Prior rights to a work title and character name and its protection in China

By Rieko Michishita

09-2020

With the development and prosperity of the cultural and entertainment industry, many well-known movies, animations, online games and other works are facing increasing intellectual property protection issues. How to prevent trademark squatting and how to attack malicious trademark registration that infringes the prior rights to a work title and character name in the work will be a challenge for all right holders in the new era.

With regard to the prior rights and interests to the title of work and character name in the work, the relevant rules are made in the Trademark Law and the Provisions of the Supreme People’s Court on Several Issues Concerning the Hearing of Administrative Cases Involving Trademark Granting and Validity. Pursuant to Article 32 of the Trademark Law, “an application for trademark registration shall not damage the existing prior rights of others”. The Provisions of the Supreme People’s Court on Several Issues Concerning the Hearing of Administrative Cases Involving Trademark Granting and Validity stipulates under Article 18 that “the prior rights under Article 32 of the Trademark Law include the civil rights or other protectable legitimate rights and interests that the right holder enjoys before the application date of the disputed trademark”, and under Article 22(2) that “for works within the copyright protection period, if the title of work or the character name in the work has a high reputation, and its use as a trademark on the relevant goods is likely to cause the relevant public to misunderstand that such use is licensed by or specifically associated with the right holder, the people's court will rule in favour of the claim that it constitutes prior rights and interests.” Thus, the title of work and the character name in the work can be protected as prior legitimate rights and interests.

According to the Beijing Intellectual Property Court's statistics in June 2020, the Beijing Intellectual Property Court has accepted 20,172 trademark administrative cases and concluded 20,392 since 2019. Among them, 67 cases involving the protection of prior rights and interests to the title of work and character name in the work were concluded, accounting for about 0.3% of the administrative trademark cases concluded in the same period. This type of case has four main characteristics: the work is well known and reaches a wide audience; the title of work is highly "recognizable"; many of the right holders owning such work are foreigners; the scope of protection is highly relevant to daily life and often beyond the areas to which the work belongs, etc.

Below are some selected cases recently heard by the Beijing Intellectual Property Court that relate to the protection of prior rights and interests to the title of work and character name in the work and the relevant cases we represented.

  1. Administrative Dispute over Invalidation Petition against Trademark No. 12342615 “character rights_1” (Class 25)

    The disputed trade mark was applied for registration on 28 March 2013 and granted on 8 February 2017, designated for Class 25 goods "trousers; blouses; skirts; underwear; shoes; hats; T-shirts; down garments". The court of first instance determined that the title of the plaintiff's game software "英雄联盟" and "LEAGUE OF LEGENDS" enjoyed a high reputation among the relevant public, and could be protected as the prior work title. The disputed mark was identical to the English title of plaintiff's work, LEAGUE OF LEGENDS, and was designated for daily necessities in Class 25 and common derivatives of the game LEAGUE OF LEGENDS, with a strong likelihood of exploiting the market reputation based on the prior work or inappropriately harming its commercial interests. The disputed trademark infringes the plaintiff’s legitimate rights and interests to the prior work title.

  2. Administrative Dispute over Invalidation Petition against Trademark No. 4553473 “character rights_2” (Class 25)

    The disputed trademark was applied for registration on 22 March 2005 and granted on 28 December 2009, designated for Class 25 goods "shoes; boots; wooden shoes; sports shoes; sports boots; high boots; bathroom slippers; shoe uppers; heels". The court of second instance determined that the evidence in the case can all prove that the animation titled "铁臂阿童木 Astro Boy" and the character "Astro Boy" achieved a certain level of popularity. Both "铁臂阿童木" and "阿童木" can be protected as the prior work title and the character name in the prior work. Although the Tezuka Productions Company (the respondent and the plaintiff in the first instance) had not used the image of Astro Boy on shoes and other goods prior to the application date of the disputed trademark, considering that the goods such as shoes are daily necessities, Atongmu Company (the third party in the first instance) was sure to exploit the market reputation based on the prior work title and the character name or inappropriately harm the commercial interests of the Tezuka Productions Company in selling shoes and other goods using the disputed trademark . The application for registration of the disputed trademark was detrimental to the prior rights and interests of the Tezuka Productions Company (the respondent and the plaintiff in the first instance).

  3. Administrative Dispute over Invalidation Petition against Trademark No. 18379954 “character rights_3” (Class 33)

    The disputed trademark was applied for registration on 19 November 19 2015 and granted on 8 May 2018, designated for Class 33 goods "fruit extracts (alcoholic); distilled beverages; wines; spirits (beverages); alcoholic essences; alcoholic beverages (other than beer); premixed alcoholic beverages (other than beer-based); liquor; edible alcohol; spirit". The court of first instance determined that the plaintiff's game titled "王者荣耀 Honor of Kings" had received a high number of search clicks and widespread attention within a short period following its launch, and had achieved a high popularity. "王者荣耀" as the title of the game is also well known to the relevant public and can be protected as the prior right and interest to the title of work.

