The saga began in June 2009 – one year after the first Kung Fu Panda film was released – when Shanghai Weipu, a Chinese company, filed an application to register the trade mark "KUNG FU PANDA 功夫熊猫."
DreamWorks had filed an application for the KUNG FU PANDA trade mark as far back as 2006. This was subsequently approved for registration in 2009 and is protected for products such as toys and games. Shanghai Weipu's application claimed protection not for these products but for services including medical, hairdressing and beauty salon services. In August 2010, the Chinese Trade Mark Office ("TMO") examined the trade mark and published it for opposition purposes.
DreamWorks considered the application a clear imitation of its brand and filed an opposition citing its earlier trade mark protected in China. However, in July 2012, the TMO rejected DreamWorks' opposition and approved the registration of the trade mark, noting the dissimilar services claimed. After a failed appeal to the Trade Mark Review and Adjudication Board (TRAB), DreamWorks filed an appeal to the Beijing No.1 Intermediate People's Court.
After hearing the appeal, the Beijing No.1 Court revoked the earlier decision and instructed the TRAB to issue a new ruling stating that Weipu's trade mark infringed the lawful rights of DreamWorks.
The TRAB then appealed to the Beijing Higher People's Court, which has now confirmed that, even though the services are not similar to DreamWorks' goods, the application illegitimately took advantage of the popularity and reputation of the film, Kung Fu Panda, so should be rejected.
This marathon case, in which the Beijing Higher People's Court eventually confirmed that Shanghai Weipu had prejudiced the existing rights of DreamWorks, follows a now familiar pattern. In cases involving dissimilar products or services, the lower tribunals are often reluctant to recognise an obvious copy of a famous brand as contravening the rights of the owner, with an appeal to the higher courts being required before the extent of the owner's reputation is recognised and justice can be served.
Brand owners face a much easier task in enforcing their rights when the later mark claims protection for the same or related products, even if the earlier right does not have a reputation. In these situations, the Chinese authorities at all levels are issuing increasingly robust decisions that often favour the brand owner.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.