintain the continuous use of the trademark. Therefore, in countries where the priority of use is given, sellers who sell in these countries must not only register their trademarks but also start using and continue to use them as soon as possible!

3 . Collaborate with a professional legal team

Trademark registration belongs to the legal field. If the seller does not have a legal team, when choosing a cooperating legal team, it is necessary to focus on whether they are professional, understand the intellectual property strategy of your company, and are familiar with intellectual property tactics.

The 3 important points shared by Lawyer Zhen are that it is crucial to be familiar with and comply with local laws and regulations, which is particularly important for companies going global.

As Amazon’s US site is the main site for many sellers, and the US trademark is a typical “priority of use” system, Amazon invited Juli Schwartz, the intellectual property official of the US Patent and Trademark Office (USPTO) Consulate General in Shanghai, to provide a detailed introduction of the Dos and Don’ts of applying for a trademark in the US and help sellers avoid risks and register smoothly.

Juli Schwartz

In the US, a trademark is not a business license or permit to sell certain goods, but is used to prevent consumers from confusing the source of the goods, and to protect the reputation of the trademark owner by excluding others from using the same, substantially indistinguishable, or easily confused similar marks on related goods or services.

In order to standardize and maintain the integrity of trademark registration, USPTO has introduced new measures and actions, as well as implemented the 2020 amendment of the US trademark law. Since the modification of the trademark law, the “2020 Trademark Modernization Act (TMA)” provides the US Patent and Trademark Office with new tools, such as opposition letters, flexible response times, and the use of new mechanisms to cancel unused trademarks (including deleting unused trademarks and re-examining trademarks that were not used before the relevant date).

Therefore, when applying for a US trademark,

✅ make sure you understand US law. ✅ choose a competent US intellectual property agent to provide advice on your intellectual property protection in the US, including trademark application. ✅ conduct due diligence and verify the claims of the people you hire and cooperate with regarding their relationship with the US government, US lawyers, or other US entities.

❌ Do not work with professionals without meeting or verifying their identity and qualifications.

❌ Do not fabricate or provide false product history, photos, or usage statements, and do not believe that these practices are legal in the US. ❌ Do not maliciously register trademarks to sell products in the US, as this may infringe on the rights of legitimate brands that existed previously or currently. ❌ Do not sign financial agreements with entities that have high requirements for US trademark registration.

Tip

Recently, many sellers have reported that their applications for Amazon Brand Registry have been rejected. Here, I would like to remind all sellers that if your trademark meets the following conditions, it will not be able to pass the registration:

Your trademark has been penalized by the US Patent and Trademark Office (USPTO).

The lawyer or law firm responsible for submitting your trademark application has been punished or reported by the US Patent and Trademark Office (USPTO) for violating its regulations and rules in the past.

The key is still to return to the “distinctiveness” of the trademark, whether it causes confusion in the origin of the goods. The stronger the distinctiveness, the lower the risk of infringement.

Zhen Shuqi

If the text in a graphic designed by someone else is not recognizable, it already has a new distinctiveness; if the text can still be recognized, it may be suspected of infringement. Trademark infringement cases are complex and require specific analysis based on the specific circumstances. Let’s take a look at two cases.

Failed trademark litigation case of a Chinese company

Jialai Technology Co., Ltd. obtained the international registered trademark HE&ME and designated the extension of the trademark to the European Union half a year later. During the announcement period, a company called Trend Fin B.V. raised an objection application, claiming that this trademark design was based on its prior Benelux trademark ME. At the beginning, the objection application was rejected by EUIPO due to two reasons:

1. The degree of similarity in sound, shape, and meaning between the later trademark and the prior trademark is low, and there is no possibility of confusion;

2. The distinctiveness of the prior trademark is below average.

However, the objector subsequently filed a review. In the review stage, the review committee supported the review application and pointed out that the two trademarks had an average degree of similarity.

Finally, the European Union Court ruled that the two trademarks were based on the possibility of confusion, and supported the decision of the objector and the EUIPO review committee. Jialai Technology Co., Ltd. lost the case.

Successful trademark litigation case of a Chinese company

Yiwu Qingpeng Cosmetics Co., Ltd. submitted an application to register the trademark BODYSECRETS to the European Union Intellectual Property Office (EUIPO). Victoria’s Secret filed an invalidation application, and the key point was the use of the word “Secret” in the trademark and other related issues. After deliberation, review, litigation defense and other stages, the European Court finally ruled in favor of Yiwu Company.

In fact, HE&ME and BODYSECRETS are not very significant trademarks. Therefore, objections have been raised against both trademarks. Trademark litigation takes a long time and is a lengthy process, generally taking three years. If the seller chooses a more significant trademark from the beginning, potential disputes can be avoided.

Here, we remind everyone to pay attention to the risk of infringement. If you are unsure, you can seek the help and advice of a professional lawyer. In addition, once a trademark is objected by someone else, it is important to actively respond and protect your own trademark rights.

Mini-Quiz

After learning so much about trademark knowledge, let’s move on to the practical part! Let’s judge together whether these actions on Amazon have the risk of trademark infringement.

Scenario 1. Someone else uses my trademark in the listing

Answer

The key is whether it causes confusion about the source of the product. Trademark infringement is not only about using someone else’s registered trademark without permission. Whether there is “confusingly similar” and whether it causes confusion about the source of the goods or services is one of the keys to determining trademark infringement.

Case 1: Mike owns a registered trademark “AAA”. He finds a listing title for a similar product that says “USB charging cable, compatible with AAA speaker”. Can Mike report trademark infringement?

Correct answer: “compatible with” describes that the product is compatible with the AAA brand’s product, rather than expressing that the product is the AAA brand’s product, so there may not be infringement.

Case 2: Sam claims in the listing that he is selling “amazonn” cups. Is this infringement?

Correct answer: “amazonn” is very similar to Amazon’s registered trademark, which can easily cause confusion among consumers and has a high risk of infringement.

Scenario 2. A seller used my trademark logo without any changes in their own listing pictures.

Answer:

A trademark has exclusive rights on approved goods or services, including the right to use, own, and dispose of it. Using someone else’s trademark without any changes constitutes trademark infringement.

Scenario 3. Clothing seller James found someone else selling his popular product, but James did not authorize anyone to sell his brand. What can James do?

Answer:

As long as the sold product is an authentic product of your brand, regardless of the channel it comes from, it does not infringe your intellectual property. However, this does not mean that you cannot report it, but you need to choose the correct reporting channel.

If the sold product is not a fake, but you think it is “different from the description”, then you should go to: Amazon Seller Platform -> Performance -> Account Status, and click “Report abuse of Amazon policy”. If the sold product is indeed a fake, you can use the “Report a Violation” tool to report trademark infringement.

Amazon provides a variety of intellectual property protection tools to help sellers efficiently protect their intellectual property.

Report a Violation Tool: You can report trademark, copyright, and patent infringement.

Project Zero: When the success rate of reporting violations using the Report a Violation tool remains high, the brand also has the right to use Project Zero tools to remove counterfeit goods without reporting to Amazon and waiting for the results of the report.

Transparency Plan: can help brands avoid trademark infringement caused by counterfeiting and unauthorized selling, eliminating the need for post-reporting and removal.

The Intellectual Property Classroom has helped many Chinese sellers master rich intellectual property knowledge, enhance brand awareness and intellectual property protection skills for going global. We believe that the numerous sellers who have gained fruitful results will join Amazon to promote the long-term healthy development of Chinese brands going global.

We will continue to update BusinessDialogue; if you have any questions or suggestions, please contact us!