Zhu Zhigang Paul Ranjard August 22 2022 Copyright owner successfully defeats trademark squatter in China Wanhuida Intellectual Property | Intellectual Property - China Zhu Zhigang, Paul Ranjard Intellectual Property FactsShenzhen Intermediate CourtSupreme People's CourtCommentFactsIn 2006, Fuku Electronics Co, Ltd, a Korean company, developed an electric pressure cooker that was commercialised with a logo inspired by a famous Korean calligraph (Figure 1), pronounced "Yipinshi" in Pinyin.Figure 1: "Yipinshi" logoThe 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 it on electric pressure cookers via a company in Zhanjiang.In June 2016, Zheng and his company filed a lawsuit before the Shenzhen Intermediate Court against both Fuku Electronics companies (ie, the Korean company and the Chinese company), claiming that they were infringing his "Yipinshi" trademarks. Qingdao Fuku Electronics retaliated by filing a lawsuit before the same court against Zheng and his company for copyright infringement.Shenzhen Intermediate CourtThe Shenzhen Intermediate Court dismissed Qingdao Fuku Electronics' copyright claim, holding that:the "Yipinshi" logo had been designed by reference to the "Qiushi" style, which was already in the public domain; andthe originality of the logo was insufficient to allow copyright protection.Furthermore, the Court noted 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. The trademarks had been registered for more than five years and, therefore, could not be challenged.The Guangdong High Court upheld the judgment. Qingdao Fuku Electronics requested a retrial before the Supreme People's Court.Supreme People's CourtOn 16 December 2021, the Supreme People's Court reversed the original judgment and found that Zheng and his company had infringed Qingdao Fuku Electronics' copyright.The Supreme People's Court held that specific calligraphic characters may constitute works of art even if they use a font that has fallen into the public domain. As long as the author carries out the calligraphy modelling independently and that the work embodies the author's individuality, the work can meet the requirement of originality under copyright law and become a protected work of art.The Court noted that the "Yipinshi" calligraphy characters were broadly different from the existing characters in the public domain and, more importantly, that their combination was the result of individual choice, selection and arrangement. Such factors represented the author's original expression. Therefore, the work 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 People's Court reversed the findings of the first-instance and appeal courts and found that the similarity was clearly established.Finally, the Supreme Court rejected the trademark owner's argument regarding its exclusive trademark right and the expiration of the five-year period following the registration date. The Court cited article 1.1 of its 2008 Provision on Several Issues Relating to Conflicts between Registered Trademarks and prior rights: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 and his company to immediately stop infringing Qingdao Fuku Electronics' "Yipinshi" artwork and compensate Qingdao Fuku Electronics' economic losses and reasonable expenses, totalling 500,000 yuan.CommentOriginality 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 must it reach a certain degree?In the "Yipinshi" case, the Supreme People's Court adopted the view that even if the artwork is derived from another artwork 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 the degree of originality. In addition, the Supreme People's Court emphasised the principle of the protection of prior rights. Even though the "Yipinshi" trademark had been registered, and the registration time had exceeded the five-year time limit for invalidation stipulated by the Trademark Law, the prior copyright holder could still prohibit the use of the trademark.For further information on this topic please contact Zhigang Zhu or Paul Ranjard at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected] or [email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.This article first appeared in World Trademark Review. For further information, please go to www.worldtrademarkreview.com.