Digital shop formula
Initially this seems a simple case. Obviously, the Chinese are using the name HEMA in exactly the same way as the Dutch company. The fact that the Alibaba shopping concept differs from the Dutch concept is irrelevant: both companies are retailers selling products that also include food. The fact that the Chinese Hema only supplies its products through online orders while the Dutch Hema also sells products in their physical stores, is similarly immaterial.
No Chinese trademark registration
The problem in such cases relates to the territorial nature of trademark law. It is not possible to establish a trademark worldwide with a single registration; a trademark has to be registered individually in each country. The fact that a trademark is frequently used and is very well known in one or more European countries does not necessarily provide grounds to oppose its use in China. Without having registered and used the HEMA trademark in China, the Dutch chain can do very little against Alibaba.
Unpredictable Chinese practices
Another factor is the lack of transparency and predictability of Chinese trademark law, which makes it difficult to forecast the chances of a successful opposition for trademark holders. While trademark violation would be easy to prove according to European law, the Chinese may judge it totally differently. In the case of trademark conflicts in China, it is therefore very important to work together with local trademark specialists.
In our article 'The safe road to China' we tell you more about trademark protection in China and how we can provide support.