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Weekly China Trademark News Updates
May 10, 2022
1. The Hague Agreement and the Marrakesh Treaty entered into force in China on May 5, 2022
The Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (“Marrakesh Treaty”) entered into force in China on May 5, 2022.
Through the Hague System, it is only necessary to package multiple designs of the same classification into one international application and submit, with one application, one language, and one set of fees. Through one acceptance agency, filing in several contracting parties to the Hague Agreement for design registration and protection can be realized. If there is a need for changes, renewals, etc. in the future, only one request is required. There are two ways to file an international design application through the Hague System. The applicant can directly submit the international application to the International Bureau of WIPO. If the contracting office allows, the applicant can also file the international application indirectly through the contracting office. Under the Hague System, an international design registration is valid for an initial period of 5 years and can be renewed twice every 5-year. In each designated contracting state bound by the Hague Agreement, international registrations shall be protected for a period of at least 15 years.
The “Marrakesh Treaty” will greatly enrich the spiritual and cultural life of China’s dyslexic group, improve their educational level, deepen the connection between overseas Chinese dyslexic people and China, and promote the overseas dissemination of China’s excellent works.
2. If a disputed mark was found not filed in bad faith, the applicant could avoid being labeled as a squatter
The Supreme People’s Court recent retried the trademark opposition appeal case between Dongfang Fengxing (Beijing) Media Culture Co., Ltd. (“Dongfang Fengxing”) and Hainan HaiTV Tourism Satellite TV Media Co., Ltd. (“HaiTV”). The Court vacated the second instance decision and affirmed the first instane decision.
The issue presented in this case was: whether Dongfang Fengxing’s application for registration of the “” mark in Class 41 with reg. no. 6925383 (“Disputed Mark”) for “radio and television program production, television entertainment programs, performances” and other services violates the second half of Article 32 of the 2013 Trademark Law where applying for trademark registration “shall not preemptively register trademarks that have been used by others and have certain influence by improper means.”
The Court found that one of the core factors of the second half of Article 32 of the Trademark Law was that the trademark applicant has subjective bad faith, that is, preemptively registered the trademark by improper means. The first instance court had found that the “Beautiful Pretty Woman” program was prepared and produced by the Beijing Dongfang Huanteng Culture and Art Development Co., Ltd. (“Dongfang Huanteng”) in the second half of 2005. In 2006 and 2007, Dongfang Huanteng and HaiTV signed an agreement that the “Beautiful Pretty Woman” program will be jointly invested by both parties and produced by Dongfang Huanteng, and the program’s copyright would be jointly owned by both parties. In January 2008, Dongfang Fengxing and HaiTV signed an agreement that the “Beautiful Pretty Woman” program will be jointly invested by both parties and produced by Dongfang Fengxing, and the copyright of the program will be jointly owned by both parties. In January 2006, the “Beautiful Pretty Woman” program was first broadcast on HaiTV, and it continued to be broadcasted until December 31, 2012. In January 2008, Dongfeng Huanteng signed a contract with Dongfang Fengxing that Dongfeng Huanteng would transfer the “Beautiful Pretty Woman” program copyright it shared from 2006 to 2007 to Dongfang Fengxing. After the cancellation of Dongfang Huanteng, its shareholders issued a statement stating that from January 15, 2008, all rights and interests, including the copyright of the “Beautiful Pretty Woman” artwork, would be transferred to Dongfang Fengxing. Based on the above facts, it can be analyzed as follows: First, although the agreements signed successively between HaiTV and Dongfang Huanteng or Dongfang Fengxing stipulated that the two parties jointly enjoy the “Beautiful Pretty Woman” program copyright, they did not stipulate the ownership of the trademark. Second, the Disputed Mark was a graphic trademark, and the logo was identical with the artwork of “Beautiful Pretty Woman.” The artwork was created by Xu Linjiang in 2005 on the commission of Dongfang Huanteng, who owned the copyright. After the cancellation of Dongfang Huanteng, the copyright of the artwork was transferred to Dongfang Fengxing. Third, the the “Beautiful Pretty Woman” program was originally planned and produced by Dongfang Huanteng. Before the filing date of the Disputed Mark, Dongfang Fengxing had actually launched the program production service of the “Beautiful Pretty Woman” program. Taking into account the above factors, Dongfang Fengxing filed the Disputed Mark’s application on August 29, 2008, in Class 41 for “radio and TV program production, TV entertainment programs” and other service was legitimate without subjective malice. Therefore, Disputed Mark’s registration did not violate the 2013 Trademark Law. The second instance court did not fully consider the application requirements of the second half of Article 32 of the 2013 Trademark Law, and erred in applying the law.
Regarding the question in the Disputed Mark opposition appeal concerning that the Disputed Mark’s goodwill shared by both HaiTV and Dongfang Fengxing should not be exclusively enjoyed by Dongfang Fengxing, first, China’s trademark law implements registration system, however, in order to balance the interests of all parties and taken into account the principle of fairness, China’s trademark law also provides a certain degree of protection to unregistered trademarks. Second, in terms of the attribution of rights, China’s trademark law is different from the copyright law and patent law in that trademark registration adopts the principle of first-to-file. According to the provisions of Article 31 of the 2013 Trademark Law, a trademark with the prior application shall be preliminarily approved and published. The trademark law neither stipulates that only prior use of the mark can be applied for registration, nor does it provide for joint trademark owners to joint use of the mark or joint contribution to the goodwill of a trademark. Third, when the administrative department determines whether the trademark applied for registration violates the provisions of the second half of Article 32 of the 2013 Trademark Law, it must have a certain impact on whether the goodwill of the prior used mark has reached a certain level of influence, and whether the trademark applicant has used the prior mark through comprehensive analysis of a series of elements, such as malicious use of a mark’s goodwill. As mentioned above, Dongfang Fengxing, the applicant of the Disputed Mark, did not use the goodwill of other’s prior used trademark in bad faith. Therefore, in the absence of clear legal provisions and contract basis, the Trademark Review and Adjudication Board analyzed and judged the contribution of goodwill, adopted the idea of co-ownership, and concluded that HaiTV and Dongfang Fengxing shared the goodwill of the Disputed Mark and excluded Dongfang Fengxing’s application of the prior mark was wrong.
In addition, there was a question about whether HaiTV was a qualified entity to file trademark opposition and appeal. Article 6 of the Interpretation of the Supreme People’s Court on the Jurisdiction of Trademark Cases and the Application of Law after the Implementation of the Trademark Law Amendment Decision stipulates that for trademark appeals accepted before the implementation of the amended Trademark Law, where the Trademark Review and Adjudication Board made a decision not to approve the application, on appeal, the appeals court shall apply the unamended Trademark Law when examining the relevant rights of action and entity qualification issues. Accordingly, the 2001 Trademark Law shall be applied in this case. HaiTV filed the trademark opposition and appealed the unfavorable trademark opposition decision according to the 2001 Trademark Law. Article 30 of the 2001 Trademark Law stipulates: “Anyone may raise an objection within three months from the preliminary trademark publication date. At the same time, the facts that have been ascertained show that HaiTV was one of the broadcasting platforms and copyright owners of the “Beautiful Pretty Woman” program, and it had an interest in the registration of the Disputed Mark. The HaiTV claimed that Dongfang Fengxing was not an interested party and had no right to raise the request for retrial of the trademark opposition and the appeal lacked factual and legal basis and cannot be supported.
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