It is always advisable for 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 is the second-largest group-buying website in the US. The manner in which the name of the company is always displayed (see graphic) is protected by copyright. The artwork was first published in February 2011 in the US. However, LivingSocial did not register the artwork with China’s National Copyright Administration until 2012.
On 10 May 2011, Guangzhou Honggu Supply Chain Management (Honggu), had already filed for the trademark registration of “livingsocial” (the 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 US and Australia, which had been filed on 23 February 2011 and 14 March 2011, respectively.
However, the China Trademark Office (CTMO) dismissed LivingSocial’s opposition on 28 August 2013. On 18 September 2013, LivingSocial appealed to the Trademark Review and Adjudication Board (TRAB). In the evidence exchange proceeding, Honggu produced a copyright registration certificate of the “livingsocial” artwork. The certificate, which was issued on 16 June 2011, alleged that the artwork had been created on 11 April 1991, and had been first published on 12 April 1991.
On 24 December, 2014, the TRAB made a decision in favour of LivingSocial, based on the reasoning that:
- 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;
- 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; and
- 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 found that:
- LivingSocial’s artwork was original and copyrightable. Since China and the US 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 and article 3(1)(a) of the Berne Convention);
- Although Honggu challenged the prior copyright of LivingSocial by arguing the latter plagiarized its own artwork, the evidence adduced did not suffice to prove this 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 was not compelling to establish that its artwork was created and first published at the alleged time. On the contrary, the evidence adduced by LivingSocial proved that the first publication of its artwork was no later than 23 February 2011;
- It is the acknowledged doctrine that if the accused trademark exhibited substantial similarity to a copyrighted work, once access to the copyrighted work 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/her independent creation. Such doctrine must apply to this case. Without compelling evidence proving the opposed mark was created independently by Honggu, the court found that the opposed mark infringed the prior copyright of LivingSocial.
On 10 October 2017, the Beijing IP Court upheld the TRAB decision.
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, a copyright registration certificate is 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 artwork 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 to using “trademark gazettes and trademark registration certificates as preliminary evidence to prove that the trademark applicant is entitled to claim his/her 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/her 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.
Wu Xiangrong is a senior trademark counsel at Wanhuida Peksung IP Group