Hallmark knocks CROWN off register

The Beijing Higher People's Court has ordered the cancellation of the figurative mark CROWN registered by Shenzhen Hua Yu Printing Co Ltd (Hua Yu). This puts an end to a seven-year legal battle between Hua Yu and Hallmark Cards Incorporated.

Hallmark first learnt of Hua Yu's mark in 1999 when it was cited against Hallmark's application to register a mark combining the name Hallmark in Latin and Chinese characters (賀曼), as well as a crown device in Class 16 of the Nice Classification. Hallmark immediately filed a cancellation application against Hua Yu's mark under Articles 31 and 41 of the Chinese Trademark Law on the grounds that Hua Yu's mark was registered in bad faith to prevent Hallmark from registering its own mark, which was already in use in China at the time of the application and had gained a reputation.

It was revealed in the course of the cancellation proceedings that Hua Yu's original application consisted of the word 'crown' and the Chinese characters '賀曼', as well as the stylized name Hallmark and a crown device. In 1997 the crown device and stylized Hallmark name were deleted as they were found to conflict with Hallmark's prior registration for the same elements. This clearly shows that Hua Yu was aware of Hallmark's trademarks when it filed the CROWN device application in 1996.

Hua Yu and Yang Lin, the subsequent assignee of the CROWN mark, claimed use of their mark since 1992. The Trademark Review and Adjudication Board (TRAB) rejected the evidence that Hua Yu and Yang Lin submitted (ie, sample calendars for 1993 and 1994) on the grounds that it showed use of the CROWN mark as revised in 1997 rather than the original mark as filed in 1996 (ie, including the Hallmark name and crown device), even though Hua Yu could not have foreseen the 1997 revision. In contrast, the TRAB accepted Hallmark's evidence of use, including the 1993 registration in Hong Kong of a mark comprising the name Hallmark in stylized script, the word 'crown' and a crown device. Newspaper reports of a nationwide greeting cards design competition organized by Hallmark in 1995 also helped establish that Hallmark's Chinese character mark '賀曼' had gained a reputation in China prior to the application date of Hua Yu's CROWN mark in 1996.

Accordingly, the TRAB ruled in favour of Hallmark and ordered the cancellation of Hua Yu's CROWN mark.

Yang Lin filed an appeal with the Beijing Intermediate People's Court, which upheld the TRAB ruling. Yang Lin further appealed to the Beijing Higher People's Court, which further upheld the TRAB cancellation decision.

The Beijing court's final decision also has implication on parallel proceedings launched in March 2005 when Yang Lin, prior to the TRAB's decision, sued Hallmark's licensee in Shanghai for using the Chinese characters mark 賀曼. Hallmark's licensee successfully stayed the proceedings pending the outcome of the cancellation action. Following the Beijing court's final decision, the licensee has filed an application to strike out Yang Lin's infringement claim.

Yvonne Chua and Grace Wong, Wilkinson & Grist, Hong Kong

The authors acted for Hallmark in this case