(By Luo Yanjie) According to a recent report by the British Broadcasting Corporation (BBC), the British television series Downton Abbey (In Chinese, translated as “唐顿庄园 Tangdun Zhuangyuan”), which is very popular in China, and Carnival Films, who produced Downton Abbey, was attempting to sell Downton (in Chinese, Downtown is translated as “唐顿 Tangdun”) branded wine in the North American, European and Australian markets. However, according to a disclosure by the State Trademark Office, some Chinese merchants drew first blood, registering the “唐顿庄园 Tangdun Zhuangyuan” trademark and subsequently obtaining rights in the trademark. This news also pointed out that a Shandong-based Merchant Li Xiangjun had already received ownership of the “唐顿庄园 Tangdun Zhuangyuan” trademark for wines in China.
Upon our query to the State Trademark Office, an applicant named Li Xiangjun applied for registration of the “唐顿庄园 Tangdun Zhuangyuan” trademark on March 6, 2012, numbered 10572596, and obtained a preliminary examination from the State Trademark Office on April 13, 2013 (this also means that the Trademark Office believed this trademark could be legally registered). However, during the legal opposition period, an opposition was filed, and in accordance with opposition procedures, the existence of the opposition halted the tender of a trademark registration certificate. If the trademark opposition was filed by Carnival Films, except under special circumstances where specific evidence is provided, the author believes the opposing party has little change of success for the following reasons:
1. The Principle of “First to File” will result in the approval of Li Xiangjun and other applicants’ trademark applications
Article 29 of the Trademark Law stipulates: “Where two or more applicants apply to register identical or similar trademarks for use in connection with the same or similar goods, the Trademark Office shall first examine and approve for publication the mark with the earliest application date.” In other words, we apply the principle of first to file in regard to trademark registrations, meaning, in general, in relation to a same or similar trademark, whoever files first can obtain ownership of trademark, thereby ignoring the first party that has actually made use of the mark.
In addition, the Trademark Law also stipulates other conditions where a subsequently applied for trademark can defend itself against a prior registered trademark, such as the well-known trademark protection system, and trademarks used without infringing prior rights. Overall, a subsequent application attempting to defend itself against the same trademark registered at an earlier date ought to take the following two factors into consideration: first, to evidence that its unregistered trademark itself has already obtained a degree of public recognition at the time of its application; and second, to evidence the prior applicant had registered the trademark with malicious intentions. In the author’s opinion, in regard to both of these factors, Carnival Films enjoys no particular advantage.
2. The Principle of Trademark Regionalism leads to the recognition of “唐顿庄园 Tangdun Zhuangyuan” non-acceptance in China.
Trademark regionalism refers to circumstances where a national or regional authority authorizes a trademark in accordance with its trademark laws or other relevant regulations regarding the trademark, and finds the trademark to be valid in that particular country or region and not to be legally binding on any other country of region. In other words, even though “唐顿庄园 Tangdun Zhuangyuan” is rather well known in China, and is considered a highly-rated television series, and has already obtained trademark protection outside of China’s borders, these aforementioned factors have little to do with the trademark’s registration in China. Furthermore, “唐顿庄园 Tangdun Zhuangyuan” cannot extend recognition of its trademark in China.
In fact, legally, Carnival Films has nearly no possible method to prove a degree of recognition of the “唐顿庄园 Tangdun Zhuangyuan” in China for the following reasons: first, “唐顿庄园 Tangdun Zhuangyuan” has not been officially licensed for general broadcasting in China, and therefore suffers from a lack of large-scale promotional activities. That being said, it is true that several websites have received licenses to broadcast the show, but its audience is a fraction of what traditional television broadcasts obtain. Even worse, the majority of audiences utilize informal channels to watch “唐顿庄园 Tangdun Zhuangyuan”, which will not be given legal affirmation.
3. Carnival Films will have difficulty in proving the current registrants of the mark in China did so with malicious intent
As previous stated, the facts suggest that Carnival Films will have difficulty proving malicious intent on behalf of the Chinese parties in registering the disputed mark. How would a party like Carnival Films legally provide evidence showing that Li Xiangjun registered this trademark for use in wines as being a malicious act?
Pursuant to the Trademark Law, malicious registering of trademarks typically manifest themselves under three circumstances: 1. Registering a well-known trademark with ill will; 2. Where an agent or representative seeks to register a client’s trademark with ill will in his or her own name without the authorization of the client; and 3. Utilizing improper means to register a mark that is already in use by another party and enjoys substantial influence.
Based on our analysis, the trademark “唐顿庄园 Tangdun Zhuangyuan” does not comply with the circumstances mentioned above. First, obviously, “唐顿庄园 Tangdun Zhuangyuan” is not a well-known trademark; second, the applicant bears no connection or business with Carnival Films; finally, considering the fact that “唐顿庄园 Tangdun Zhuanyuan” as a television series that actually receives a bit of recognition, and where Chinese merchants are attempting to utilize this recognition to promote their goods or commodities, Carnival Films will nevertheless experience difficulty in proving these merchants are registering the trademark at hand with malice. After our querying, in early 2004 a party once registered the “唐顿 Tangdun” trademark, numbered 3936336, thereby proving to some extent that “唐顿 Tangdun” is not a unique brand name owned by Carnival Films.
In conclusion, taking into account all of the facts, Carnival Films cannot file an objection to trademark review, or file a lawsuit to prevent Chinese merchants from obtaining rights in the “唐顿庄园 Tangdun Zhuangyuan” trademark. The best strategy to solve this problem is a peaceful negotiation where the possibility of an assignment of trademark rights may be a possibility. As for those foreign-invested companies that ignore Chinese trademark protection laws, this case may be another wake-up call that it is never a wise business strategy to ignore protection of one’s trademark in China. With respect to international brands attempting to enter the Chinese market, it should be considered an absolute necessity at a minimum to apply for a registration of one’s trademarks before entering the market, in order to enjoy legislative protection.