Prior right of work title and character name and its protection

By Rieko Michishita, Catherine Feng, Willa Wang

11-2020

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 infringement and how to attack trademark squatters that infringe the prior rights of work titles and character names in these works will be a challenge for all right holders in the new era.

With regard to the prior rights and interests of titles of works and character names in the works, the relevant rules are provided in the Trademark Law of the People’s Republic of China (the “Trademark Law”) and the Provisions of the Supreme People’s Court on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights (the “SPC Provisions”). According to Article 32 of the Trademark Law, “an application for trademark registration shall not damage the existing prior rights of others”. Article 18 of the SPC Provisions stipulates that “the prior rights under Article 32 of the Trademark Law include the civil rights or other legitimate rights and interests that the parties enjoyed before the application date of the disputed trademark”, and under Article 22 (2) of the SPC Provisions, “for works within the copyright protection period, if the title of the work or the name of the character in the work has a high reputation, and its use as a trademark on the relevant goods is likely to cause the public to misunderstand that it has been licensed by the right holder or the right holder has a specific connection, the people's court will support the claim that it constitutes prior rights and interests.” Thus, the titles of the works and the names of characters in the works can be protected as prior legitimate interests.

According to the Beijing Intellectual Property Court's report published in June 2020, the Beijing Intellectual Property Court has received 20,172 trademark administrative cases and concluded 20,392 cases since 2019. Among these cases, 67 cases involving the protection of prior rights and interests in the titles of works and character names in works were concluded, accounting for about 0.3% of the administrative trademark cases concluded in the same period. This type of cases has four main characteristics: the work is well known and reaches a wide audience; the title of the work is highly "recognizable"; there is a number of foreign right holders in the work in question; the scope of protection is highly relevant to daily life and extends beyond the areas to which the work belongs, etc.

With reference to the recent cases heard by the Beijing Intellectual Property Court on the protection of prior rights and interests in the titles of works and character names in works and the related cases we represented, we set out below make our analysis and conclusions.

1. Administrative Dispute of No. 12342615 “trademark 6” Trademark (Class 25) Invalidation Request

The trade mark at issue was applied for registration on 28 March 2013 and the registration was granted on 8 February 2017, designated for use on goods in Class 25 "trousers; blouses; skirts; underwear; shoes; hats; T-shirts; down garments". The court of first instance found that the plaintiff's names "英雄联盟" and "LEAGUE OF LEGENDS" enjoyed high reputation among the relevant public, and could be protected as the title of prior works. The mark in question was identical to the title of the plaintiff's works in English, “LEAGUE OF LEGENDS”, and was designated for use in Class 25 of daily necessities and common derivatives of the game LEAGUE OF LEGENDS, with a strong likelihood of borrowing the market reputation created by the prior works and inappropriately harming the plaintiff’s commercial interests. The trade mark in question infringes the legitimate interests of the title of plaintiff’s prior works.

2. Administrative Dispute of No. 4553473 “trademark 2” Trademark (Class 25) Invalidation Request

The trade mark at issue was applied for registration on 22 March 2005 and the registration was granted on 28 December 2009, designated for use in Class 25, "shoes; boots; wooden shoes; sports shoes; sports boots; tall boots; bathroom slippers; shoe uppers; heels". The court of second instance found that the evidence in the case proved that the comic "Astro Boy" and the character "Astro Boy" achieved a certain degree of popularity. Both the comic "Astro Boy" and the character "Astro Boy" can be protected as the title of prior works and as the character name in the prior works. Despite Tezuka Productions Company (the appellant and the plaintiff in the first instance) has not used the image of Astro Boy on shoes and other goods prior to the filing date of the trademark application, Astro Boy (the third party in the first instance) must have borrowed the title of prior works and the character name by selling shoes and other goods bearing the disputed trade mark and improperly damaged the other party's commercial interests. The application for registration of the disputed trade mark was detrimental to the prior rights and interests of the Tezuka Productions Company (the appellant and the plaintiff in the first instance).

3. Administrative Dispute of No. 18379954 “trademark 1” Trademark (Class 33) Invalidation Request

The trade mark at issue was applied for on November 19, 2015 and registered on May 8, 2018, and is designated for use in Class 33, "fruit wines (including alcoholic drinks); distilled beverages; wines; spirits (beverages); raw alcoholic beverages; alcoholic beverages (excluding beer); premixed alcoholic beverages (excluding beer-based drinks); liquor; edible alcohol; spirit". The court of first instance found that the plaintiff's game "Honor of Kings" had gathered high search hits and widespread attention in a short period of time at the beginning of its launch, and had achieved high popularity. "Honor of Kings" as the title of the game is also well-known to the relevant public and can be protected as a prior interest in the title of the work.

