HongFangLaw ~ Chinese IP Law Updates ~ n’ 43
11 January 2018

Invalidation of the “PRINS” preemptive trademark
Trademark Rights Confirmation case based on the application of Trademark Law art. 32 [“copyright” as a “prior right”]

Source Materials:

TRAB Decision: SPZ [2017] No. 0000114762 on the Application for Invalidation of No.13042896 “PRINS” Trademark

TRAB Decision: SPZ [2017] No. 0000114765 on the Application for Invalidation of No. 13042897 “PRINS” Trademark

Concerned Parties:

Applicant: Verkade Veenendaal B.V.

Respondent: Zhuhai Duopu Kang Food Science and Technology Co., Ltd. (referred to as “Duopu Kang”)

Case Handled by:

Kayla Sun, HongFangLaw

Case Overview:

被申请商标

Applied Trademark

申请人在先美术作品

Applicant Prior Mark

prins prins 2

In many cases, for determining whether a copyright is considered as a prior right for trademark opposition and invalidation, the standards of trials run by the Trademark Office and the TRAB differ from one another. In the latest judicial interpretation of how to determine trademark rights, during the trademark application, prior copyright evidence is clearly taken into consideration. Yet currently, how the Trademark Office, the judges, and the court apply the law in this situation remains divisive. In this particular case, the TRAB took as an important evidence of copyright ownership the “Benelux trademark application records” and the “Global Trademark Application” of the design works of the applicants, instead of limiting the evidence to “design of manuscripts, originals, acquisition of rights contract” and so on. Compared with precedents, this is an important breakthrough in this case, reflecting the TRAB’s position on whether trademark applications can be evidence of copyright ownership.

Court’s opinions:

In the invalidation procedure of this case, HongFangLaw, assisting Verkade Veenendaal B.V. with the support of the Trademark Review and Adjudication Board, successfully invalidated the trademark registrations stolen by Duopu Kang, also a pet product manufacturer.

The TRAB holds that:

The proof of ownership, works specification, designer’s statement, Benelux trademark application and global trademark application registration, and the evidence of the work published, prove that the PRINS design owned by Verkade Veenendaal B.V., is in line with China’s “Copyright Law” provisions of the work of originality requirements. The recently applied controversial trademark and the original graphic logo copyright of the applicant display several relevant similarities, with its composition of the elements involved, and its overall appearance. Considering then, that the respondent did not submit evidence to prove that it had the prior right to the trademark during the dispute and did not state any reasonable source of creation, it should be concluded that the applicant’s earlier copyright was infringed upon.

HFL’s Comments:

  • Currently, in many cases copyright is judged on whether it counts as a prior right for trademark opposition and invalidation, the standard trial application of such consideration from the Trademark Office and the Commercial Judging Committee is usually diverse. Taking into account the ownership of copyright contains a certain degree of difficulty, and the Trademark Office and the TRAB’s rarely decide based on copyright infringement in administrative confirmation of trademark rights, this case is a significant breakthrough in that sense. It’s also interesting to note that, the important evidences of the ownership of copyright by foreign companies and the fact that the “Benelux trademark application records and the application of global trademark applications” where considered in the ruling, helped conclude that ownership can be proved by more than “design draft, the original, the right to obtain the contract” and so on. Compared with the previous precedents, there was an important breakthrough in this case.
  • Article 19 of the Regulations on Several Issues Concerning the Trial of Administrative Cases Involving the Granting and Confirmation of Trademark Rights states in the latest version that: “… Where a trademark representation constitutes a work that is subject to copyright protection, and a party provides design drawings, original documents, contracts for the acquisition of rights, and copyright registration certificates from before the application date for the disputed mark, etc., involving the said trademark representation, these can all be used as ‘prima facie’ evidence of copyright ownership.” It is also clear from the legislation that “trademark gazettes, trademark registration certificates”, i.e., trademark application records, can be used as preliminary evidence in determining whether a trademark applicant is entitled to claim copyright, which greatly increases the possibility of identifying a copyright owner. Of course, when examining and hearing the case, it is necessary to combine the design draft, the transfer agreement and the application for prior trademark registration for comprehensive consideration.

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