Case Information：
Case No. of the Second Instance: [2019], Final, Administrative, no. 299, 300, 301, 302, 303, Beijing
Case No. of the First Instance: [2018], First, Administrative, no. 3072, 3070, 3071, 3069, 3068, Beijing 73
Plaintiff: Quanzhou Gangquan Chunhuidadi Technology Ltd.
Defendant: Trademark Review and Adjudication Board of the State Administration for Industry
Third Party: Renmin University of China (RUC)
Controversial Trademarks Information:
The controversial trademark in No. 299 case of the second instance was No. 16412029 trademark “
”, which was applied for registration by Chunhuidadi on February 25, 2015. On April 14, 2016, the trademark “
” was approved to be registered as the Class 35 trademark, i.e., “services for advertising, help in the working or management of a commercial undertaking”.
The controversial trademark in No. 300 case of the second instance was No. 16363972 trademark “
”, which was applied for registration by Chunhuidadi on February 11, 2015. On April 4, 2016, the trademark “
” was approved to be registered as the Class 41 trademark, i.e., “services for education, lending library, publication of books”.
The controversial trademark in No. 301 case of the second instance was No. 16412052 trademark “”, which was applied for registration by Chunhuidadi on February 25, 2015. On April 4, 2016, the trademark “” was approved to be registered as the Class 40 trademark, i.e., “services for polishing, fabric bleaching, fruit crushing”.
The controversial trademark in No. 302 case of the second instance was No. 16344046 trademark “
”, which was applied for registration by Chunhuidadi on February 9, 2015. On September 21, 2016, the trademark “
” was approved to be registered as the Class 41 trademark, i.e., “services for education, lending library, publication of books”.
The controversial trademark in No. 303 case of the second instance was No. 16344105 trademark “
”, which was applied for registration by Chunhuidadi on February 9, 2015. On August 28, 2016, the trademark “
” was approved to be registered as the Class 41 trademark, i.e., “services for education, lending library, publication of books”.
Abbreviation of Adjudication:
1. According to the Trademark Review and Adjudication Board (TRAB)：
The controversial trademarks violated Article 32 of Trademark Law of the People’s Republic of China (hereinafter referred to as Trademark Law). Firstly, RUC had submitted the media reports, the Copyright Registration Certification and the Copyright Ownership Agreement, which has demonstrated the ownership of the trademark"
". Secondly, the evidences such as China Youth News submitted by the university showed that RUC’s registered trademark had been published on November 23, 2004. The trademark also had been embodied with enough popularity after over ten years’ publicity and use, so that Chunhuidadi had the possibility of access to it. The controversial trademarks were almost the same as the registered trademark in design concept, skills of expression, composition details, and visual effect, which constituted the substantive similarity. To sum up, Chunhuidadi registered a pattern which constituted a substantive similarity to the trademark having the prior copyright by RUC. It made damage to RUC’s prior copyright and violated the Article 32 of Trademark Law, i.e.,
No application for trademark registration may infringe upon the existing prior rights of others, and bad-faith registration by illicit means of a trademark with a certain reputation already used by another party shall be prohibited.
(2) The controversial trademarks also violated Article 44 (1) of Trademark Law. Except for the said controversial trademarks, Chunhuidadi registered over 590 trademarks in other classes, such as “农夫牧园”、“安利皇后”、“企鹅”、“AOC”、“奔腾”、“绿地”. Chunhuidadi was believed to obviously copy, plagiarize and imitate other well-known trademarks in bad faith and corner the trademarks without intention to use. The above actions may mislead the public regarding to the origin of goods, break the normal rules of trademark registration management, but also make damage to the market order with fair competition, which constituted the actions as stipulated by Article 44 (1) of Trademark Law, i.e., “registration was acquired by fraud or any other illicit means”.
