China: Legitimate rights of specific names of famous services, TV programs and cartoon characters shall be protected as prior rights under Article 32 of the 2014 Trademark Law

Last Updated: 18 May 2015
Article by Lin Jiuchu and Zhang Jiaqi

Case review

Teletubbies is a TV program jointly created by DHX Worldwide Limited and a subsidiary corporation of BBC for children. It was broadcasted by BBC between 1997 and 2001 and became very popular nationwide. Ever since its debut, Teletubbies TV program has gained huge business success and numerous rewards and was broadcasted by 35 media in 120 countries. CCTV also introduced it into China and began to broadcast it on February 11, 2002, since when it was adored and watched by a large number of Chinese children and parents. Apart from the TV program, its correlative CDs, books, stuffed toys and clothes were also very popular. As the name of a famous TV program and cartoon characters, Teletubbies was widely known in China in a very short time.

Soon after the broadcast of Teletubbies, Lou Fanrong, an individual in Guangdong Province preemptively filed a number of applications of the marks "Teletubbies", "Teletubbies in Chinese" and character's images between 2002 and 2004. DHX Worldwide Limited has taken legal actions against these trademarks respectively, including filling trademark dispute against the mark "" under No. 4249617 to the TRAB. One of the grounds for this trademark dispute raised by DHX Worldwide Limited was that the registration of the opposed mark infringed its rights on "Teletubbies" as the specific name of famous services, TV programs and cartoon characters and therefore the opposed mark shall not be approved for registration under Article 31 of the 2001 Trademark Law.

The TRAB and the first instance court held that the right of the specific name of well-known TV programs, cartoon characters, educational and recreational TV programs for children as well as the specific name of the licensed goods and services shall not be protected under Chinese laws and regulations, and there are no corresponding regulations regarding its subjects, objects and the constitution of infringement. What's more, the first instance court further pointed out that Article 31 of the 2001 Trademark Law shall be applied on the condition that there has already been or could be an infringement of other's prior rights while the evidence of this case failed to prove the same. The second instance court holds that regarding the prior rights stated in Article 31 of the 2001 Trademark Law, if the Trademark Law has specific provisions on the same, the protection of such prior rights shall be in accordance with such provisions. Regarding other legal rights and interests generally stipulated in the General Principles of the Civil Law and other laws and regulations, though there is no specific provision on the same in the Trademark Law, such rights and interests shall also be protected as prior rights. The fame of the specific name of famous services, TV programs and cartoon characters is accumulated by massive labor and capital and carries enormous business value and economic interests. The use of such names by other parties as trademarks may mislead the relevant public into believing that they are related to the famous services, TV programs and cartoon characters and therefore take a free ride of the right-holder's fame, which violates the principle of good faith and damages the order of competition. Hence, the specific name of famous services, TV programs and cartoon characters should be protected as legitimate rights, and the second instance court overruled the TRAB's decision and the first instance judgment.

Comments

The TRAB and the courts have reached a consensus that trade names, copyrights and rights of individual name could be protected as prior rights according to Article 31 of the 2001 Trademark Law (Article 32 of the 2014 Trademark Law) and the requirements for each right to be protected have also been set force through the judicial practices. However, it still remains controversial as to whether to protect the rights that are not peculiarly stipulated by laws and regulations, for example the right of commercialization as discussed in theory, and to apply which provision to protect them. For example, in the case filed by DHX Worldwide Limited against a company in Quanzhou, TRAB adopted Article 41.1 to protect Teletubbies while the first and second instance courts overruled the TRAB's decision for its wrong application of law. In those precedents where such civil rights were protected, the provisions adopted by the TRAB and the courts are also different. Some are based on Article 10.8 of the 2001 Trademark law for causing bad influence, such as the "Harry Potter" case while others adopted Article 31 of the 2001 Trademark law for being prior rights, such as the "?? BOND 007" case (in this case, TRAB refused to protect it as a prior right while the first instance court ruled otherwise based on Article 10.8 and the second instance court sustained the judgment by recognizing this name of character as a prior right according to Article 31). Comparing the judgments rendered by TRAB, Beijing First Intermediate People's Court and Beijing High People's Court in the same period, there is no uniform answer as to whether to protect such civil rights neither. Even within their own divisions and collegial panels, the results are different. As for the judgments made by the same authority, the results also vary from time to time despite the slight trend of these rights being protected. Such disparities or even contradictions have rendered the right owner hopeless when facing an obvious preemptive registration. Sometimes they can only pray to have an open-minded judge rather than relying on the system itself.

Maybe in consideration of such disparities and contradictions, Article 17 of the Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases Involving Granting and Determination of Trademark Rights (Draft)1 published by the Supreme Court in October 2014 stipulates that where the name of a work or the name of a character in the work does not constitute a copyrighted work itself but is of high reputation, and the use of such name as trademark on related goods can easily mislead relevant public into believing that it has been approved by the work's original right-holder or has other relations therewith, the people's court shall support the party's claim based on its prior rights and interests as provided by Article 32 of the Trademark Law. Despite there still exists disputes regarding this regulation, as the second instance court of this case stated, the fame of the specific name of famous work or the character in the work is accumulated by massive labor and capital and carries enormous business value and economic interests. The use of such names by other people as trademarks not only violates the principle of good faith, damages the order of competition and harms the right-owner's legitimate benefits, but also may get the relevant public confused, which greatly contradicts with the most important principle of Trademark Law, namely, avoiding confusion. Most professionals agree to grant protection to such rights and interest and the High Court's judgment has offered practical support to the Draft.

As for the constitution of infringement and possibility of damage mentioned in the judgment rendered by the first instance court of this case, the aforesaid Article can be of certain references: the name of the work or the name of a character in the work shall be of high reputation, the goods and services designated by the opposed trademark shall be related to the work, and the use of such name can easily mislead relevant public into believing that it has been approved by the work's original right-holder or has other relations therewith. Only "related" is required when judging the relevancy between the work and the goods or services, which means the standards for relevancy shall not be very high. Moreover, the unauthorized use by the right-holder and the possibility of confusion could meet the requirement but no evidence of actual damage shall be required.

Footnote

1To see our comment on the draft Provisions, please visit this link: http://www.chinalawinsight.com/2014/10/articles/trademark/%E6%9C%80%E9%AB%98%E9%99%A2%E5%8F%91%E5%B8%83%E5%AE%A1%E7%90%86%E5%95%86%E6%A0%87%E6%8E%88%E6%9D%83%E7%A1%AE%E6%9D%83%E8%A1%8C%E6%94%BF%E6%A1%88%E4%BB%B6%E8%8B%A5%E5%B9%B2%E9%97%AE%E9%A2%98%E7%9A%84/

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