4. Administrative Dispute of No. 16714129 “trademark 5” Trademark (Class 3) Invalidation Request

The disputed mark, for which registration was applied for on 15 April 2015 and granted on 8 June 2016, is designated for use on goods in Class 3 "shampoo; cleansing lotion; soap; face wash; bath soap; cosmetics; perfume; deodorant for personal or animal use; sunscreen; toothpaste". The State Intellectual Property Office of the People's Republic of China (SIPO) found that "王牌特工 KINGSMAN" as the name of the applicant's movie had already gained a high reputation, and that it should be protected as a prior right as the name of a previously known movie. The respondent's use of the disputed trademark registration on goods such as shampoo and cleansing lotion has the purpose of improperly exploiting the applicant's film name for profit, which may improperly damage the applicant's commercial value or business opportunity arising from such reputation.

5. Administrative Dispute of No. 18197167 “trademark 4” Trademark (Class 9) Invalidation Request

The disputed mark, for which registration was applied for on 29 October 2015 and granted on 28 June 2017, is designated for use in Class 9, "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 found that "三生三世十里桃花" as the title of the novel was already known to the public and had a high reputation. The disputed trade mark is the word mark "三生三世十里桃花" in ordinary font, and the approved use of the mark on "downloadable computer software" and other goods is closely related to the coverage of novel derivatives and the scope of authorization obtained by the plaintiff's affiliates in the current commercial environment, which will easily mislead the relevant public into believing that such use has been licensed by the right holder of the novel or such goods have a specific connection with the right holder, causing confusion to the the relevant public's perception of the source of the approved goods.

6. Administrative Dispute of No. 13247892 “trademark 3” Trademark (Class 10) Invalidation Request

The disputed mark, for which registration was applied for on 16 September 2013 and granted on 8 January 2015, is designated for use in Class 10 for "teething rings; baby bottles; breast pumps; soothers for babies; bottle valves; nipples for bottles". The court of first instance found that the evidence submitted by the third party (Aardman Animations) could prove that before the application date of the disputed trade mark, the cartoon "Shaun the Sheep" had already gained a high reputation, and that "Shaun the Sheep" had established a unique correspondence with the title of the work and character names of "Shaun the Sheep", and was widely known to the public. The disputed mark is designated for use in Class 10 for "baby bottles" and other goods which are commonly-used baby and child care products. Such products are common products derived from children's films, cartoons or TV shows and thus there is a high degree of overlap in terms of the target audience. The application for registration of the disputed trade mark constitutes an act that damages the prior rights of others under Article 32 of the Trademark Law.

In light of the above court decisions and the rulings of the State Intellectual Property Office, the following factors should be taken into account to determine whether the titles of works and character names are legitimate rights and interests protected under Article 32 of the Trademark Law: 1. whether the title of the work and the name of the character have a high profile; 2. similarity between the title of the work or the character name and the disputed trade mark; 3. similarity/cross-over between the goods or services authorized by the mark at issue and the products that may be derived from the title of the work and the character name in the work; 4. whether its use as a trade mark is likely to cause the public to believe that it has permission from the owner of the work or has a particular connection with the owner.

Generally, the title of work and the character name that receive protection are more recognizable and have a wider audience. In most cases, the trade mark at issue is identical/highly similar to the title of the work and the character name in the work, as well as to the wording and visual effects of the work. The goods/services designated to use the trade mark are usually daily necessities or common derivative products (e.g. Class 25 – clothing and footwear, Class 3 – cosmetics, Class 33 – alcoholic beverages, etc.), or products that are highly associated with the title of the work and the character name in the work (such as Class 10 – commonly-used baby and child care products, which have a high degree of overlap in terms of the target audience related to the cartoon “Shaun the Sheep”, and which are also common products derived from children's films, cartoons or TV shows). Based on the above, the registration and use of the disputed trade mark is likely to mislead the relevant public into believing that the use of the trade mark has been licensed by the right holder or there is an existence of a specific connection with the right holder, squeezing the market for the goods or services usually derived from the title of the work and the character name in the work, reducing its trading opportunities, preying on its commercial interests and causing losses to its right holder.

In order to better protect the title of the work and character name in the work, right holders should take the initiative to apply for registration of the trade mark in the relevant classes, covering the categories of derivative goods or services commonly associated with the title of the work and the character name in the work, as well as other categories that are highly relevant. The right holder should also actively collect evidence of commercial publicity and commercial use related to the title of the work and the character name in the work, and actively claim and prove that the title of the work and the character name in the work have a high reputation which is attributable to the creative work of the right holder, and that the commercial value and opportunities brought by the work are the result of the right holder's investment of a lot of labour and capital. Therefore, if the titles of the work or the images and names of the characters therein, have gained a certain popularity and are no longer limited to the work itself, but can be associated with specific commercial entities or commercial activities, and the relevant public will project their knowledge and emotions about the work on the title of the work or the characters in the work so that the right holder obtains commercial value and trading opportunities beyond the distribution of the work, then the titles of the work or the images and names of the characters in the work constitute prior rights and interests that are protected under Article 32 of the Trademark Law.


Reference:
1. (2018)京73行初10121号
2. 商评字[2020]第0000027765号
3. (2018)京行终1245号
4. (2019)京73行初4925号
5. (2019)京73行初10328号
6. 《商标注册应该尊重作品名称在先权益 北京知识产权法院解读相关考量因素》,北京知识产权法院,2020-06-22
7. 《“作品名称在先权益保护”典型案例》,北京知识产权法院,2020-06-19