Recently, the Beijing Intellectual Property Court held a press conference on the trial of cases related to the protection of the prior rights and interests of the names of works, and conducted a series of administrative cases and typical cases concerning the authorization and confirmation of trademark rights concerning the “prior rights and interests of the names of works” recently heard by the court. It also explained in detail the main factors considered by the court in the trial of such cases. The above-mentioned release by the Beijing Intellectual Property Court further pointed out the direction for how right holders seek to apply the provisions of Article 32 of the Trademark Law, and protect their prior rights and interests based on the name of the work in administrative cases of trademark authorization and confirmation.
This article focuses on relevant laws and regulations, prior cases, and combined with the (2019) Jing No. 73 Xing Chu No. 4260 "Glory of the King" trademark announcement of invalidation case represented by the author. I would like to discuss the argument path of how the right holder seeks to protect the prior rights and interests of the work’s name in trademark disputes.
The nature of the prior rights and interests in the work’s name
China’s “Trademark Law” grants rights holders a basis of rights other than trademark rights through Article 32 as a means of relief. The Supreme People’s Court clarified in Article 22 of the “Regulations on Several Issues Concerning the Trial of Administrative Cases for the Authorization and Confirmation of Trademarks” (referred to as the “Regulations”) that, if certain conditions are met, the right holder can be based on the prior rights from the name of the work, the name of the role of the work, etc., and obtain rights relief in accordance with Article 32 of the Trademark Law. The Beijing Higher People's Court further explained the protection conditions in the "Guidelines for the Trial of Administrative Cases for the Authorization and Confirmation of Trademarks".
The essence of this right is a kind of competition law right that the right owner of the work obtains based on the reputation of the work itself for commercial development based on the elements of the work such as the name of the work, and the right to obtain relevant commercial interests. In modern commercial practice, including the "game" category of "Glory of the King", such as literary works, movies, TV dramas, etc., the cultural attributes of these works make relevant audiences (readers, audiences, players) has a strong empathy effect towards the element of the works, which makes the audiences willing to buy and consume cooperative products and peripheral products related to the name of the work and the elements of the work. The right holders of the works thus own a competitive advantage, that is, a prior right protected by the above-mentioned laws.
Such prior rights, commonly known as "commodity rights", have already formed a mature licensing industry abroad. Right holders of well-known works have built a complete industrial chain including peripheral products and theme parks around their works and roles, in order to obtain more and broader benefits through excellent works.
The market has proven that the surrounding industrial chain of the prior rights and interests of the work name contains a huge commercial value and is an extremely important competitive advantage for the owner of the work. However, the surrounding industry chain and the related product category of the work must inevitably have a large distance in the definition of similar products in the Trademark Law, which gives a small number of malicious applicants the opportunity to preempt trademarks of other categories and seize trading opportunities. In this case, one of the remedies for right holders is to seek the protection of their prior rights and interests under Article 32 of the Trademark Law to eliminate the threat of trademark preemptive registration.
The protection conditions and demonstration path of the prior rights and interests of the title of the work
After the clear formulation of relevant regulations and guidelines, and the identification of numerous previous cases, in practice, the conditions for the protection of the prior rights and interests of the name of the work have gradually become clear and unified in judicial identification. In summary, in the current administrative cases of trademark disputes, the protection conditions for this kind of rights can be divided into the following five items:
(1) Object of protection
The object of protection is the name of the work and the name of the role in the work, etc. The first thing to note is that if the object of protection can be protected as the rights clearly stipulated by the law (such as name rights, portrait rights, and copyrights), there is no need to apply the work name prior rights protection path.
