What should we concern: prior copyright shall be regarded as a prior right being protected in China; a registered mark, which is substantively similar to the other’s prior copyrighted work, shall be announced invalid on the basis of copyright infringement.
“THE ADVENTURES OF TINTIN” (French: “LES ADVENTURES DE TINTIN”) is a world famous series of comic albums created by the Belgian cartoonist HERGE. After HERGE passing away, all the rights in association with this work have been assigned to and managed by Moulinsart which was established under the HERGE Foundation. Since “THE ADVENTURES OF TINTIN” entered into China in 1988, this series work has gained immense popularity among the Chinese readers. In China, Moulinsart has applied for and registered several marks for “TINTIN” and “TINTIN & Device” (drawing of this mark is listed below) in respect of various goods and services in classes 9, 16, 25, 28 and 41. The images of the boy and the dog with the bone as shown in the “TINTIN & Device” mark are the leading character “TINTIN” and his friend “Snowy” in the “THE ADVENTURES OF TINTIN”.
In 2004, someone applied for the mark “TINTIN & Device” (drawing is listed below) with the China Trademark Office under No. 4412177 in class 18 for wallets, leather, umbrella, hand bags and goods alike.
In 2013, Moulinsart filed a trademark dispute with the China Trademark Review and Adjudication Board (TRAB) against this No. 4412177 mark claiming that the use of this mark which was registered on goods similar to Moulinsart’s prior “TINTIN & Device” registrations in classes 9, 16 and 25 would cause confusion to the public as to the origin of the products and the registration of this contested mark infringed upon Moulinsart’s prior copyright and rights on character merchandising in connection with the work “THE ADVENTURES OF TINTIN”.
Moulinsart submitted evidences on trademark registrations of “TINTIN” marks, notarized Declaration on the ownership of copyright regarding the work “THE ADVENTURES OF TINTIN”, sample comic book of “THE ADVENTURES OF TINTIN” published by China Children’s Press and Publication Group and many other evidences to the TRAB so as to prove the prior copyright it enjoys. The image of “” can also be seen on such evidences.
The TRAB rendered the Decision on Invalidation on December 30, 2014 with the case number “商评字No.0000117180” after examining this case. The TRAB found, based on the evidences filed by Moulinsart, that Moulinsart enjoyed copyright over the work “THE ADVENTURES OF TINTIN” prior to the application of the mark in dispute and held that the images in the mark in dispute are substantively similar to the leading character “TINTIN” and his friend “Snowy” in such work. The TRAB further held that since “THE ADVENTURES OF TINTIN” was published in China and enjoyed certain fame prior to the filing of the mark in dispute, the registrant of this mark had the chance to get access to this work before filing the mark; in the meantime, considering that the registrant did not provide any evidences to prove that the mark in dispute was created independently, it could be concluded that the mark in dispute was a malicious copy and imitation of the character images in “THE ADVENTURES OF TINTIN”.
Therefore, the TRAB announced the registration of the mark in dispute should be invalid.
King & Wood Mallesons is the trademark attorney representing Moulinsart in this case.
In order to get protection on basis of prior copyright according to Article 32 of the China Trademark Law, the preconditions that the applied/registered mark is substantively similar to the other’s prior copyrighted work and the applicant/registrant actually got access to or has the chance to get access to the copyrighted work should be met. Given that only formality examination is conducted during the copyright registration in China, the copyright registration certificate obtained in China can only serve as prime facie evidence with limited probative force. Therefore in trademark cases, the parties claiming for infringement of prior copyright need to provide further evidences, such as evidences on creation and publication of the works, in order to make a strong basis. Besides, the claiming parties shall also make effort to prove the contested marks are similar with the copyrighted works and the applicants/registrants of the marks are aware of or at least possible to be aware of the works.
Nevertheless, the TRAB did not support Moulinsart’s claim that the registration of the mark in dispute infringed upon Moulinsart’s prior rights of character merchandising in connection with the work “THE ADVENTURES OF TINTIN” but finding such claim lacked of factual and legal basis. Rights of character merchandising include the rights to use the character images or character names from literary works or movies in business for profits and the rights to prohibit others from using such character images or character names in business without authorization. We are of the view that the rights of character merchandising shall be protected as one of the “prior rights” stipulated in Article 32 of the China Trademark Law. And the Beijing High People’s Court has recognized that the rights of character merchandising should be protected as “prior right” in the administrative litigation regarding the mark “007 BOND”. Given that the evidences in the above case are sufficient to prove the “TINTIN” and “Snowy” images enjoyed certain reputation among the public prior to the filing of the mark in dispute, the registration of this mark should also be deemed as infringing upon Moulinsart’s rights of character merchandising.
To summarize, the issues relating to trademark infringement on internet have their special features which develop and change rapidly with the continuous innovations of e-commerce from forms to contents. Although the nature of e-commerce under the Trademark Law is the same as traditional economy, it is an area worth of long-term attention as to how to properly apply the law in internet environment to build a healthy legal environment for e-commerce.
Note: This article was originally written in Chinese, the English version is a translation.