Judgment Gist
When applying for a trademark, the trademark owner shall not prejudice the prior rights of others, and shall fulfill the obligation of reasonable avoidance. However, considering that the trademark right has not been acquired at the time of application, the judicial interpretation, in combination with the practical situation, extended the effective time node of the prior right from the application date to the date of approval for registration at the latest, that is, the time node for judging whether there is a legal prior right is the trademark registration date at the latest.
Although the term of protection of the prior copyright has expired now, the prior copyright was still valid when the application of the trademark in dispute was filed and when the trademark was approved for registration. During the period of retrial, although the copyright as the prior right was lost due to the expiration of the term of validity, this did not change the fact that the right was valid and shall be protected by law when the trademark in dispute was approved for registration. If, on the ground of change of circumstances, the accused decision was revoked and the administrative organ was required to make a new decision, allowing the applicant to obtain the registration of the trademark in dispute while impairing the prior copyright of others, it would result in a conflict of rights and undermine the principle of good faith advocated by the Trademark Law.
Case Information
Case Summary
The trademark "象球牌FUMAKILLA & device " (Xiang Qiu Pai – “Xiang Qiu Brand” in Chinese) No. 11047169 (hereinafter referred to as the "trademark in dispute") was applied for registration by Xiamen Xiangqiu Daily Chemical Co., Ltd. (hereinafter referred to as the "Xiangqiu Company") to the Trademark Office on June 8, 2012. It was approved for registration on the goods of detergents, cleaning preparations, etc. in class 3 by the Trademark Office on December 21, 2015.
On July 4, 2016, FUMAKILLA LIMITED (hereinafter referred to as "FUMAKILLA") filed a request for invalidation of the trademark in dispute, on the grounds that the trademark in dispute infringed FUMAKILLA's prior copyright of "elephant image". On April 25, 2017, the former Trademark Review and Adjudication Board issued Shang Ping Zi [2017] No. 43759 Decision on the Request for Invalidation of “象球牌FUMAKILLA & device” (Xiang Qiu Pai – “Xiang Qiu Brand” in Chinese) No. 11047169 (hereinafter referred to as the "accused decision"), holding that the registration of the trademark in dispute has damaged the prior copyright of FUMAKILLA, and determined that the trademark in dispute should be invalidated.
Unsatisfied with the accused decision, Xiangqiu Company filed a lawsuit to Beijing Intellectual Property Court (hereinafter referred to as "the court of first instance"). The court of first instance held that the work of “elephant image” on which FUMAKILLA claimed it enjoyed prior copyright met the originality requirements of works by the copyright law and constituted a work of art protected by the Copyright Law. The evidence in the case can prove that FUMAKILLA enjoyed the prior copyright of the “elephant image” and has published it before the date of application for the trademark in dispute. Xiangqiu Daily Chemical Co., Ltd. also admitted that it had access to the above work. The device part of the trademark in dispute was identical with the work claimed by FUMAKILLA. Having the trademark right did not necessarily mean having the corresponding copyright of the trademark logo. In addition, at the time of application for the trademark in dispute, the work of art on which FUMAKILLA enjoyed prior copyright did not exceed the period of work protection specified in the Copyright Law. Therefore, the registration of the trademark in dispute damaged the prior copyright of FUMAKILLA and violated the provisions of “shall not damage the existing prior rights of others” prescribed in Article 32 of the Trademark Law.
Accordingly, the court of first instance dismissed the claim of Xiangqiu Company. Xiangqiu Company was still unsatisfied and appealed to Beijing High People's Court (hereinafter referred to as "the court of second instance"). The court of second instance basically hold the same opinions as the court of first instance that at the time of applying for the trademark in dispute, the work of "elephant image" on which FUMAKILLA enjoyed prior copyright did not exceed the term of work protection specified in the Copyright Law, and the registration of the trademark in dispute damaged the prior copyright of FUMAKILLA. Accordingly, the court of second instance dismissed the appeal and upheld the judgment of first instance. Xiangqiu Company was unsatisfied and applied to the Supreme People's Court for retrial, arguing that the "upon approval of registration" stipulated in the Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases Concerning the Granting and Confirmation of Trademark Rights (hereinafter referred to as the "Judicial Interpretation on Granting and Confirmation of Trademark Rights") should include the court trial stage.
