(By You Yunting) Zheng Yuanjie, a famous fairy tale writer announced on his personal social account that he would no longer seek trademark protection or publish any written work. By his own account, he had sought trademark protection for 673 infringed trademarks unsuccessfully. After reading part of the content of his Weibo, I feel he may have some misunderstanding of intellectual property protection principles. Actually, he was given a lot of legal protection, but intellectual property protection is different considering its privity. What he is angry about may be unnecessary.
I would like to give the following advice to the author of Shuke and Beita, my favorite book as a child. Based on my experience, like Zheng Yuanjie, many people find it difficult to protect their rights because of existing legal provisions, their understanding of intellectual property rights and rampant malicious registrations.
There are two trademark registration systems in the world, one based on prior use and the other on prior application. In the prior-application system, in general, it is the first person filing the trademark application that owns the approved trademark. If a person maliciously registers a trademark in prior use, the prior user can file the opposition or invalidity application against the trademark.
In the prior-use system, records and evidence of having used the trademark should be provided with the trademark application. The prior-use system is more helpful to fight malicious trademark registration, but is very demanding to government authorities and courts in charge of trademarks. Few countries such as the USA adopt the prior-use system, while most countries, including the EU, Japan and Britain adopt the prior-application system.
In China, if a person finds his or her trademark is maliciously registered, he or she can file an opposition or invalidity application. The trademark authority and the court use strict criteria to review the application, requiring the prior use of the trademark is highly well-known and limited to related types of commodities and services. For instance, if “Shuke”, the leading role of Zheng’s fairy tale is registered as a trademark, he can file an opposition or invalidity application against the malicious registration as the author of the work by claiming that the trademark agency or trademark review commission should find that the trademark application infringes his prior rights and refuse to approve the registered application or find the registered trademark invalid. He is not bound to win the case.
Here are two challenges. First, the name or brand you have prior rights to should be well-known. Second, the protection scope of your name should be under the class connected therewith. If Zheng brings an opposition or invalidity action for the trademark “Shuke”, it will not be difficult to prove its popularity as the work published a long time ago has great influence and should meet the criteria for being well-known, but It may be a challenge to connect it with particular ones of 45 classes of commodities and services, each of which includes thousands of commodities or services that may be connected with registered trademarks. The Trademark Law only protects prior rights to maliciously registered trademarks under classes connected therewith instead of all classes.
“Shuke” is the name of the leading role of the famous fairy tale and generally connected with daily products for children such as clothes, toys and food. If this brand is used for building materials such as floor or paint or mechanical products such as valves and compressors, it will be very difficult for the person with prior rights to it to protect his rights further to these products as the trademark agency, trademark review committee and most courts do not support such protection in most cases.
Someone may ask why Zheng is not protected by law from other people misusing “Shuke” created by him which is so familiar to us for building materials or mechanical products. For the second reason, intellectual property rights, in its essence, is created by humans to encourage innovation by the society designating innovators an area of protection from the public domain. Protecting innovators means limiting others’ freedom. The more protection innovators are given, the more limitations other people have.
I admire Zheng for his courage and action to fight for his rights after reading his Weibo, although I don’t completely agree with him, believing his claims may be out of boundary, for example, in a complaint letter[1] read for over ten million times on his Weibo, alleging a German fully owned company “SCHUCK (Shanghai) Pipeline Equipment and Services Ltd.” infringed his rights.
In this case, the Chinese name of SCHUCK (Shanghai) Pipeline Equipment and Services Ltd., a fully owned subsidiary of German SHUCK Company is translation of its parent company. Believing that the character Shuke of his work is so well-known that SCHUCK Company should have avoided using the same Chinese name and used other similar words as its Chinese translation, Zheng alleged that the company’s Chinese name infringed his prior rights to the character “Shuke” in his original literature work.
In my opinion, a company’s name is a brand that is generally protected in the same way as in trademark law. It is not legally arguable to claim that use of “Shuke” in the name of a pipeline business infringes his prior rights. “Shuke” is a fairy tale character and should be protected in daily products for children. If further protected in pipeline products under the class of mechanical products, it would be given too many social interests in an area where other people should have freedom. The pipeline company has no obligation to avoid using a fairy tale character in the Chinese translation of its name.
In the above case, Zheng’s claims may not be supported by law, but as an intellectual property lawyer, I really feel sympathy for a famous writer beset by malicious trademark registrations. For people who are concerned with the development of the Chinese intellectual property sector, the level of intellectual property protection has been consistent with the stage of state development in China. In the first decade of the 21st century there was a gap between the level of intellectual property protection and the pace of state development.
At that time trademark applications are reviewed in a lenient way, while the burden of proof on people seeking protection of their prior rights was heavy. It was very hard for people like Zheng with prior rights in maliciously registered trademarks to get back what they own. The difficulties in seeking protection mean the advantages of people filing malicious registration applications, which indirectly encourage them to gain through little work. At the same time there was a lack of attacks on malicious trademark registrations. Anyhow, with improvements of brand and other intellectual property protection laws and policies in the past decade, convenience for people to protect their rights and attacks on malicious registrations, the situation is now much better than before.
In conclusion, I understand how angry writers who legal seek protection of their rights are about people disrespecting their works which they treat as their babies by filing applications for using them for commercial purpose. A piece of advice: consider the privity of intellectual property rights which are alienated to innovators by the society when seeking protection of your rights.
Footnote:
[1] https://weibo.com/ttarticle/x/m/show/id/2309404792559796093263_wb_client_=1&s_trans=1239789860_&s_channel=4
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