Regarding the object of protection, the Supreme People’s Court has listed it in a general manner in Article 22, paragraph 2 of the “Regulations”. In addition to clearly stating that the names of works and the names of roles in the works can be protected, they also leave the word "etc.", which leaves room for the form of rights and interests that may arise with the development of business practices in the future. Considering the existing relevant judgments, there are also cases in which the names of well-known bands are protected as in the "TEAMBEATLES" case1 and the "Yuquan" case2, but in general, the cases in which the "title of the work" and the name of the role of the work are protected as objects are relatively small. This may be due to the expansive nature of the prior rights and interests of the title of the work itself, which leaves a considerable room for judicial discretion, and the judiciary should maintain a relatively restrained and conservative attitude. Therefore, using the name of the work and the name of the character in the work as the object of protection may be relatively easier to be supported than other forms.
The particularity of the object of protection is another issue worth noting. Since the names of some works and character names themselves use more common words and names that are not invented words, lack uniqueness themselves. When seeking the protection of prior rights and interests, the judicial authority may consider whether the consequences of the protection will lead to the right holder's "monopoly" of non-invented words in a wider commercial field, and therefore narrow the scope of protection, or even deny it. In the "环太平洋Pacific Rim" case3, the Beijing Intellectual Property Court held that the name "Pacific Rim" of the work that was the subject of protection belonged to a geographical term referring to a fixed area and was not originally created by the right holder, so it did not support its request. The author believes that the nature of the prior rights and interests of the name of the work is different from the trademark right, and the specificity of the object of protection is also different from the distinctiveness of the trademark sign. Whether a non-invented and more common term can be managed by the right owner,receive the uniqueness and the establishment of a stable corresponding relationship with the right holder and therefore can obtain protection may be controversial. However, for such objects of protection, on the basis of sufficient proof by the right holders of their reputation, scope of protection, and subjective malice of the applicant for the disputed trademark, the judicial organs may consider various factors to protect them or at least be protected within a narrow range. For right holders, they can also use search engine keyword popularity index search, newspaper search, and relevant business field practices to strengthen the proof of the uniqueness of the protected object in a certain area.
(2) Popularity
Popularity means that the object of protection (the name of the work, the name of the role in the work, etc.) already has a certain degree of popularity before the application for the disputed trademark.
The current laws and regulations do not clearly stipulate the degree of popularity of the protected object in the prior rights protection of the name of the work, or the length of time for its publicity and operation. The author believes that the popularity of the object of protection is closely related to the scope of protection sought by the right holder: if the scope of protection sought is closer to the commercial field to which the object of protection belongs, the requirements for proof of its popularity do not need to be very high; the farther of the distance between the two, the higher the requirement for the popularity of the protected object itself.
Based on the current rapid development of the cultural and entertainment market in China, in reality, once placed on the market, many protected objects and their potential commercial values will attracted the attention of malicious applicants, and induce them to register on a series of goods and services that are “here-and-away” from the field of the protected objects. The trademark invalidation case of "Glory of the King" is also a typical case of this kind. The author believes that in order to protect the legal prior rights and interests of the right holders, it is not appropriate to make mandatory requirements for the promotion and operating hours of the protected objects, but to make a comprehensive judgment based on the evidence facts and various factors of the case.
Especially in today's mobile Internet era, the widespread popularity of the Internet has changed the traditional business operation mode, allowing products to reach the general public quickly through the information dissemination of the Internet. Its characteristics of fast and wide-range of dissemination can be considered to some extent in the investigation of popularity. In the "Meitu" trademark invalidation case4, the Supreme People's Court considered the characteristics of the Internet industry in the process of determining well-known trademarks. In the "Xiaomi Life" trademark infringement case5 represented by the author, the court also combined the marketing characteristics of the Internet era and determined that the ninth category "Xiaomi" trademark could be protected as a well-known trademark at the end of the year when Xiaomi mobile phones were launched.
