“I don’t have any wisdom, but I can follow others, hehe~”

I don’t know how many sellers got furious when they saw this sentence!

Sellers often hate copycats. Recently, there were rumors that a seller cut off the hand of a copycat.

The story I am going to tell below may be even more infuriating than the story of the copycat seller.

Protagonist: Pro-Wax100 wax melting machine

Pro-Wax100 is a brand in Zhongshan, Guangdong, dedicated to the research, development, production and sales of wax melting machines, wax beans, heaters and related accessories. The brand's official website is: https://www.pro-wax-100.com/

It is not difficult to see from the all-English display page of its official website that the brand is mainly aimed at the international market.

It is reported that Pro-Wax100 is mainly sold in international markets such as North America, South America, Europe, the Middle East and Asia.

One of the brand's flagship products is the Pro-Wax100 wax melting machine . In foreign countries, beeswax hair removal is a very popular beauty method. This Pro-Wax100 wax melting machine can melt various types of wax, such as wax beans, pot wax, hard wax, etc. in ten minutes, and its sales on major platforms are very good.

If a product can stand firm in the market for many years, then it is essential to protect it through the registration of various brand patents. As early as 2005, the brand applied for a design patent in China, and then in 2012 and 2016, the same Chinese Pro-wax 100 wax melting machine patent application was successfully applied for.

Later, because the 10-year patent protection period has expired, or the original company no longer renews the patent due to market reasons, the registered company abandons the protection of the design patent, and it becomes a public design that can be used by all companies in the market.

Therefore, this wax melting machine is a public mold product that has been on the Chinese market for 15 years, and its appearance patent is a mold disclosed by the industry.

Is the Pro-Wax100 wax melting machine infringing on its own rights?

Recently, a number of sellers who sold this product on various platforms were sued by the American company Ouyeinc Ltd. The agent law firm is: Barney & Karamanis, LLP.

The grounds for the lawsuit are: trademark infringement. The trademark cited as the infringement is the Pro-Wax100 related word and graphic trademark, which is also the only trademark that the right holder has successfully applied for.

The specific infringing trademarks are as follows:

According to the infringement cases listed in the complaint, the defendant sellers mainly printed the brand’s trademark logo on the products.

The sellers said: It is true that the pot falls from the sky while you are sitting at home.

Because of the territorial limitations of trademark protection, it is obvious that the trademark was first registered by someone else overseas, and after obtaining the trademark, they began to sue sellers of related products.

In addition to trademarks, the latest lawsuit shows that it also includes protection of appearance patents.

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That is to say, in addition to registering the trademark, the company also registered the appearance patent of the public mold product that has been on the Chinese market for 15 years in the United States. So even if the Pro-Wax100 trademark is not used, but the product design is extremely similar or even identical, there is still a great risk.

Knowing that another person’s design patent exists and registering it

By checking the trademark information of the plaintiff brand, it was found that the application dates of the brand's trademarks were generally very new, and the earliest application date was September 20, 2019.

As mentioned above, in addition to the Pro-Wax100 trademark patent being registered, the appearance patent has also been registered. It is reported that YUJIN is the applicant for the appearance patent of Pro-wax 100 wax melting machine.

According to relevant sellers: YUJIN was once the seller of Pro-wax 100 wax melting machine. A brand under his name started to sell wax melting machine products in 2017. It was the BSR in the Amazon hair removal wax machine category from 2017 to 2018, with 200-500 orders per day and 1,389 reviews accumulated. However, the product has been abandoned at present.

YUJIN has been selling Pro-wax 100 wax melting machine products for more than three years. It knows that the patent for wax melting machine has been around for 15 years and is very clear about whether the product has a US appearance patent. Therefore, it is self-evident whether it is a long-planned and malicious registration of a US appearance patent.

So how did YUJIN successfully apply for a design patent in the United States when its public mold products have been in existence in China for 15 years and it already has multiple design patents for the Pro-wax 100 public mold wax melting machine?

The US patent law stipulates that if the design patent applied for needs to be sold within one year, if the US Patent Office finds that the product is already on sale, then the applicant needs to reply to explain that the link to the prior sales is his own.

After checking, it was found that YUJIN's design patent application date was September 20, 2017, while the public model design patent had already existed for 12 years at that time, and there were hundreds of thousands of product links on Alibaba International Station, Amazon, AliExpress, Wish, etc. How did he provide evidence of his prior sales? How did he successfully apply for a US patent number in the defense? All of this is still unknown.

