The application for the registration of the "Tui Te" mark in Chinese characters filed by Liu Chen, the responsible person of Baitai, a company in Nantong, was opposed by Twitter, an American social network site. The Trademark Office ("TMO") ruled that the opposed mark shall not be registered on the ground that the "Tui Te" mark constituted a similar mark to the "TWITTER" mark registered by Twitter to be used in respect of similar services. Liu Chen filed for a review of the adjudication on the trademark opposition, which was rejected; Liu then sued the Trademark Review and Adjudication Board ("TRAB"), requesting the court to order the TRAB to set aside its adjudication on the review of the trademark opposition, and the case is still undergoing trial. In the meantime, Twitter also filed an application for the registration of the "Tui Te" mark. So, whose "Tui Te" mark should it be?
    A battle over the trademark right dispute in respect of the "Tui Te" mark in Chinese characters is still going on.
    The dispute is between Twitter, the popular American social network platform, and a trading company specializing in the promotion of special local products in China.
    Liu Chen, the responsible person of Nantong Baitai Biotechnology Co., Ltd. (hereinafter referred to as "Nantong Baitai", which at the time of the application for trademark registration, was named Nantong Gongying Tianxia Trading Co., Ltd.) told a Legal Weekend reporter that he in December 2009 filed an application for the registration of the "Tui Te" mark in Chinese characters with the TMO of the State Administration for Industry and Commerce ("SAIC") for use of the mark for its e-commerce platform for promoting special local products.
    However, after examination of the trademark registration for a year, in March 2011 the trademark registration application was opposed by Twitter. The TMO finally ruled that the mark in question shall not be registered on the ground that the mark for which Liu had applied for registration constituted a similar mark to the "TWITTER" mark registered by Twitter in respect of similar services.
    From then on, Liu's plan for establishing an e-commerce platform for the promotion of special local products was forced to be delayed, and the battle over the trademark right in respect of the two Chinese characters "Tui Te" began between the two parties.
    Twitter Filed an Opposition First and Then Applied for Registration of the "Tui Te" Mark
    On 22 December 2012, Liu applied for a review of the adjudication of the trademark opposition. A year later, what Liu had waited for still turned out to be that "registration of the opposed mark (for which Liu had applied for registration) shall not be approved".
    "Is it really impossible for "Tui Te" to be registered as a mark used in the sale of special local products?" Liu told the Legal Weekend reporter that "as suggested by a lawyer, because I want to establish an e-commerce platform for the sale of special local products, I applied for the registration of the "Tui Te" mark in respect of "information transmission, telephone communication" and other related services under Class 38". Liu felt very confused when receiving the adjudication of the TRAB of the SAIC on the review of the trademark opposition.
    Liu said, in around 2009, he observed that the market had an increasing demand for special local products, but was in short supply of channels and logistic platforms in this field, and he believed the time for establishing the e-commerce platform for special local products had come. During that time, Liu and his team chose the "Tui Te" in Chinese characters as the name of the platform. "Tui Te" means promoting special local products, which is easy for farmers to understand.
    "At that time, we even did not know there was a company with the name of "Twitter" in a foreign country." Liu said, "And our business had nothing to do with Twitter's business."

【Comments】

Samiko Sun: Upon inquiry, Nantong Baitai applied to the TMO for the registration of the "Tui Te" mark in respect of services such as "information transmission; telephone communication; communication by computer terminal; electronic mail; e-mail; provision of services of telecommunication connection to the global computer network; teleconference services; provision of services for users to access the global computer network (provided by service providers); provision of internet chatrooms; voicemail service" under Class 38 on 11 December 2009.
    TWITTER was established in March 2006, and was officially shielded in China by the Chinese government in June 2009 due to the fact that TWITTER placed no restriction on the content published by its users which involves violence, eroticism, viciousness, and defamation, and is against the Chinese government. This may reflect the following issues: i) TWITTER had used the "Tui Te" mark before Nantong Baitai applied for registration of the mark; and ii) its use of the "Tui Te" mark was also targeted at its users in the Chinese Mainland, through which the mark had gained a certain influence; otherwise it would not be shielded by the Chinese government.
    From the standpoint of TWITTER, though TWITTER had no prior right in respect of the "Tui Te" mark in Chinese, it may still crack down on the "Tui Te" mark for which registration was applied by Nantong Baitai based on the provision of Article 31 of the original Trademark Law (Article 32 of the current Trademark Law) which prohibits "the registration of a mark which has been used by others and has obtained a certain influence through improper means". But in that case, TWITTER needs to provide evidence proving that the mark it had used in China was not the "TWITTER" mark in English, but the "Tui Te" mark in Chinese characters; it can be seen from the TRAB's adjudication that TWITTER did provide evidence proving that it had used the "Tui Te" mark earlier than Nantong Baitai.
    From the standpoint of Nantong Baitai, maybe it was only a coincidence for it to design and use the "Tui Te" mark for its promotion of special local products, and it is also possible that it really had no idea of the website of TWITTER. Regarding this "innocent" situation, if Nantai Baitai had used the "Tui Te" mark earlier than TWITTER, and the mark had obtained a certain influence through its use, it would be allowed to continue its use of the mark within the scope of its original use according to Article 59 of the current Trademark Law, but TWITTER may require it to add an appropriate identifier such as "Nantong Baitai" to the mark for distinction purposes. However, if Nantong Baitai had not used the "Tui Te" mark earlier than TWITTER, or it had used the mark earlier than TWITTER but was unable to prove that the mark had obtained a certain influence through its use, it can only give up the mark and design another one.