(By Luo Yanjie) Abstract: The general principle of copyright authorship centers on the signature in the work pursuant to the Copyright Law. The Trademark Review and Adjudication Board shall determine the proof that provided by the administrative counterparty with strict and cautious attitude and consider the changes together with the combination of legal facts and objective conditions so as to make a ruling that protects the right holders’ legitimate rights and interests.
The people’s court shall have the right to revoke the ruling made by the Trademark Review and Adjudication Board (the “TRAB”) and order the TRAB to remake a ruling. For how the TRAB deal with the additional evidences provided by the administrative counterparty during the period of re-ruling, there are no clear laws and regulations. In today’s post, we would like to introduce a typical case with readers.
Introduction to the Case
Plaintiff: Qionghai Zhongyuan Zhenxiangji Mingji Coconut Processing (the “Zhenxiangji”)
Defendant: the TRAB
The third Party: Thep Padung Porn Coconut Co., Ltd
Court of first instance: Beijing No.1 Intermediate People’s Court No.: （2009）一中行初字第1963号
Court of second instance: Beijing Higher People’s Court No.: （2010）高行终字第782号
The Zhenxiangji owned the number 3174908 trademark (the “disputed trademark” as shown in the right figure) under Class 29 for the preserved fruits and desiccated coconut. Thep Padung Porn Coconut Co., Ltd filed a cancellation procedure with the proof of its registered trademark number Kor20356 in Thailand (as shown in the left figure), alleging that the disputed trademark infringed its preceding copyright.
On June 22, 2009, the TRAB made a ruling of removing the disputed trademark on the ground that the disputed trademark was Thep Padung Porn Coconut Co., Ltd’s works. The Zhenxiangji filed an administrative lawsuit to the first instance that affirmed the TRAB’s ruling and then appealed. The court of second instance decided to modify the judgment and ordered the TRAB to make a re-ruling on the ground that the preceding registration and publication proclamation just indicated Thep Padung Porn Coconut Co., Ltd to be the right holder of the disputed trademark instead of the author of the disputed trademark.
During the period of TRAB’s re-ruling, Thep Padung Porn Coconut Co., Ltd furnished additional proof of the copyright authorship. The TRAB admitted such proofand ruled to remove the disputed trademark. The Zhenxiangji once again filed another administrative lawsuit but failed, ending in the two instance courts’ affirmation of the TRAB’s new ruling.
Lawyers’ Comment:
1. A registered trademark cannot act as a proof of copyright authorship.
Article 31 of the Trademark Law stipulates that, the trademark application shall not infringe upon another party’s prior existing rights, and shall also not be a means to register a mark that is already in use by another party and enjoys substantial influence. The “prior existing rights” include the prior copyright. One thing to note is that the general principle of copyright authorship centers on the signature in the work pursuant to the Copyright Law. In this case, the court did not regard the evidence, i.e., a similar prior pictorial trademark provided by Thep Padung Porn Coconut Co., Ltd at the first review of the TRAB, as its signature. It means the right holder cannot claim its copyright with such a similar prior pictorial trademark.
2. The TRAB shall admit the additional proof provided in the period of re-ruling to satisfy the goal of protecting legitimate rights and interests.
Whether the TRAB admitted the additional objective facts in the period of re-ruling bears a direct relationship to the result of the TRAB’s ruling. In this case, the court decided that current evidences cannot determine the copyright authorship of the disputed trademark but yet has not confirmed the authorship of the disputed trademark. Therefore, in the period of TRAB’s re-ruling, the TRAB investigated the additional evidences provided by the administrative counterparty, which in essence supported the TRAB to do review, determination and re-ruling. Furthermore, considering the fact that laws and relevant regulations do not forbid providing additional evidences in a review process over trademark disputes, the TRAB’s admitted the additional evidences meets facts with non-violation of legal procedure.
What calls for special attention is that, the TRAB shall determine the additional proof that provided by the administrative counterparty with strict and cautious attitude, and consider the changes together with the combination of legal facts and objective conditions, so as to make a ruling that protects the right holders’ legitimate rights and interests.
Lawyer Contacts
You Yunting：86-21-52134918 youyunting@debund.com/yytbest@gmail.com
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