Summary of Case:

With regard to the no. 6262530 “ ” trademark, which was hold by the third party Weiyin (Hangzhou) Brand Management Co., Ltd. (original applicant: Yuhuan Boge Rubber Co., Ltd.) on “synthetic rubber, rubber shock absorber buffer, clutch pad, rubber and hard fibrous shutter, cylinder connecter, hose connector for vehicle tank, composite for heat radiation prevent, insulation materials, rubber or plastic filling materials, protective rubber sleeve for machine parts” products, the appellant Interparts Industries requested for opposition review against the defendant, the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce. Both the defendant and the first-instance court affirmed the opposed trademark. The appellant was unconvinced by the (2014) Yi Zhong Zhi Xing Chi Zi No. 3324 Administrative Ruling made by Beijing No. 1 Intermediate People’s Court and appealed to Beijing Higher People’s Court.

In this case, during the examination process, the appellant did not submit sufficient evidence to support its contention that it enjoyed the prior copyright. Thus, it was not supported by the Trademark Review and Adjudication Board. During the first-instance trial, the appellant submitted supplementary evidence, including the Copyright Registration Certificate and the product catalog the appellant issued in China. However, the first-instance court still held the position that the registration date of the Copyright Registration Certificate was later than the application date of the opposed trademark. The court also held that other evidence was not sufficient to prove that the appellant enjoyed prior copyright of the opposed trademark before the application date of the opposed trademark. After the analysis and suggestion of the lawyers of Janlea Law Firm, during the second trial, the appellant submitted follow-up evidence to prove the prior copyright it enjoyed, including the notarization certificate of the proof that the involved work had been priorly published, provided by the Automobile Parts Remanufacturers Association, and the original publication. These proved that the involved work had not only been published in the product catalog of the appellant but also been on publications issued by a third party. Meanwhile, lawyers of Janlea Law Firm conducted a thorough commentary and analysis of all the submitted evidence related to the prior copyright in the petition. They connected all the relevant pieces of evidence to support the appellant's contention that it enjoyed the prior copyright of the opposed symbol. Eventually, the second-instance court ruled as follows: “The cited trademark ( ) in this case possessed certain originality and aesthetic value in its selection of figures, the arrangement of figures and letters, and the overall symbol. Therefore, it constituted a work of fine art... Although Interparts Industries acquired the Copyright Registration Certificate of the cited trademark in China at a later date than the application date of the opposed trademark, according to the evidence submitted by Interparts Industries, it can be confirmed that the cited trademark had been completed before the application date of the opposed trademark and that it was likely that Yuhuan Company had been in touch with the work. Moreover, the pictorial and the textual parts of the opposed trademark are completely the same as those of the cited trademark. The two trademarks constituted actual resemblance. Yuhuan Company and Weiyin Company, meanwhile, failed to submit evidence that could have proved that they were authorized to apply the symbol for trademark or that they independently create the symbol. Therefore, the application of the opposed trademark harmed the prior copyright of the cited trademark.”

Hence, the second-trail court ruled to repeal the first-instance ruling and the dispute adjudication, and ruled instead that the Trademark Review and Adjudication Board shall make a new adjudication on the no. 6262530 “ ” trademark opposition review case. The Trademark Review and Adjudication Board ruled that the trademark shall not be authorized for registration.

The legal service team, led by lawyer Li Shuhua and lawyer Wang Qiuxiang of Beijing Janlea Law Firm, provided the complete legal service of the first and second-instance litigations of this case and related cases.

Comment:

In pictorial trademark protection cases, prior copyright should be valued. The acquisition of copyright is not implied by the registration. Therefore, even if the Copyright Registration Certificate is produced after the application date of the opposed trademark, the interested party can still enjoy its prior copyright. In the handling of related cases, one must pay attention to the collection of relevant evidence and the presentation of the evidence (need for notarization certification, etc.), in order to prove that the interested party has completed and published the related works before the application date of the opposed trademark and, thus, enjoys the prior copyright.