On April 1, 2021, Beijing Intellectual Property Court announced its recent ruling on the dispute over the validity of a "snake head" figurative trademark, in favor of Bulgari. Beijing Intellectual Property Court found that the trademark No. 15911982 (figure on the right) registered by Rongjun Liu infringed Bulgari's copyright of snake head design (figure on the left) and therefore overturned an earlier decision made by CNIPA.
Bulgari filed a request for invalidation of the trademark No. 15911982 with CNIPA which on April 28, 2019 made a decision ShangPingZi (2019) No. 88366. In this decision, CNIPA deemed that the evidence submitted by Bulgari was insufficient to prove that it enjoyed the copyright of the "snake head" design, and therefore the evidence in the case was insufficient to prove that the registration of the disputed trademark No. 15911982 violated Article 32 of the Trademark Law of 2014, which prescribes that no trademark application shall infringe upon another party's existing prior rights.
Bulgari appealed to Beijing Intellectual Property Court against CNIPA's decision. Beijing Intellectual Property Court found that the evidence in the case proves (1) the snake head design claimed by Bulgari belongs to work of fine art protected by China copyright law, (2) Bulgari is the owner of the copyright existing prior to the filing date of the disputed trademark, (3) the possibility exists for Liu to access the snake head design due to Bulgari's promotion of the design, and (4) the trademark in dispute, compared with the snake head design of Bulgari, has similar expressions in terms of overall appearance contours, basic graphic elements, and visual effects, and is substantially similar. Therefore, Liu's registration of the disputed trademark No. 15911982 violated Bulgari's prior copyright of snake head design
It is to be noted that the above four tests are commonly adopted in the evaluation of whether a disputed trademark violates other's prior copyright.
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.