Case number: (2017) Jing Xing Zhong No. 2660. Appellant and first-instance plaintiff: D.H.A. Siamwalla Ltd. Appellee and first-instance defendant: the Trademark Review and Adjudication Board (TRAB).
Case Background
On November 28, 2006, Zhang, the legal representative of a Tianjin stationery company, applied for MASTERART with lion and badge devices for pencils, erasers and related goods in Class 16. The Trademark Office preliminarily approved application No. 5750776 on July 13, 2009.
On October 16, 2009, Siamwalla, a Thai stationery manufacturer, opposed the application on the basis of prior copyright in its MASTERART artwork comprising a lion, badge and outer border.
The Trademark Office approved registration on October 17, 2011. Siamwalla requested review on November 29, 2011, but TRAB upheld registration on December 23, 2013. The Beijing No. 1 Intermediate People’s Court dismissed Siamwalla’s challenge. Siamwalla then appealed to the Beijing High People’s Court on May 19, 2017.
Issue and Appellate Decision
The issue was whether Siamwalla owned prior copyright in the artwork. The High Court held that it was an artistic work protected by Chinese copyright law. Although its copyright registration certificate postdated the disputed trademark application, other evidence, including Thai trademark certificates from 1999 and 2002 and purchase orders with Chinese stationery companies, established earlier creation and publication.
The disputed mark omitted only the outer border. The lettering, lion, badge and overall structure were otherwise identical, making it substantially similar to Siamwalla’s earlier work. It therefore infringed prior copyright and should not have been registered.
The High Court set aside the first-instance judgment and TRAB’s decision and directed TRAB to issue a new decision.
Commentary
In prior-copyright trademark cases, owners must establish ownership and show that the work was created and published before the disputed filing date. They should retain drafts, manuscripts, assignments and other ownership evidence and register copyright promptly. A certificate obtained after the disputed filing date may carry less weight or be disregarded.
Relevant Provision
Article 19 of the Supreme People’s Court provisions on trademark grant and confirmation cases requires courts to examine whether the claimed subject matter is a copyright work, whether the claimant is its owner or an interested party, and whether the disputed mark infringes it. Where the design is protected, drafts, manuscripts, assignment agreements and, particularly, copyright certificates predating the disputed application may serve as prima facie evidence. Earlier trademark gazettes and registration certificates may likewise provide preliminary evidence of a claimant’s interest in copyright in a trademark design.
