The logo below has been used by Cheung Kong (Holdings) Limited (CKH), the first listed public company in Hong Kong, since 1972.
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A Chinese company located in Dongguan City applied to register a logo that was identical to the CKH logo in various classes of goods and services in which the CKH logo was not registered. CKH unsuccessfully opposed the applications before the China Trademark Office (CTMO). The Trademark Review and Adjudication Board (TRAB) also did not support CKH's claims in its review of the CTMO decision. One of the grounds relied on in the opposition and review applications was that CKH was the owner of rights, including copyright, in the CKH logo and the Dongguan company had infringed CKH's prior rights in the logo. Not only did the CTMO and TRAB turn a blind eye to the Dongguan company's bad faith, but both authorities held that despite evidence showing use of the CKH logo by CKH in commercial activities since 1972, it was insufficient to prove that CKH owned copyright in the CKH logo. Prior registrations of the logo by CKH in other classes of goods and services in China showed only that CKH owned the trademark rights – but not the copyright – in the logo.
CKH appealed to the Beijing First Intermediate Court. It obtained and submitted a certificate of copyright registration as evidence to support its ownership of the copyright in the CKH logo. However, the court refused to uphold the copyright claim, this time on the grounds that the CKH logo lacked artistic value and did not qualify for copyright protection.
A further appeal was filed with the Beijing Higher People’s Court. The appeal court took a different view and held that the CKH logo not only was made up of a simple combination of three English letters, but it also had a certain design of originality and qualified for protection as an artistic work. Taking into consideration that the copyright registration was obtained for the CKH logo, and that the evidence submitted showed that the logo had been used in commercial activities for more than 30 years since 1972, the appeal court accepted that CKH was the owner of the copyright in the logo. The mark filed by the Dongguan company was a reproduction of the CKH logo and had infringed CKH's rights. Thus, the appeal court determined that registration of the mark should be refused.
Rights holders in China often have a tough time when their logos are pre-emptively registered by others in classes of goods or services in which they do not have a registration, and thus sometimes must rely on copyright as grounds for opposition. To date, in most cases the Beijing Higher People’s Court has refused to accept evidence of prior trademark registrations in other classes or in other countries and prior use of the logo in commercial activities as sufficient to show copyright ownership in the logo. This is far from reasonable, as the Copyright Law requires only prima facie evidence to substantiate a copyright claim. Evidence of prior use of the logo in commercial activities by the rights holder should qualify as prima facie evidence.
Following the breakthrough made by the Beijing Higher People’s Court in this case by recognising copyright protection in a logo and accepting prior user evidence and a copyright registration obtained after the date of the applicant’s application as sufficient to prove copyright ownership, it is hoped that in future, rights holders will have an easier path towards protecting and enforcing their rights in China.
Mena Lo and Templar D Fang
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.