Recently, the Beijing Intellectual Property Court affirmed the invalidation of the trademark 绿灯侠(Green Lantern) applied by a Chinese lamp factory because the trademark violated prior rights and interests enjoyed by Warner Bros. Entertainment Inc., which is the producer of hit movie Green Lantern.
Background
Since the acquisition of DC COMICS, Warner Bros. Entertainment Inc. has been producing famous superhero movies, among which the Green Lantern obtains high fame in the Chinese market in 2011. The movie was released in October 2011, and the cumulative box office earnings reached a high amount of 63 million yuan.
On May 30, 2012, Xingning Shixin Lamp Factory filed a trademark application for “Green Lantern” in class 11 for light bulbs and other related goods. The trademark was registered on September 28, 2013. After that, Warner Bros. Entertainment Inc. filed an invalidation request against the trademark on July 12, 2017.
The case was examined by the Trademark Review and Adjudication Board (TRAB). The TRAB found that the registration was identical to the name of the movie as well as the character Green Lantern and violated the prior rights and interests of others. The TRAB made a decision on June 22, 2018 that the trademark in dispute was invalidated. The trademark registrant, Xingning Shixin Lamp Factory, disagreed with the decision and filed an administrative lawsuit with the Beijing Intellectual Property Court.
Affirmance and Decision of the Court
In the lawsuit, Warner Bros. Entertainment Inc. provided the court with evidence about the data of the box office earnings, reports from various local media, and so on. The court affirmed that the presented evidence was sufficient to prove the high fame of the movie Green Lantern. Since the name of the movie and its leading role were well-known in Mainland China, and the trademark was identical to them, it was reasonable to believe that the application of the disputed trademark was filed in bad faith. In terms of the designated goods, the trademark was designated on light bulbs, lights, etc., which were similar to the lantern in the movie. The goods are in close connection on the relevant market. The customers will probably wrongly think the designated products come from or have a corresponding relationship with the movie.
Accordingly, the trademark infringed the prior rights and interests of others relate to a famous movie. The court affirmed the invalidation of the disputed trademark and rejected the appeal of Xingning Shixin Lamp Factory.
Comments
The key point of this case was the fame of the Green Lantern movie and the similarity between the trademark and the name of the movie and its role. According to article 32 of the Trademark Law of China the application for trademark registration shall not infringe upon the existing prior rights of others. The prior rights usually refer to the rights of a trade name, domain name, patent, industrial design, and copyright, etc. But in this case, the name of movie and movie character are also applicable.
Although the name of a movie or a movie character is not prescribed as works in the Copyright Law of China, they involve the copyright of related work. In January 2017, the Supreme People’s Court issued the Provisions On Several Issues Concerning the Trial of Administrative Cases Involving Trademark Authorization and Confirmation, among which the article 22 regulated as follows, for works within the copyright protection period, if the name of the work, the name of the role in the work, etc. have a high reputation, and using it as a trademark on related goods may easily lead the relevant public to misunderstand that it is licensed by the right holder or has a specific relationship with the right holder, the people’s court shall support if the parties involved in this claim constitute prior rights and interests. Hence, the rights of the name of a movie and movie character are possibly to be supported as prior legal rights in trademark cases. In the Green Lantern case, Warner Bros. Entertainment Inc. provided a large amount of evidence to prove the popularity of the movie, and it helped to argue the possibility of confusion to the public about the source of relevant goods.
Trademark Invalidation Procedure
The system of intellectual property protection in China provides the rights owner with various approaches to defend their trademark rights. Under most similar circumstances of trademark free-riding, we can take a series of measures to take down the malicious trademark registration. Filing an invalidation request is one of the effective ways. The procedure applies to registered trademark with potential circumstances prescribed in article 4, 10, 11, 12, and 19(4) of the Trademark Law with absolute grounds, such as the bad faith or illicit behavior of the trademark owner, the adverse element or lack of distinguishment of the trademark etc., and 13(2), (3), 15, 16(1), 30, 31, 32 with relative grounds, including the rights of prior applied or registered trademarks, prior rights of a domain name, trade name or patent and so on.
Last but not least, to expand the protection of your trademark and reduce the trademark maintenance costs,, it’s suggest to file a new trademark application after invalidating the disputed trademark. But please mind the period of one year after the invalidation decision issued because during this period, a latter applied identical or similar trademark application would be refused due to this invalidated trademark. Therefore, proper timing and professional strategy are important for a smooth trademark application.
2021-04-28
Borsam IP
粤公网安备 44030902003456号
BORSAM IP———————————————