  4. Invalidation Petition against Trademark No. 16714129 “character rights_4” (Class 3)

    The disputed mark was applied for registration on 15 April 2015 and granted on 8 June 2016, designated for Class 3 goods "shampoo; cleansing lotion; soap; face wash; bath soap; cosmetics; perfume; deodorant for personal or animal use; sunscreen; toothpaste". The National Intellectual Property Administration (CNIPA) determined that "王牌特工 KINGSMAN" as the title of the applicant's movie already had a high reputation, and that such a movie title with a prior reputation should be protected as a prior right. The respondent's registration and use of the disputed trademark on the goods such as shampoo and cleansing lotion has the purpose of improperly exploiting the applicant's movie title for profit, which may improperly damage the applicant's commercial value or business opportunity arising from such reputation.

  5. Administrative Dispute over Invalidation Petition against Trademark No. 18197167 “character rights_5” (Class 9)

    The disputed mark was applied for registration on 29 October 2015 and granted on 28 June 2017, designated for Class 9 goods "downloadable computer software applications; computer programs (downloadable software); computer software (recorded); computer game software; interfaces for computers; computer peripherals; computers; eyeglasses; non-medical x-ray generators and equipment; radio equipment". The court of first instance determined that "三生三世十里桃花" as the title of novel was already known to the relevant public and had a high reputation. The disputed trademark is the word mark "三生三世十里桃花" in ordinary font, designated for the goods such as "downloadable computer software", and is closely related to the coverage of novel derivatives in the current commercial environment and the scope of license obtained by the plaintiff's affiliates, which will easily lead the relevant public to misunderstand that it is licensed by or specifically associated with the right holder of the novel and hence affect the relevant public's perception of the source of the designated goods.
  6. Administrative Dispute over Invalidation Petition against Trademark No. 13247892 “character rights_6”(Class 10)

    The disputed mark was applied for registration on 16 September 2013 and granted on 8 January 2015, designated for Class 10 goods "teething rings; baby bottles; breast pumps; soothers for babies; bottle valves; nipples for bottles". The court of first instance determined that the evidence submitted by the third party (Aardman Animations Ltd.) can prove that before the application date of the disputed trademark, the cartoon "Shaun the Sheep" already had a high reputation, and that "Shaun the Sheep" had established unique correspondence with the title of the work and character name "Shaun the Sheep" and was widely known to the relevant public. The disputed mark is designated for Class 10 goods such as "baby bottles" which are commonly-used baby and child care products, highly overlapping with the target audience of cartoon, and is also the common derivatives from children's films and TV shows. The application for registration of the disputed trademark constitutes an act that damages the prior rights of others under Article 32 of the Trademark Law.

In light of the above court judgments and the CNIPA's decisions, the following factors should be taken into account in determining whether the title of work and character name are the protectable legitimate rights and interests under Article 32 of the Trademark Law: 1. whether the title of work and the character name have a high popularity; 2. similarity between the title of work or the character name and the disputed trademark; 3. similarity/overlap of the designated goods or services using the disputed mark with the work and its derivatives; 4. whether its use as a trademark is likely to make the relevant public to mistake that such use is authorized by or specifically associated with the owner of the work.

Generally, the title of work and the character name in the work that receive protection are more popular and recognizable, having a wider audience. In most cases, the disputed trademark is identical/highly similar to the title of work and the character name in the work in terms of words and visual effects. The designated goods/services using the trademark are daily necessities or common derivative products (such as Class 25 clothing and footwear, Class 3 cosmetics, Class 33 alcoholic beverages, etc.), or products that are highly associated with the title of work and the character name in the work (such as Class 10 commonly-used baby and child care products which are highly overlapped with the target audience of the cartoon “Shaun the Sheep”, and are also common products derived from children's films and TV shows). Based on the above, the registration and use of the disputed trademark is likely to mislead the relevant public into believing that the use of the disputed trademark is authorized by or specifically associated with the right holder, thus squeezing the market for the goods or services usually derived from the title of work and the character name in the work and causing losses of trading opportunity and commercial interests to the right holder.

In order to better protect the title of work and character name in the work, a right holder should first take the initiative to apply for registration of its trademark in the relevant classes, covering the classes of common derivatives associated with the title of work and the character name in the work and other greatly relevant classes, so as to ensure that the trademark is under protection. Meanwhile, the right holder should actively collect evidence of commercial publicity and commercial use related to the title of work and the character name in the work and, in the case of trademark squatting, actively claim and prove that the title of work and the character name in the work have a high reputation attributed to the creative efforts of the right holder. The commercial value and opportunities of the work are also the result of the right holder's huge investment of labour and capital. Therefore, the title of work or the character names therein has a certain level of popularity, no longer limited to the work itself, and can be combined with specific business entities or commercial actions. When the relevant public attribute their perception and emotion about the work to the title of work or characters, the right holder can obtain commercial value and trading opportunities in addition to distribution of the work, then the title of work or the characters and names in the work can constitute the protectable prior rights and interests included in the "prior right" under Article 32 of the Trademark Law.