The Supreme People's Court held that when applying for a trademark, the trademark owner shall not prejudice the prior rights of others, and shall fulfill the obligation of reasonable avoidance. However, considering that the trademark right has not been acquired at the time of application, the judicial interpretation, in combination with the practical situation, extended the effective time node of the prior right from the application date to the date of approval registration at the latest, that is, the time node for judging whether there is a legal prior right is the trademark registration date at the latest. The claim of Xiangqiu Company that "upon approval of registration" should be interpreted as all the administrative and judicial stages when determining whether the trademark in dispute can be "approved for registration" cannot be established. Although the period of protection of the prior copyright of FUMAKILLA expired on December 31, 2019, the prior copyright of FUMAKILLA was valid when the trademark in dispute was applied and approved for registration. During the period of retrial, although the copyright as the prior right was lost due to the expiration of the period of validity, this did not change the fact that the right was valid and shall be protected by law when the trademark in dispute was approved for registration. If, on the ground of change of circumstances, the accused decision was revoked and the administrative organ was required to make a new ruling, allowing the applicant to obtain the registration of the trademark in dispute while impairing the previous copyright of others, it would result in a conflict of rights and undermine the principle of good faith advocated by the Trademark Law.
Accordingly, the Supreme People's Court ruled to dismiss the retrial request of Xiangqiu Company.
Attorney’s Opinion
This case was selected into the Annual Report of the Supreme People's Court on Intellectual Property Cases (2020), which mainly involved the determination of "upon approval of registration" mentioned in the Judicial Interpretation on Granting and Confirmation of Trademark Rights, as well as the exceptions to the application of the principle of change of circumstances. As the attorney of FUMAKILLA, our firm has represented all the stages of this case and won the lawsuit.
Article 18 of the Judicial Interpretation on Granting and Confirmation of Trademark Rights stipulates that "the prior rights specified in Article 32 of the Trademark Law include the civil rights or other legitimate rights and interests enjoyed by the parties prior to the date of application for the trademark in dispute. If the prior rights no longer exist upon approval of registration of the trademark in dispute, the registration of the trademark in dispute shall not be affected". There are two time nodes to determine validity of the prior rights, namely "prior to the application date" and "upon approval of registration".
The Supreme People's Court pointed out that, returning to the original intention of the Trademark Law, Article 32 of the Trademark Law aims to avoid the conflict of rights between the applicant's trademark rights and others' prior rights, and at a deeper level, it reflects the principle of good faith advocated by the legal values. In the respect of honest operation of trademark owners, they should not damage others' prior rights when applying for trademarks, and should fulfill their obligation of reasonable avoidance. Considering that the applied trademark has not acquired the trademark right, the time node for judging whether the prior right exists is the registration date at the latest, that is, the meaning of "upon approval of registration" is clear and definite, and the time node for judging whether there is a legal prior right is the approval date for trademark registration at the latest.
In addition, the court may apply the principle of change of circumstances, revoke the relevant decision made by the China National Intellectual Property Administration based on the new facts, and order it to make a new decision based on the changed facts. The above provisions are based on the pursuit of substantive justice, allowing the court to make judgment based on the changed facts under specific circumstances. The application of this clause is not unconditional, and specific judgment should be made according to the facts of the case. If the application of the principle of change of circumstances will undermine the principle of good faith advocated by the Trademark Law, the relevant claims cannot be supported.
Link of the Case Judgments:
Second instance:
https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?docId=80faf711d6534be7987aaae7002bb4f1
Retrial:
https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?docId=7c7e22ed8caf460f9710ac7d0123354b
