The currently effective Trademark Law states in article 31 that the application for trademark registration should not infringe the current prior rights other others. However, what if the involved applied trademark belongs to the different category from the cited registered trademark, and has similar graphic design? Does the cited trademark, which has copyright due to the originality of its design, have prior rights as described in article 31 of the Trademark Law? Recently, Beijing Higher People’s Court gave an answer to this question with its ruling to a final trial. The Industrial and Commercial Bank of China Co., Ltd. (ICBC for reference) used the prior copyright of the “Circled 工” it owned and utilized (see picture 1), successfully prevented the registration of the “Circled H” graphic trademark (see picture 2) by Tianjin Shenghao Technology Service Co., Ltd. (Shenghao Company for reference), making ICBC’s core graphic trademark available for defensive registration in its nonessential areas of businesses.
Refusal of Opposition
The source of the dispute, as reported, was the application filed by Shenghao Company for the registration of the “Circled H” graphic trademark mentioned above. ICBC, however, argued that this sign constituted a similar trademark to the priorly authorized “Circled 工” graphic trademark that had already been put into use. The two parties had been fighting over this issue for nearly 10 years ever since.
In August 2002, Shenghao Company filed the registration application for the “Circled H” graphic trademark, on type 42, legal services, computer programming services and related services, of the International Classification Table. Soon afterwards, the “Circled H” trademark went through the initial investigation of the Trademark Office of the State Administration for Industry & Commerce of China (Trademark Office for reference), and entered the public notice phase, during which ICBC filed an opposition.
ICBC applied for the registration for its “Circled H” graphic trademark as early as in 1993, on the type 36 of the International Classification Table, banking services. After renewals of its registration, the valid period was extended till October 2010.
ICBC argued that, the “Circled 工” graphic sign it used was the core trademark of the bank. Since its creation in 1989, it had been used for many years and had obtained high reputation and recognition, domestically and abroad. The “Circled H” trademark registered by Shenghao Company, however, constituted a similar trademark in connected services, to the cited “Circled 工” trademark. This would cause the consumers to confuse the two and harm the profits of the bank. Also, ICBC stated that the “Circled 工” trademark was an originally designed sign and constituted a piece of work under the Copyright Law. The bank held the copyright to it, which was to be protected by the laws. The “Circled H” graphic figure was a plagiarism and imitation of the “Circled 工” figure, infringing the bank’s prior rights.
In October 2008, the Trademark Office held that the associated services of the two involved trademarks were not similar and ICBC’s contention of Shenghao Company’s plagiarism and imitation lacked evidence. Therefore, the “Circled H” was approved for registration.
ICBC was unconvinced by the opposition adjudication and thus applied for a review by the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce of China (the Trademark Review and Adjudication Board for reference). The bank also submitted its evidence of prior copyright that proved its prior ownership to the “Circled 工” figure.
The Trademark and Review and Adjudication Board held that, ICBC could indeed contend its prior rights as the interested party of the graphic copyright of the “Circled 工” figure, on the grounds that the figure had been used as the bank logo of ICBC ever since the completion of its design by Chen Hanmin from the Central Academy of Art and Design in 1989. Through comparing the two figures, the Board considered that two constituted actual resemblance. Since the “Circled 工” trademark of ICBC had been used in advance and possessed popularity, the Board gave the adjudication that Shenghao Company’s actions infringed ICBC’s prior copyright and the “Circled H” graphic trademark would not be approved for registration.
Victory in Two Trials
Shenghao Company was unconvinced by the result of the review and hence filed an administrative litigation
Shenghao Company held that the Trademark Review and Adjudication Board had no right to decide on whether the “Circled H” trademark infringed others’ prior copyright or not, and should cancel its adjudication made beyond its authorized power. In addition, the Company asserted that the “Circled H” trademark represented the letters “H” and “S” of its title and thus had originality. The figure had substantial differences with the “Circled 工” graphic trademark cited by ICBC. Also, the graphic designer of “Circled 工” was Chen Hanmin and ICBC did not possess the right of its exclusively use. Therefore, the Company appealed to the court for the repeal of the adjudication by the Trademark Review and Adjudication Board mentioned above.
After the trials in two People’s Courts, both of them held that, according to article 31 of the Trademark Law, application for trademark registration should not infringe others’ prior rights, which included personal rights and property rights. Copyright was also covered. In this case, because “Circled 工” was the logo Chen Hanmin designed specifically for ICBC, it demonstrated the selection, exclusion and planning and constituted a work protected by the Copyright Law. Since the bank logo was the core symbol of ICBC’s identity and the Bank had been using the logo for 20 years since 1989, ICBC should be recognized as the interested party of the “Circled 工” graphic sign. Also, the Courts held that, ICBC’s contention of Shenghao Company’s infringement on its prior copyrights in the Company’s registration of “Circled H” trademark should be supported. Therefore, the Courts ruled that the previous decision of the Trademark Review and Adjudication Board was legally justifiable and affirmed the adjudicative result that refused the registration of “Circled H”.
On the topic of the case, ICBC’s attorney, Lawyer Zhang Hong of Beijing Janlea Law Firm, in an interview with the reporter of China Intellectual Property News, said that the case provided meaningful guidelines. ICBC used the prior copyright of “Circled 工” to successfully oppose the “Circled H” graphic trademark, which was a rare thing to happen in previous cases, and might therefore become the basis for similar cases that would occur later.