In the “Glory of the King” trademark invalidation case, there was a short interval between the filing date of the disputed trademark and the release of Tencent's “Glory of the King” game. In order to prove the popularity of the "Glory of the King" game name before the filing date of the disputed trademark, the plaintiff, while presenting evidence of traditional promotion and publicity, also tried its best to provide a series of evidence from the perspective of Internet information dissemination, and emphasized that it is compatible with other prior comparison of games with a certain degree of popularity, and has proved the popularity of the game name of “Glory of the King” from the perspective of the popularity of searching before the filing date of the disputed trademark, users’ activation, and Tencent’s promotion mode of utilizing social platforms to drive the game promotion etc.
(3) Mark similarity
Mark similarity means that the disputed trademark is the same or highly similar to the object of protection.
Regarding the disputed trademarks that are related to the object of protection and account for a relatively small proportion of the whole, can they be regulated through the prior rights and interests of the name of the work? The “Xiaoyang Xiaoen” case notified by the Beijing Intellectual Property Court gave an affirmative answer that can be regulated in the case that the disputed trademark is a combination of graphics and that text and graphics occupy a major part. However, can it still be regulated if the proportion of related words in word marks is small? This issue may need to be comprehensively considered in conjunction with the malice of the applicant for the disputed trademark and the popularity of the object of protection.
(The characteristic of prior rights and interests in the name of a work in actual commercial practice is that the right holder uses the popularity of the work to expand the business operation in a field different from the work itself, thereby gaining competitive advantages and commercial benefits.)
(4) Scope of protection
The scope of protection refers to the possibility of confusion or mis-identification of the existence of an association. It is the ultimate destination for the protection of the prior rights and interests of the work name, and it is also the most controversial issue.
The characteristic of prior rights in the name of a work in actual commercial practice is that the right holder uses the reputation of the work to expand business operation in a business field different from the work itself, thereby gaining competitive advantages and commercial benefits. This feature determines that the scope of goods and services involved in the prior rights and interests of the work name must be different from the scope of the work itself. For this reason, the scope of protection of the prior rights and interests of the name of the work is quite controversial.
The author believes that the protection of the prior rights and interests of the title of a work should closely integrate with the situation of covering the relevant public of the popularity of the object of protection, and the general situation of commercial development of the work’s type of the object of protection in the current real business practice, and make a comprehensive judgment and limit it to a certain range within the specific field.
Specific to the case, the right holder may need to start from the following two points to prove the scope of protection that the object of protection can be extended:
The first is popularity. The five conditions of the prior rights protection of the title of the work all influence each other. The popularity of the object of protection in fact determines its potential commercial value in actual business practice, and has a greater positive impact on the proof of the scope of protection. The higher the popularity of a work in the public, the wider the scope of business it may expand through commercial development, which is in line with the rules of experience in daily life. In the area of popularity, movies and games as representatives of contemporary mass entertainment media may have certain advantages in proof.
The second is the actual commercial development behavior. The prior rights and interests of the name of the work protect the right holder’s competitive advantage based on the work and the foreseeable commercial interests in the future. Therefore, the author believes that the right holder does not need and cannot prove that they have conducted commercial development around the object of protection in disputed trademark approval product or related product; otherwise it would be contrary to the original intention of the prior rights protection of the name of the work. However, if the right holder can provide evidences to prove that their other works have been developed on the products or related products of the disputed trademark before the filing date of the disputed trademark, or prove other right owners in the same industry before the filing date of the disputed trademark have already developed these products and have formed real business practices, which can prove more powerfully that the scope of protection of the object of protection should be extended to the products approved by the disputed trademark.
In the "Glory of the King" trademark invalidation case, the plaintiff tried his best to provide evidence from the above two aspects for the 33rd category "liquor; fruit wine; wine" approved by the disputed trademark: on the one hand, it proved that other games of Tencent has already carried out commercial development before the disputed trademark application date in alcoholic beverages, beverages, catering and other areas that are highly related to the above-mentioned commodities; on the other hand, it proves that other companies have also carried out similar commercial developments for their games before the trademark application date. In the end, the Beijing Intellectual Property Court determined that the game "Glory of the King" belongs to the category of daily entertainment. According to the characteristics of the industry, the peripheral products of the game usually cover a variety of commodities such as beverages, food, and daily necessities, and the plaintiff also provided evidences to prove that they have cooperated to develop a various types of drinks and other peripheral products. Therefore, the popularity of the name of the "Glory of the King" can reach the scope of daily life.
