Comcast Corporation (Comcast) is the biggest cable operator and internet service provider in the US. In actual use, its name is displayed with a capital letter C in red color added to the word (see its logo 1).
Comcast did not register its name as a trademark in China for the reason that, according to the Foreign Investment Industrial Guidance Catalogue, which was released in 1995 by the National Development and Reform Commission and has been regularly updated, “telecommunications” and “internet related services” are among the business activities that are prohibited to foreigners. Therefore, Comcast, as a trademark and a trade name, has been used and promoted in a quite different manner compared with many other trademarks.
On 9 September 2010, a Chinese company filed for the registration of logo 2 as a trademark (the disputed trademark), designating goods in class 9: “computer peripheral device, fibre optic cable, cable, telephone wire, network communication equipment”. The trademark was approved on 28 September 2011. In its business promotion, the Chinese company even claimed that Comcast was one of its shareholders.
On 28 September 2016, Comcast filed an invalidation action against the disputed trademark before the Trademark Review and Adjudication Board (TRAB), claiming that, even not registered, the word Comcast had acquired a certain influence in China and the disputed trademark had been filed in bad faith.
However, Comcast was not able to justify any prior use of the trademark or any reputation in China. It is not surprising, therefore, that the TRAB dismissed, on 26 October 2017, the invalidation application and maintained the registration of the disputed trademark. Comcast appealed before the Beijing Intellectual Property Court, focusing on other “prior rights” (Article 31 of the 2001 version of the Trademark Law), namely, its trade name right “Comcast” and its copyright attached to the specific representation of its name.
Regarding the trade name, Comcast submitted evidence showing that extensive media coverage in Chinese periodicals and magazines had acquainted the relevant public in China with the name Comcast, even though Comcast was not directly engaged in providing “cable TV programmes, video-on-demand and hi-definition TV services or internet services” in China.
Comcast argued that the designated goods of the disputed trademark “cable, telephone wire and network communication equipment” are similar to Comcast’s “cable TV and communication network” services, which have attained a certain visibility among Chinese consumers, due to their close association and shared purpose, usage and consumers.
The Beijing IP Court was satisfied that the public in China is likely to associate the name Comcast with the American company, and not with the Chinese company. Besides, the false promotion, claiming that Comcast was one of its shareholders, obviously backlashed against the trademark registrant.
Regarding the copyright claim, Comcast needed to convince the Court that the specific representation of its name is sufficiently aesthetic and original to deserve copyright protection, and that it is the owner of the copyright.
In its judgment, the Beijing IP Court described the logo 1 and stated that the word “comcast” is combined with a red semicircle encircling the first letter of the word. Notwithstanding the simplicity of the design, the combination is original. In particular, the layout of the red semicircle provides “eye-catching, unique and simple” artistic features, reaching the threshold of originality for copyright protection.
To prove the prior date of the copyright, Comcast submitted evidence showing that the logo had been created and first published on 31 December 1999. (Later, Comcast registered the copyright in China on 25 November 2013).
To prove the ownership of the copyright, Comcast produced the copyright registration certificate, a notarized and legalized statement by the artist who had created the logo, various design manuscripts, a visual identification manual dated 1999, photos published in a periodical dated 2002 showcasing the use of the stylized logo, as well as its US trademark filing dossiers, a set of evidence that the Beijing IP Court found as forming a chain of evidence proving Comcast’s proprietorship over the copyrighted artwork.
On 9 November 2018, the Beijing IP Court rescinded the TRAB decision and ordered the board to remake its invalidation decision. Wan Hui Da Law Firm represented Comcast in the court proceeding.
The Beijing IP Court made a very welcome decision. It accepted the fact that a foreign trade name may establish visibility among the relevant public in China through media coverage, even without direct business activity. It also made clear that simplicity should not be used as a pretext to deny originality and copyright protection.
Of course, defendants always claim that they created their work independently and that the similarity, or even identicalness, is a pure coincidence. The likelihood of coincidence diminishes in reverse proportion with the complexity of the work. Where a drawing is extremely simple (see Nike, for example), it is not impossible that, by coincidence, another artist might create an identical, or almost identical, design. In such case, it is important to establish that the second artist has been in contact, one way or another, with the original work. In this case the false promotion of the trademark owner was a clear indication of such “contact” and of its bad faith.
Lei Yongjian is a partner at Wanhuida Peksung. He can be contacted on +86 10 6892 1000 or by e-mail at [email protected]