26 October 2018Trademarks

Alibaba secures injunction in TM dispute with cryptocurrency firm

Chinese e-commerce platform Alibaba has secured a preliminary injunction against cryptocurrency firm Alibabacoin Foundation.

District Judge Paul Oetken gave the order at the US District Court for the Southern District of New York on Monday, October 22.

Alibaba filed a trademark infringement lawsuit against the Dubai-based cryptocurrency firm and its founders in April, claiming that Alibabacoin had used the ‘Alibaba’ trademark in materials which were made available to US consumers online.

The cryptocurrency firm allegedly used the mark to raise more than $3.5 million in crypto assets, known as Alibabacoins, from investors via crowdfunding.

According to Alibaba, Alibabacoin had engaged in a “wilful and concerted campaign” to confuse consumers into thinking that it is affiliated with or endorsed by the Chinese e-commerce company.

Alibaba owns a number of US trademarks, including ‘’ for business services and ‘Alibaba’ covering computer software.

District Judge Kimba Wood initially issued a temporary restraining order but, later in April, Oetken refused to grant a preliminary injunction against Alibabacoin.

Alibaba failed to establish a “reasonable probability” that Alibabacoin’s websites have been “actually used to effect commercial transactions with customers in New York”, Oetken said.

As such, Alibaba failed to meet its burden of establishing a reasonable probability that the court has personal jurisdiction over Alibabacoin.

However, Alibaba was given another chance to demonstrate why the New York court should hear the case and, this time, the e-commerce platform convinced Oetken to grant the injunction.

This time, Alibaba had provided evidence of New York residents purchasing Alibabacoin, demonstrating the court’s jurisdiction in the dispute.

Oetken said: “Alibaba has established a reasonable probability that the transactions at issue here are not isolated instances, but rather a part of a larger business plan that involves the purposeful marketing and sale of Alibabacoin to, among others, New York consumers.”

He added that New York has a clear interest in protecting its consumers from confusion resulting from trademark misappropriation, and Alibaba similarly has an interest in safeguarding its reputation among New York consumers.

Oetken went on to find “ample evidence” that the cryptocurrency firm used the ‘Alibaba’ marks in connection with its online commercial ventures, in a manner that is likely to cause confusion.

As such, Alibaba had shown that it is likely to succeed in its trademark infringement complaint, Oetken said.

Under the preliminary injunction, Alibabacoin is prohibited from using the ‘Alibaba’ marks alone or in combination with any words, marks, designs, or images that are confusingly similar to—or are likely to impair the distinctiveness of—Alibaba’s marks, anywhere in the US.

A spokesperson for Alibaba told WIPR: “Alibaba is happy to say that the courts saw this for what it was: a blatant violation of our well-established IP rights.”

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More on this story

3 April 2018   Chinese e-commerce platform Alibaba has accused a Dubai-based cryptocurrency company of operating an “unlawful scheme to misappropriate” Alibaba’s renowned brand name.
1 May 2018   Chinese e-commerce platform Alibaba has failed to secure a preliminary injunction against Dubai-based cryptocurrency firm Alibabacoin Foundation.
12 March 2019   Chinese e-commerce platform Alibaba has reached a worldwide settlement with cryptocurrency company ABBC Foundation, bringing a trademark dispute between the pair to an end.