Observing that the trademark, ‘ALIBABA.COM’ had already acquired distinctiveness as on its filing date, the Intellectual Property Appellate Board (‘IPAB’) has held that the mark was thus entitled to statutory protection under the Trademarks Act, 1999 (‘the Act’). The IPAB thus ordered that the application for the mark, ‘ALIBABA.COM,’ be accepted. It directed the Registrar to proceed further for advertisement in the Trademark Journal.
The IPAB in its Order dated August 21, 2020 thus allowed an appeal[1] filed by Alibaba Group Holding Limited (‘Appellant’) under Section 91 of the Act, arising out of the Order dated February 22, 2019 (‘impugned order’) passed by the Registrar of Trademarks, Trademarks Registry, Mumbai (‘Respondent’). The Registrar had refused the registration of Trademark Application No. 1997944 for ‘ALIBABA.COM’ in classes 35, 36, 38, 39, 41 & 42.
Alibaba
Established in 1999, the Appellant along with its affiliates (collectively referred to as the Alibaba Group), constitutes a family of internet-based businesses which facilitated online trading / e-commerce, online payment services, cloud computing, etc., across the globe, including India. The Appellant had been using the mark, ‘ALIBABA,’ from its inception, as the core and distinctive element of the company name of the Alibaba Group, and also as its house mark under which its business activities including its various online platforms were promoted.
The Appellant’s online business-to-business (‘B2B’) marketplace at ALIBABA.COM, is a global trade marketplace for importers and exporters under the Appellant’s trademarks, which connects traders across 190 countries with sellers and buyers located all over the world, including India, who can directly communicate with each other and consumers. The Appellant’s total annual revenue generated through its online platform between 2012 and 2018 amounted to millions of U.S. Dollars.
The Appellant’s trademarks include the trademark, ‘ALIBABA’ per se, marks containing the word ALIBABA such as ‘ALIBABA.COM’ and marks with the prefix ALI (hereinafter collectively referred to as the ‘Appellant’s Trademarks’). The Appellant applied for and registered the Appellant’s Trademarks in numerous countries such as China, Hong Kong, Japan, Philippines, EU, and the United States, and had even registered trademarks such as ALIBABA.COM (under classes 9 and 16), ALIBABA, ALIAVILA, ALIEXPRESS, ALIMEBOT, ALIFINANCE, etc., in India. By virtue of its extensive use and registrations, the Appellant’s Trademarks are well-recognized and highly valued internationally.
The Appellant also actively promoted and operated its businesses in India. The significant success in the marketing and operation of the ALIBABA.COM platform in India resulted in the establishment of a dedicated website for India at https://india.alibaba.com/, which offered membership subscription, browsing of the product listings, B2B trade focused in India, and a comprehensive information section for doing business in India.
Besides the submission of extensive evidence and documentation of its global presence and the list of prior registered trademarks, the Appellant also demonstrated that its trademarks had earned recognition and goodwill on print and digital media, the Appellant had a large social media presence, featured in several brand recognition publications, received awards and accolades for the quality and standard of its goods and services, and also garnered tremendous reputation for its company and trademarks.
Prior registered trademarks
The Appellant filed Trademark Application No. 1997944 in respect of the mark ‘ALIBABA.COM’ on July 23, 2010. The said application was examined and thereafter objected on relative grounds of refusal as per Section 11(1) of the Act, as the same/similar trademark already existed in the trademark register for the same goods/services. Pursuant thereto, on December 13, 2017, the Appellant submitted its response along with supporting documents for the registration of the mark, ‘ALIBABA.COM.’ Subsequently, a show-cause hearing was fixed for the said application and the Appellant duly appeared and made its submissions; however, the application was refused by the Respondent.
Aggrieved by the aforementioned order, on July 23, 2018, the Appellant filed a request to obtain detailed grounds of refusal under Rule 36(1) of the Trademarks Rules, 2017, to gain some clarity on the findings of the Respondent. The Respondent in response, issued and uploaded the impugned order in its online records, without having communicated the same to the Appellant.
Decision and conclusion
The IPAB observed that the Appellant’s Trademarks were extensively, continuously, and exclusively used by the Appellant, had acquired a high level of distinctiveness and thus enjoyed immense goodwill and reputation in India. The IPAB also observed that a significant level of goodwill and reputation had also spilled over into India through the extensive use of the Appellant’s Trademarks around the world (including in countries and regions in proximity to India). The IPAB thus held that the mark, ‘ALIBABA.COM,’ had already acquired distinctiveness on the date of filing of the instant trademark application and was thus entitled to statutory protection under the Act.
The IPAB pertinently surmised that the Respondent failed to consider the evidence, documents, and submissions in support of the Appellant’s mark, ALIBABA.COM, and observed that there was lack of application of mind by the Respondent in the examination of the Appellant’s instant application. The IPAB noted that one of the trademarks (Application No. 1500048[2]) cited in the Respondent’s objections as being similar to the Appellant’s instant application had been opposed by the Appellant itself, and the applicant of the said cited mark had failed to submit any evidence in its defence. The IPAB also noted that the other cited trademark by the Respondent (Registration No. 1812224[3]) was not similar to the Appellant’s application and it extended to different services.
In conclusion, the IPAB held that the impugned order passed by the Respondent was made in a mechanical and casual manner without having considered the evidence adduced by the Appellant. The impugned order was thus set aside, the appeal was allowed, and the Appellant’s application was directed to be accepted and advertised in the Trademark Journal.
The IPAB had yet again emphasized the importance of reasoned orders to be passed by the Registrars of the Trademarks Registry after taking into consideration all submissions and evidence adduced by the applicants and adjudicating the same in accordance with the law.
[1] OA/16/2020/TM/MUM, decided on Aug. 21, 2020.
