Case no. (2017)JINGXINGZHONG2660
Appellant (plaintiff in the original trial): D.H.A Siamwalla Ltd. (Siamwalla)
Appellee (defendant in the original trial): Trademark Review and Adjudication Board of State Administration for Industry & Commerce (TRAB)
On November 28, 2006, the disputed mark “MASTERART and devices of lion and badge” (see image below) was filed by an individual named Zhang, the legal representative of a Stationery company in Tianjin, for use on pencils and erasers related products under Class 16. The Chinese Trademark Office (CTMO) preliminarily approved this mark on July 13, 2009.
On October 16, 2009, Siamwalla, the famous Thai company manufacturing stationery products, filed an opposition before the CTMO claiming that the disputed mark has infringed its prior copyright over the artwork “MASTERART and devices of lion and badge and outline border”.
On October 17, 2011, the CTMO made the decision to approve the registration of the disputed mark. Siamwalla was dissatisfied and filed a review before the TRAB on November 29, 2011. Unfortunately for Siamwalla, the TRAB held the decision to approve the registration of the disputed mark on December 23, 2013.
Siamwalla appealed the TRAB decision to the No. 1 Intermediate People’s Court of Beijing, but the Court dismissed the claims of Siamwalla. Then on May 19, 2017, Siamwalla appealed to the Beijing High Court.
The dispute focus is whether Siamwalla enjoys the prior copyright over the artwork “MASTERART and devices of lion and badge”.
【Opinions of Court of Final Appeal】
Beijing High Court held that, the Siamwalla’s copyright work constituted artwork protected by Chinese Copyright Law; although the registration date of Siamwalla’s artwork stated on the copyright registration certificate was later than the application date of the disputed mark, however, the evidences Siamwalla adduced, such as Thai trademark registration certificates in year 1999, 2002 and purchase orders with Chinese companies on stationery products, proved that Siamwalla had created and published said artwork prior to the application date of the disputed mark; in addition, compared with Siamwalla’s artwork, the disputed mark only deleted the outline border, and they are identical on font of English letters, shape of lion, badge and structure of the appearance, so the disputed mark is substantially similar to Siamwalla’s prior artwork, thus, the disputed mark had infringed Siamwalla’s copyright and therefore should not be approved for registration.
The Beijing High Court rendered judgment in favor of Siamwalla setting aside the first instance court’s judgment and the TRAB’s decision, and ordering TRAB to make a new decision。
In a trademark trial case concerning prior copyright, the difficulty for the right owner is to prove it enjoys the copyright of a work and the work is created and published before the application date of the disputed mark. The copyright owner shall preserve solid records and ownership evidences, including the sketch drafts, manuscripts, assignment agreements and other related materials for this artwork, and make the copyright registration as earlier as possibly. The copyright registration certificate obtained after the disputed trademark’s application date may be less convincing or even disregarded.
Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases involving Trademark Authorization and Confirmation
Art. 19 : Where a party claims the disputed mark infringe its prior copyright, the Court shall, according to the provisions of the Copyright Law and related laws, examine whether the claimed object constitutes work, whether the party is the owner or interested party of the work, and whether the disputed mark infringes the copyright work. If the mark design is a work protected by the Copyright Law, the sketch drafts, manuscripts, assignment agreements, and in particular copyright registration certificates issued before the application date of the disputed trademark etc., could be used as prima facie evidence. The prior trademark gazettes or registration certificates could also be preliminary evidence where the trademarks applicants claim interests in the copyrights of the trademark design.