In the sellers' spontaneous rights protection group, some sellers reported that when YU JIN applied for the US design patent, the product link and patent application link provided fake proof of prior sales in 2010. However, the authenticity of the news is still unknown.

Malicious registration is premeditated, and suing innocent sellers after registration is even more malicious.

Malicious registration and prosecution of innocent sellers, involving billions of dollars

The first batch of lawsuits involved 314 accounts related to the trademark and appearance of the Pro-Wax 100 wax melting machine, including JOOM, Walmart, AliExpress, Dunhuang, and Alibaba.

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As of July 16, 2020, all sellers of hair removal wax machines, regardless of size, have been indiscriminately appealed to by US law firms, and all their accounts have been frozen. It is estimated that there are more than 5,000 sellers and suppliers.

Some sellers claimed that the links were uploaded in 2019. Stores that had not made any orders and were removed from the shelves in 2019 all received lawyers' letters from the other party's court to seal the stores. The amount involved in the case will reach billions, involving traditional B2B foreign trade and cross-border B2C, upstream and downstream supporting enterprises, and service providers.

The following are all lawsuits filed by Pro-Wax100. The PayPal accounts of the sellers sued in 20-cv-3490 and 20-cv-3491 have been frozen.

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Among them, 20-cv-3491, whose list has been published, sued 314 accounts, including AliExpress, Walmart, DHgate, Alibaba, and Joom, but not Ebay, Wish, and Amazon.

Because there are five cases, the remaining cases should be suing the remaining platforms separately. It is predicted that the number of defendant accounts will not be small in the future, which will cause huge losses to the relevant sellers.

What will happen to the sellers who have been sued?

Some sellers said: As long as this person has a patent, the patent of this product belongs to him, and he has the right to speak for this product. Even if he doesn't care about you, you can still continue to sell it. If he uses the patent to control you, there is basically no chance to refute. No matter whether you put the product on the shelf earlier or later than the patent, the platform only looks at the patent.

But is this really the case? In fact, there is a solution to this situation, but the road is long and difficult.

The opposition period for trademarks and designs in the United States is five years after registration, and you can appeal and go through the "invalidation" procedure. Small businesses and small foreign trade companies are severely affected and have no energy or money to file an objection with the US Patent Office and apply for invalidation procedures.

So the relevant sellers also put forward their own ideas:

We strongly recommend that the Ministry of Commerce, the Intellectual Property Office, the China Council for the Promotion of International Trade, the Shenzhen Council for the Promotion of International Trade, the Shenzhen Cross-border E-commerce Association and other relevant associations investigate this case. We suggest that the Ministry of Commerce’s Intellectual Property Overseas Rights Protection Assistance Center and other organizations take the lead, and after understanding the basic facts of the case, freeze the Pro-Wax 100 wax melting machine trademark and appearance patent at the US Patent Office, stop YUJIN’s evil behavior, and then file an objection to the trademark and patent, and go through the invalidation procedure for the Pro-Wax 100 wax melting machine trademark and appearance patent. Finally, collect evidence from the victims and counter-sue for huge compensation.

At the same time, relevant sellers said: It is recommended that the public security and procuratorate investigate this case in accordance with relevant laws. It is also recommended that the Shenzhen Municipal Market Supervision Administration, tax department, etc. investigate YUJIN's Shenzhen OYE E-Commerce Co., Ltd., and quickly and severely crack down on YUJIN's malicious registration and extortion during the epidemic!

Nowadays, a large number of sellers are using public molds that have been in the market for many years to make products seriously. Once trademarks and patents are maliciously registered, many sellers will suffer heavy losses. And if we think about the worst, some people will inevitably use this evil behavior as a bad example, causing the competition environment for cross-border sellers to further deteriorate.

A healthy competitive environment will add icing on the cake to the cross-border industry, while a vicious competitive environment will only encourage unhealthy practices in the industry.

If all cross-border peers can provide better solutions, please feel free to put them forward in the comments section. We also urge all foreign trade professionals and cross-border e-commerce personnel to forward this article to maintain fairness and combat the vicious competition of registering trademarks and appearances of public model products.

Compiled by ✎ Xiyue/

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