Based on the popularity of the object of protection and the extendability of the scope of protection in actual commercial practice, a disputed trademark that is the same or similar to the object of protection will inevitably make consumers mistakenly believe that it has a specific relationship with the right owner’s goods or has a particular contact with the right owner.
(5) Subjective malice
Subjective malice is divided into direct malice and indirect malice.
If the applicant of the disputed trademark has actually used the disputed trademark to grab the right holder's competitive advantage and squeeze the right holder's trading opportunities, the subjective malice is self-evident.
For indirect malice, it usually needs to be proved by combining the evidence in the aforementioned four conditions. As mentioned above, the five conditions of the prior rights protection of the work name all affect each other, and the uniqueness of the object of protection, the popularity of the object of protection, the similarity of the mark, and the extension of the scope of protection are all very much related to indirect maliciousness.
If the object of protection is contrived and has strong peculiarities, it is extremely difficult for the applicant of the disputed trademark to explain why he applied for the disputed trademark after the publication of the right holder's work; the higher the reputation of the object of protection, the more explanatory the applicant of the disputed trademark knowing the object of protection; the higher the degree of similarity of the marks, the more prominent the imitation intention of the applicant for the disputed trademark; the scope of protection can be extended to the approved goods, the applicant for the disputed trademark obviously has a malice to profit from applying for the trademark to seize the right holder competitive advantage.
(If the applicant of the disputed trademark has actually used the disputed trademark to seize the right holder's competitive advantage and squeeze the right holder's trading opportunities, the subjective malice is self-evident.)
The author believes that when the evidence facts in the previous four conditions meet certain conditions, comprehensive consideration can directly infer the subjective malice of the disputed trademark applicant.
In the "Glory of the King" trademark invalidation case, the Beijing Intellectual Property Court determined after comprehensive consideration of the facts in the case that: when the disputed trademark applicant applied for registration of the disputed trademark, he should have known the game "Glory of the King", and the game's popularity. And as mentioned above, the scope covers the field of daily life, so its application for registration of the disputed trademark can hardly be regarded as coming from good will.
In addition, the plaintiff also provided evidences to prove that the disputed trademark applicant had applied for the registration of multiple "Glory of the King" related trademarks, and his legal representative was also the legal representative of Guizhou King's Glory Liquor Co., Ltd., which further proved the subjective malice of the disputed trademark applicant.
Conclusion
As shown by the data reported by the Beijing Intellectual Property Court’s press conference, at present, cases involving the protection of prior rights and interests of work names in administrative litigation for trademark authorization and confirmation still account for a very low proportion, but most of them have received widespread attention from the society. To a certain extent, this is because China’s entertainment industry has entered the “IP” era, and the commercial development of the prior rights and interests of work titles has been widely penetrated into the lives of ordinary consumers, and its huge commercial interests and corresponding legal protections are both increasingly attracted the attention of market entities and even general consumers.
The author believes that with the development of China's legal system, the deepening of global economic and cultural exchanges, and the prosperity of the culture and entertainment industry, the number and proportion of cases seeking the protection of prior rights and interests of work names in accordance with Article 32 of the Trademark Law will gradually increase. The protection path of this right will be further developed and matured through the exploration of more cases in practice.
1 (2015) Gao Xing (Zhi) Final No. 752.
2 (2016) Jing No.73, Xing Chu No. 6529.
3 (2017) Jing 73, Xing Chu No. 4809.
4 (2018) Supreme Law Xing Shen No. 3605.
5 (2019) Su Min Final No. 1316.
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