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The legal basis for the judgment of similarity between a work of art and a trade mark



-- Introduction of the Case

The plaintiff YOU Wen-que (natural person) sued the Trademark Review and Adjudication Board (TRAB) and LIU Sui-ting’s trademark invalidation request and the third party LIU Sui-ting’s administrative dispute.Chispo’s litigation team participated in the litigation as a third-party agent. After hearing the case, the Beijing Intellectual Property Court rejected the plaintiff's claim.
The third party filed an application of the trademark disputed in respect of the services of "restaurants, cafes, nursing homes, etc.," in Class 43 to the Trademark Office of the State Administration for Industry and Commerce on April 27, 2009, of which the application number is 7352848.
The plaintiff applied for a request of invalidation to the defendant in September 2014, claiming that it enjoyed the prior copyright of "Chang Ban (in Chinese characters)" and prior used trademark "Chang Ban (in Chinese characters)", and the third party was maliciously registered.
The Trademark Review and Adjudication Board ruled that it did not support the plaintiff’s request on August 27, 2015.


-- Gist of the Judgment

The works "Chang Ban (in Chinese characters)" and " Chang Ban Sushi(in Chinese characters)" submitted by the plaintiff are works of art. Compared with the trademarks in dispute, they are quite different in calligraphy fonts and composition, and do not constitute similar works of art.
Among the evidence submitted by the plaintiff, some evidences that were formed before the filing date of the disputed trademark were not the evidence of the used trademark. Moreover, the dates was very close to the registration date of the disputed trademark, which is insufficient to prove that the plaintiff's trademark " Chang Ban (in Chinese characters)" has been used and enjoyed a certain reputation before the filing of the disputed trademark. Other evidences were mostly formed after the registration date of the disputed trademark, and could not prove the plaintiff's prior use of the trademark.
To sum up, the court held that the defendant’s ruling made by the defendant was conclusive, which applies the law correctly, and rejected the plaintiff’s claim accordingly.


--Lawyer's Comments

This case indicates the identification standard of Article 31 of the 2001 "Trademark Law", which stipulates that "do not to use improper means to preemptively register trademarks that others have already used and enjoyed certain reputation". This clause should meet four requirements listed below:
1. Prior usage and certain reputation;
2. Identical or similar trademark;
3. Identical or similar goods or services;
4. The registration of the disputed trademark has been filed maliciously.

To apply the above-mentioned legal provisions, the proof should be gathered and focused on the above four points. In practice, it is often difficult for the plaintiff to gather evidence and meet the above-mentioned requirements. This reminds the right holder that the trademark application should be filed at the same time when the brand is established, in order to avoid being registered by others, and thus causing irreparable losses.