2. First-Instance Judgment:
(1) The controversial trademarks infringed RUC’s copyright and violated Article 32 of Trademark Law. Firstly, the evidences submitted by the university could prove that the school badge was created in August 2002, and published on September 26, 2002 for the first time. Thus the school badge was a work having the copyright prior to date of the application of the controversial trademarks. Secondly, the evidences submitted by the university can prove that the creator of the school badge was Zhang Yeqing, and RUC was the copyright owner. As Chunhuidadi did not submit the disproof to overturn the above facts, Zhang Yeqing was believed as the creator of the school badge, and Remin University was believed as the copyright owner from the date of completion of the school badge. Thirdly, the distinctiveness of the school badge lied in the pattern of three parallel seal characters “人”, which meant “People, Human-oriented, Humanity”. The controversial trademarks were almost the same as the registered trademarks in design concept, skills of expression, composition details, and visual effect, so it constituted the substantive similarity. RCU’s trademark also had been embodied with enough popularity so that Chunhuidadi had the possibility of access to it. To sum up, Chunhuidadi registered patterns which constituted substantive similarities to the trademark having the prior copyright by RUC. The controversial trademarks made damage to RUC’s prior copyright and violated the Article 32 of Trademark Law.
(2) The controversial trademarks were registered by illicit means, which violated Article 44 (1) of Trademark Law. According to the investigations of the court, Chunhuidadi owned six subsidiary corporations and one branch office and registered over 600 trademarks, covering 45 classes of the goods and service. Chunhuidadi submitted some VAT invoices, but they were not enough to prove the actual use of the controversial trademarks. The controversial trademarks were the same as RUC’s un-renewal trademark (No. 3446018) which enjoyed higher popularity. Chunhuidadi submitted the propaganda contract of the trademark advertisement, but the contract neither recorded the controversial trademarks nor the scale of production. On the basis of the current evidences, regarding to the scale of production, the quantity and the use of the controversial trademarks, and the similarity to other well-known trademarks, Chunhuidadi was believed to obviously copy, plagiarize and imitate other well-known trademarks on purpose and corner the trademarks without intention to use. The registrations of the controversial trademarks constituted the actions stipulated by Article 44 (1) of Trademark Law, i.e., “registration was acquired by fraud or any other illicit means”
3. Second-Instance Judgment:
(1) The controversial trademarks made damage to RUC’s prior copyright. Firstly, the pattern of the school badge was a fine art work from the point of view of Copyright Law. Secondly, RUC had the prior copyright of the school badge. The evidences could prove that RUC began to use the school badge since September 2002, and Zhang Yeqing was commissioned to create the pattern of the school badge. Both sides signed a written agreement in April 2017 to confirm the ownership of the pattern and the responsibility of the behavior. On the basis of such facts, the pattern of the school badge had been created and published prior to the date of application of the controversial trademarks. Moreover, the registrations of the controversial trademarks made damage to RUC’s copyright of the school badge. The pattern of the school badge had been published prior to the date of application of the controversial trademarks, so that Chunhuidadi had the possibility of access to it. The controversial trademarks were almost the same as the pattern of three parallel seal characters “人” in the middle of the school badge. Thus, it was believed that the controversial trademarks constituted the substantive similarity to the distinctive expression of the school badge. Thirdly, RUC was the eligible subject of the prior copyright of the school badge, which could not be denied just because the registration of the prior trademark was cancelled.
(2) The registrations of the controversial trademarks violated Article 44 (1) of Trademark Law. According to the documented evidences, Chunhuidadi had registered over 600 trademarks in 45 classes of the goods and service without intension to use. The above actions were out of the normal demand for production and operation, and broke the rules of trademark registration, and infringed the public interests, which constituted “registration was acquired by fraud or any other illicit means".
Brief Comments:
A mark can carry different kinds of rights such as the trademark right, the copyright, and the design patent right, etc. Though a mark is no longer valid as a trademark, the owner still enjoys the right and nobody can register it as a new trademark without permission. In this case, the descriptive trademark of Remin University of China, the school badge, is invalid because it is not undergone the renewal formalities after expiry, but the distinctive expression of the pattern has become the fine art work having the copyright. Thus, if anybody registers a trademark similar to the pattern of the school badge, the trademark will be invalid because it infringes the copyright of Renmin University of China.
