First published by WTR

Authored by Zhu Zhigang & Paul Ranjard

In 2006, Fuku Electronics Co., Ltd., a company in Korea, developed an electric pressure cooker which was commercialized with a logo inspired from a famous Korean calligraph: (pronounced "Yipinshi" in Pinyin). The copyright attached to this artistic creation was later assigned to Qingdao Fuku Electronics, a Chinese company.

In July 2007, Zheng Jianhong applied for the registration of the "Yipinshi" logo as a trademark designating electric pressure cookers and other kitchen utensils. In April 2008, Zheng applied for the registration of another "Yipinshi" trademark and started to use the said trademark on electric pressure cookers, via a company in Zhanjiang.

In June 2016, Zheng and his company filed a lawsuit before the Intermediate court of Shenzhen against both Fuku Electronics Companies (Korea and Qingdao), claiming that they were infringing his Yipinshi trademarks.

Fuku Qingdao retaliated by filing a lawsuit before the same Shenzhen Intermediate Court against Zheng and his company for copyright infringement.

The Shenzhen Intermediate Court dismissed the copyright claim of Qingdao Fuku, holding that that the "Yipinshi" logo had been designed by reference to the "Qiushi Style" which was already in the public domain, and that the originality of the logo was insufficient to allow copyright protection. Furthermore, the court noticed several differences between the accused infringing trademarks and the artwork, which ruled out the possibility of finding substantive similarity. Finally, the defendants claimed that they held the exclusive right to use their trademarks which had been registered for more than five years and, therefore, could not be challenged.

The Guangdong High Court having upheld the judgment, Fuku Electronics requested a retrial before the Supreme People's Court.

On December 16, 2021, the Supreme People's Court reversed the original judgment and found that Zheng and his company had infringed the copyright of Fuku Electronics.

The Supreme People's Court held that specific calligraphy characters may constitute works of art even if they use a font which has fallen into the public domain. As long as the calligraphy modeling is done by the author independently and embodies his individuality, it can meet the requirement of originality in copyright law and become a work of art protected by the Copyright law.

The Court noticed that the "Yipinshi" calligraphy characters were more or less different from the existing public domain characters, and more importantly, that their combination was the result of individual choice, selection and arrangement, which belongs to the author's original expression, and should be regarded as a work of art in the sense of the Copyright Law.

Concerning the similarity between the artwork and the trademarks, the Supreme Court reversed the findings of the first instance and appeal courts and found that the similarity was clearly established.

Finally, the Supreme Court also rejected the argument of the trademark holder based on the exclusive trademark right and on the expiration of the five year period following the registration date. The Court cited Article 1.1 of its "Provision on Several Issues Relating to Conflicts between Registered Trademarks and prior rights"(2008) : "Where a plaintiff files a lawsuit on the grounds that the characters, graphics, etc. used in other's registered trademark infringe upon the plaintiff's prior rights such as copyright, design patent, enterprise name right, etc., which complies with the provisions of Article 119 of the Civil Procedural Law, the People's Court shall accept the lawsuit".

The court eventually ordered Zheng Jianhong and his company to immediately stop infringing the "Yipinshi" artwork of Qingdao Fukuand, compensate Qingdao Fuku economic losses and reasonable expenses totaling RMB500,000.

Comment

Originality is a necessary condition for a work to be protected by the Copyright Law. But differences of opinion may occur when assessing the level of originality: should the originality merely exist, even if low, or should it reach a certain degree?

In the "Yipinshi" case, the Supreme Court adopted the view that even if the artwork is derived from another artwork which is in the public domain, it is sufficient that the artwork claiming protection be the result of an "individual choice belonging to the author's original expression". It seems, therefore, that the Court did not require any evidence concerning a degree of originality. In addition, the Supreme Court also emphasized the principle of the protection of prior rights. Even if the trademark "Yipinshi" has been registered, and the registration time has exceeded the five-year time limit for invalidation stipulated by the Trademark Law, the prior copyright holder may still prohibit the use of the trademark.