Vivien Chan & Co - China
The China Trademark Review and Adjudication Board (TRAB) has published its top 20 cases, which provide insights into approaches and trends in decisions and offer brand owners guidance on how to frame their arguments and collect evidence. The key issues are highlighted below.
The fight against trademark squatting
In opposition and invalidation cases, the fact that the registrant or applicant has registered a third party’s famous brand is a strong reason for the TRAB to reject or invalidate the disputed mark. The TRAB relies on Article 44(1) of the Trademark Law, which stipulates that trademarks obtained through “other illegitimate means” should be invalidated.
In the invalidation cases against ‘欧柏莱’ (OU BO LAI) and ‘铃声多多’ (LING SHENG DUO DUO), the TRAB emphasised that the registrant had applied for several trademarks that were identical or similar to famous trademarks owned by others. Such behaviour, which exceeded business need, showed lack of true intention to use the mark and demonstrated an intent to copy and imitate others’ trademarks – all of these are classic signs of obtaining trademarks through illegitimate means.
Further, even though Article 44(1) expressly governs invalidation procedures only, the TRAB applies the same principle to opposition proceedings, such as in the ‘花王绿水’ (HUA WANG LV SHUI) case.
Protection of prior rights
The application of laws relating to prior rights and prior trademarks to reject trademark applications under Article 32 and 30 of the Trademark Law was another focus.
Name of famous novel as prior merchandising rights
Xiao Ao Jiang Hu (笑傲江湖) is a well-known 1960s kung fu novel by Louis Cha, which has been adapted into television dramas, movies and games. An internet company’s registration of the mark ‘新笑傲江湖’ (NEW XIAO AO JIANG HU) with the aim of “providing online games on computer networks; entertainment; etc” was invalidated because it took advantage of Cha’s success and misappropriated the novel’s commercial value. The TRAB granted the invalidation, taking into account the fame of the novel, that there is an established association between the novel and Cha and that the online gaming industry often bases games on novels. The TRAB has recognised the right to merchandise (ie, the right to combine well-known figures and titles of works with goods or services and gain economic benefits through commercial use). As the title Xiao Ao Jiang Hu has a certain reputation that goes beyond the novel itself, if the said mark is used for specific goods or services, the registrant will gain extra business opportunities and value as a result of the association with the novel. The title of the novel was ruled to constitute a merchandising right and should thus be protected by civil law.
The TRAB commented that the prior rights established in Article 32 should be interpreted broadly to include all legal rights under the relevant legislation (including the Civil Law and Tort Law).
Prior name rights
In the invalidation decision against the mark ‘杨幂’ (Yang Mi) for “bread; tea; etc”, the TRAB has reaffirmed the rules for name rights infringement as laid down in the Michael Jordan case, which was handed down by the Supreme People’s Court in December 2016 (read more about the case here). First, the relevant public should recognise that the disputed mark refers to the natural person; second, commercialised use of the name without authorisation may damage the interests of the person.
Yang Mi is a well-known actor in China, whose popularity is evidenced by awards and titles granted by well-known organisations, such as the United Nations. The TRAB ruled that registration of the disputed mark was applied for with the intention of making a profit by using Yang Mi’s fame and influence and should therefore be invalidated.
In the invalidation decision against the mark ‘加德斯’ (JIADESI & DEVICE), the TRAB recapitulated the criteria for determining infringement of prior copyright:
- copyright must be prior to the application of the disputed mark;
- the disputed mark must be identical or substantially similar to the copyrighted work;
- the applicant for the disputed mark must or may have been in touch with the copyrighted work; and
- such use was not authorised by the copyright owner.
In the case at hand, the TRAB took into consideration that both the trademark and copyright owners were in the same industry and located in the same province and thus ruled that the trademark owner could have seen the copyrighted work and that there was infringement of the prior copyright.
Confusion with prior tradenames and prior trademarks
In an invalidation case against the mark ‘震园堂’ (ZHEN YUAN TANG) on retail and wholesale of pharmaceuticals, the two parties in the dispute were located in the same area, which not only caused confusion but also allowed access to knowledge of the prior business. The TRAB considered that as the prior mark '震元堂' (ZHEN YUAN TANG) and tradename ZHEN YUAN of the applicant for invalidation had a high reputation in the medical retail business providing “medicines for human purposes” and “sales promotion [for others]” in the same city as the registrant, the mark in dispute should be considered similar to marks for similar services. The trademark would cause confusion and misidentification and should thus be invalidated.