On the ninth day of December 2013, 福建省晋江市池店赤塘制鞋七厂obtained a class 35 “Advertising and Marketing Service” trademark“ ”from Trademark Office of National Intellectual Property Administration. After receiving objections, the said trademark was allowed to register on the seventh day of September 2016. On the sixteenth day of June 2017, 娱乐壹英国有限公司 (applicant of the present case) lodged an application for declaration of invalidation of trademark“ ”, on the major ground that the applicant, the animation “Peppa Pig” he published and the image of the characters in the animation were highly recognizable in China and the world. The diagram of the disputed trademark was substantially similar to the applicant’s copyrighted artwork. Such that it infringed the prior copyright owned by the applicant. The applicant requested, pursuant to the relevant requirements of Article 32 of Trademark Law of the People’s Republic of China (“Trademark Law”) and Article 45 Sub-section 1 thereof, to declare the dispute trademark invalid. The respondent did not make any submission before the deadline.
After investigation it was found that, first, the form of expression of image of “Peppa Pig” mentioned by the applicant was unique. Such that it had greater originality, and it belonged to an artwork protected by copyright law. Second, the relevant agreement of intellectual property transfer submitted by the applicant, the US copyright registration certificate of “Peppa Pig” artwork and the images of the work etc were sufficient to form a complete chain of evidence to prove that Astley Baker Davies Limited and the applicant are the copyright owners of “Peppa Pig” artwork; that the dates of completion, publication and use were earlier than the date of application of the disputed trademark. China and the US are member states of Berne Convention, so that the copyright obtained by the applicant in the US is equally protected by the China’s copyright law. Besides, the diagram of the disputed trademark and the copyrighted artwork of the applicant shared highly similar components, form of expression, design details and etc. It gave no different visual effect to the public, which it can be regarded as substantial similar in copyright law. At last, the evidence provided by the applicant can prove that, before the application date of the disputed trademark, mainland China’s press such as Xinmin.cn, Readmoo and the West Regions Library Forum etc. reported “Peppa Pig” series of books and games. It is completely possible that the respondent contacted to the applicant’s work before the application date of the disputed trademark. The text of the disputed trademark was completely the same as the name of the animation character in the applicant’s work. The application for the registration of the disputed trademark can hardly be said to be a coincidence. To conclude, the respondent without the permission or consent of the applicant applied for registration of the disputed trademark which contained a diagram highly similar to a copyrighted work of the applicant. Such conduct infringed the prior copyright of the applicant and the disputed trademark registration violated Article 32 of the Trademark Law that no applicant for trademark application may infringe upon another person’s existing prior rights. Therefore, the disputed trademark should be declared invalid in accordance with the law.
Article 32 of the Trademark Law provides that: “No applicant for trademark application may infringe upon another person’s existing prior rights, nor may he, by illegitimate means, rush to register a trademark that is already in use by another person and has certain influence.” In the above, “prior rights” refers to the relevant rights acquired before the date of registration application of the disputed trademark and stipulated in the law or ought to be protected by the law besides trademark rights, including copyright. Anyone who without the permission of the copyright owner registers a copyrighted work owned by another as a trademark shall be regarded as infringing the prior copyright of another, and shall be limited by Article 32 of the Trademark Law. From the judgment of the present case, in deciding whether the registration of the disputed trademark infringes the prior copyright of the applicant, the court shall take into account the factors including whether the work mentioned by the applicant amounts to a work protected by the copyright law, whether the applicant enjoys the prior copyright of the work, whether the disputed trademark and the work amount to a substantial similarity and whether the respondent contacted to the work etc. It is worth noting that China enters Berne Convention in 1992, such that, all literary and art works initially published in the member states are also protected in China.