When handling a dispute between trademark and copyright, Chinese courts always apply a rather high standard to determine whether works protected under trademark law will also receive protection under the copyright law. Our website previously discussed this question in the posts Analysis on Proof Requirements in Figurative Trademark Infringing Others’ Copyright Cases by China Court and Why the Calligraphic Character’s Copyright Failed to Defeat Trademark Right.Today, we’d like to introduce a case regarding conflicts between a work of fine art and a trademark, due to the identical combination of Chinese characters and English letters.

Introduction to the Case:

On December 29, 2003, the Pingping Food Factory applied for registration of a combination trademark “卫龙Weilong” (the “disputed trademark”) numbered 3864004 under class 30 for popcorn and shrimp-flavored snacks. Following this, the disputed trademark was then awarded to the Pingping Food Company following registration approval from the Trademark Office. In 2008, Pingping Food Company applied for registration of its copyright in“卫龙” (pronounced “wei long”) with the Copyright Office in Henan province. The registering documents provided that Pingping Food Company was the author and enjoyed ownership of works with the name “卫龙” .

In 2005, Mr. Huang Jinzhong filed an application for the combination trademark “卫龙Weilong,” numbered 50811454 under class 30 for fine dried noodles and rice flour (in China, identical marks can be registered under different classifications pursuant to the trademark law), and applied with China’s National Copyright Administration to register its works “卫龙” for copyright in 2009.The works publication date was listed as March 11, 2002, and a first publication date of March 16, 2002.

Subsequent to the registration of his work, Mr. Huang Jinzhong brought a suit to the Chaozhou Intermediate People’s Court of Guangdong Province, submitting his copyright certificate and copy of source documents about his works’ registration with the Health Administration of Cangnan County, as well as his individual business license, which he received in 2002. The Chaozhou Intermediate People’s Court, upon hearing the case, decided that Mr. Huang Jinzhong enjoyed copyright in his “卫龙”works and that Pingping Food Company had therefore infringed upon his copyright.

Following this, Mr. Huang Jinzhong filed an application for revoking the registration of the disputed trademark with the Trademark Review and Adjudication Board (the “TRAB”), in accordance with a binding judgment obtained by the Chaozhou Intermediate People’s Court. Pingping Food Company then brought the dispute to the Beijing No.1 Intermediate People’s Court due to its dissatisfaction with the revocation of its trademark.

After hearing the case, pursuant to Article 31 of the Trademark Law, stipulating “the trademark application shall not infringe upon another party’s prior existing rights, and shall also not be a means to register a mark that is already in use by another party and enjoys substantial influence,” the court upheld that, where Mr. Huang Jinzhong claimed that Pingping Food Company’s trademark registration infringed its copyright for his“卫龙Weilong” works, any of the following requirements must be proved:

First, the“卫龙Weilong” mark shall constitute works protected by the Copyright Law.

Next, Mr. Huang Jinzhong is the owner of these named works.

Third, Mr. Huang Jinzhong’s works were completed earlier than the day the disputed trademark was registered, and Pingping Food Company would have contact or potential contact with Mr. Huang Jinzhong’s works.

Fourth, the disputed trademark was identical to, or substantially similar with his works.

The court held that the trademark “卫龙Weilong ”in this case is composed of the Chinese Characters “卫龙”and several English letters, spelled out as “Weilong” in a simple arrangement utilizing a common writing style. Although the mark contained a stylized letter “W”, this artistic styling was not considered sufficiently original as a creative work to qualify for protection under the Copyright Law. Therefore, the court determined the “卫龙Weilong” marks did not meet the criteria to be considered a “fine art” within the scope of the Copyright Law.

Even though the disputed trademark received protection as a work of fine art, Mr. Huang Jinzhong could not prove he was the owner of the works in question. In addition, nothing definitively proved that the works in question were finished earlier than that of Pingping Food Company, or that Pingping Food Company had been in contact with or was likely to come into contact with the works registered by Mr. Huang Jinzhong. Because of this, Mr. Huang Jinzhong’s claims of copyright infringement against Pingping Good Company failed. Therefore, the court repealed the TRAB’s decision to revoke the disputed trademark.

Dissatisfied with this judgment, Mr. Huang Jinzhong appealed. The court in the second instance, however, rejected his appeal and affirmed the judgment of the first instance court.

Lawyers’ Comments:

In our previous Analysis on Proof Requirements in Figurative Trademark Infringing Others’ Copyright Cases by China Court and the post Why the Calligraphic Character’s Copyright Failed to Defeat Trademark Right, we discussed the rather stringent requirements of the Beijing No.1 Intermediate People’s Court, the Beijing Higher People’s Court and the Supreme People’s Court in regard to whether works utilized as trademarks can also be protected pursuant to the Copyright Law when there is a conflict between trademark and copyright. Their judgments are likely to indicate that some common designs and typefaces are not protected by the Copyright Law.

This case has a similar problem. There is key evidence, e.g., the copy of source documents for the works’ copyright registration with the Health Administration of Cangnan County shown in the judgment handed down by the Chaozhou People’s Court, proving recognition of copyright protection for Mr. Huang Jinzhong’s works. However, the Beijing No.1 Intermediate People’s Court and the Beijing Higher People’s Court, sticking with their own criteria for the copyright protection of works of fine art, applied strict demands for ingenuity and originality, and finally determined that the “卫龙Weilong” works would receive copyright protection due to non-conformity to the definition of works of fine art in the Copyright Law.

Article 31 of the Trademark Law provides that a trademark application shall not infringe upon another party’s prior existing rights, and shall also not be a means to register a mark that is already in use by another party and which enjoys substantial influence. In relation to a dispute between trademark and copyright, one may take two approaches to revoke a squatting trademark: one is to demonstrate that the trademark squatter damages its prior existing right, such as copyright; and the other one is to prove that the mark was already in use before registration of the other and obtained substantial influence.

In this world, there are no two leaves that are totally the same. If a registered trademark is the same as another’s previous works, there is no doubt that this registered mark copied from that work. With regard to copycats, the correct way is to say “no”. On the contrary, current courts impose high thresholds to determine whether the Copyright Law shall protect the works. This is obviously problematic.

We believe such high standards for recognition as a work probably reflect the same values used in determining similar cases that prefer to side with a trademark squatter as opposed to the actual owner of the mark. Observing these values, we can see how such an outlook blatantly disadvantages foreign trademark and copyright holders. After many well-known brands have been registered in China, foreign companies suffering losses typically cannot prove these registered brands are already in use and enjoy substantial influence, because many of these branded products are never sold on the Chinese market. At this time, prior existing copyright is becoming a unique weapon to win a trademark right against a previously registered one. However, because China’s courts are currently enforcing such a high degree of originality and ingenuity for works of fine art, foreign companies are thus finding it ever more difficult to properly defend their trademarks.

 

Lawyer Contacts:

You Yunting：86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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