Recently, lawyer Zhang Hong and lawyer Li Shuhua of Beijing Janlea Law Firm represented Warner Brothers in the “HARRY POTTER Ha Li Bo Te” series trademarks opposition review administrative litigation, and won in the final trial.

Since 2000 and on, a natural person applied and registered 51 “Ha Li Bo Te / 哈利波特 (Chinese translation) / HARRY POTTER” series trademarks on 21 categories including type 3, 5, 18, 25, 32 and 33. The client filed opposition and opposition review against all of the applications but only 27 of them were taken to the court. 

The series of cases were trialed at Beijing No. 1 Intermediate People’s Court, who ruled that the application and registration of the opposed trademark constituted the “negative influence” situation described in article 10 paragraph 1 item 8 of the Trademark Law. It would not be approved for registration. For five of the litigations brought to Beijing Higher People’s Court, the court gave the final ruling after the trial, and affirmed the first-instance ruling and the adjudication of the Trademark Review and Adjudication Board. As of now, the 10-year-long trademark case involving the natural person’s registration of “Ha Li Bo Te” trademark finally concluded. 

Beijing Higher Court held that, “The negative influence described in article 10 paragraph 1 item 8 of the Trademark Law should be interpreted as the negative and derogative influence of the components of trademark, or of a combination of the trademark and its associated products or services…under the circumstance that Harry Potter is well known as a character in a best-selling novel…the appellant (a natural person), knowing the popularity of this character, applied for the registration of it as the opposed trademark and therefore violated the public tradition of honesty and credibility…the trademark is indeed a symbol of negative influence.”

This case was very meaningful. For a long time, because the name of famous work has not been included in the protection under copyright and does not belong to any other kinds of intellectual property rights, one can only utilize the Anti-Unfair Competition Law to grant it protection in practice. In the application progress of trademark, registration of the name of famous work has been a commonly seen phenomenon, which does not correspond to the terms of the Anti-Unfair Competition Law. Also, since the right of the name of famous work is considered as a private right, it has never been protected under article 10 paragraph 1 item 8 in prior trials. In this case, the Trademark Review and Adjudication Board, the first-instance court and the second-instance court all took into account the public benefits, and investigated the specificity of the reference of the name of the famous work, the subjective bad intention of the infringer and the possible misleading effect on the public brought by the non-owner’s use of the name. They accordingly came to the conclusion that the natural person’s monopolizing registration of the name of the famous work would easily cause negative influence in the society. It offered significant guidance and an practical example for the legal protection in similar future cases.