It is always advisable for the copyright owners who want to claim prior rights to preserve a complete chain of evidence from the design process, all the way down to the publication, registration and actual use of the artwork involved.

LivingSocial, Inc. is the second largest group-buying website in the United States. The manner in which the name of the company is always displayed: "" is protected by a copyright. The artwork was first published in February 2011 in the United States. However, LivingSocial registered the said artwork with China’s National Copyright Administration only in 2012.

On May 10, 2011, Guangzhou Honggu Supply Chain Management Co., Ltd. (“Honggu”), had already filed for the trademark registration of “” (Opposed Mark) in class 14.

LivingSocial filed an opposition, arguing that the registration infringed its copyright. In order to prove that its ownership of the copyrighted artwork predated the filing of the Opposed Mark, LivingSocial cited its registration of the trademark “” in the United States and Australia, which had been filed on February 23, 2011 and March 14, 2011 respectively.

However, the CTMO dismissed LivingSocial’s opposition on August 28, 2013.

On September 18, 2013, LivingSocial appealed to the Trademark Review and Adjudication Board (“TRAB”). In the evidence exchange proceeding, Honggu produced a copyright registration certificate of the “” artwork. The certificate, which was issued on June 16, 2011, alleged that the artwork had been created on April 11, 1991 and had been first published on April 12, 1991.

On December 24, 2014, the TRAB made a decision in favor of LivingSocial based on the reasoning that:

(1) The Opposed Mark is a slavish copy of the Opponent’s copyrighted artwork in respect of components, design style and visual effect, making it substantially similar to the latter;

(2) The media coverage on the opponent’s business activities, published prior to the application date of the Opposed Mark, proves that Honggu may have had access to the copyrighted artwork before filing its trademark application.

(3) Without corroborating evidence, the copyright registration certificate submitted by Honggu alone does not suffice to prove that Honggu created the artwork before the Opponent.

Honggu appealed against the TRAB decision with the Beijing Intellectual Property Court. The court finds that:

(1) LivingSocial’s artwork is original and copyrightable. Since China and the United States are both member states of the Berne Convention for the Protection of Literary and Artistic Works, LivingSocial’s artwork, whether published or not, falls under the protection scope of China’s Copyright Law (Article 2.2 of the Copyright Law & Article 3(1)(a) of the Berne Convention);

(2) Though Honggu challenged the prior copyright of LivingSocial by arguing the latter plagiarized its own artwork, the evidence adduced does not suffice to prove such argument. Given that China adopts the voluntary registration of works, there is no substantial examination on copyright registration. The time of creation and first publication of works as specified in the copyright registration certificate is inadmissible unless corroborated by other evidence. The Opposed Mark and many other marks replicating the litigious artwork of Honggu were filed in May 2011. The evidence submitted by Honggu is not compelling to establish that its artwork was created and first published at the alleged time. On the contrary, the evidence adduced by LivingSocial proves that the first publication of its artwork is no later than February 23, 2011.

(3) It is the acknowledged doctrine that if the accused trademark exhibits substantial similarity to a copyrighted works, once access to the copyrighted works has been demonstrated by the accused, copyright infringement can be established, unless the accused is able to prove that the accused work is the result of his independent creation. Such doctrine shall apply to this case. Without compelling evidence proving the Opposed Mark was created independently by Honggu, the court finds that the Opposed Mark infringes the prior copyright of LivingSocial.

On October 10, 2017, the Beijing IP Court ruled to uphold the TRAB decision.

Comments:

According to the provisions of Article 33 of the 2014 Trademark Law, only a prior right owner or interested party is entitled to file an opposition. The case rests upon the establishment of prior copyright ownership.

In practice, copyright registration certificate is the direct evidence to prove ownership. Since copyright registration is not compulsory, many copyright owners do not proceed with the registration for their creative designs or artworks until falling victim to bad-faith filings of trademark squatters. It is therefore recommended to register the artwork as early as possible.

In case there is no prior copyright registration before the application of the offending mark, Article 19.3 of the Provisions of the Supreme People’s Court on Several Issues concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights (2017) provides an alternative of using “trademark gazettes and trademark registration certificates as preliminary evidence to prove that the trademark applicant is entitled to claim his rights, as an interested party, over the copyright of the sign involved”. In practice, the opinions of the CTMO, TRAB and courts are divided in this regard. But a copyright owner always stands a better chance if corroborating evidence can be adduced to support his claim. It is always advisable to preserve a complete chain of evidence from the design process, all the way down to the publication, registration and actual use of the artwork involved.

Contributor: Mr. Wu Xiangrong