Opponent successful on appeal based on recognition of copyright ownership

Right holders in China often have a tough time when their logos are pre-emptively registered by others in classes or sub-classes of goods/services where they do not have a registration. Whilst proof of copyright ownership in the logo can be a valid ground for supporting an opposition, regrettably, in many cases, the Chinese authorities have refused to accept evidence of prior trademark registrations in other classes/sub-classes and/or prior use of the logo in commercial activities as sufficient proof for establishing copyright ownership in the logo - albeit the Chinese Copyright Law requires only prima facie evidence of ownership to substantiate a copyright claim.

The CKH logo is the house logo used by Cheung Kong (Holdings) Limited in Hong Kong since 1972.

In 2004 a Chinese company applied for registration of an identical logo in a number of classes of goods/services in which Cheung Kong did not yet have a registration. In oppositions filed on behalf of Cheung Kong, one of the grounds was that Cheung Kong is the owner of IP rights, including copyright subsisting in the CKH logo, and that the Chinese company had infringed such prior rights of Cheung Kong.

In this long battle, which went all the way up to the Beijing Higher People’s Court on appeal, extensive evidence was submitted to the Trademark Office and the Trademark Review Adjudication Board showing substantial use of the CKH logo by Cheung Kong in commercial activities since 1972, but both authorities did not consider it sufficient for the copyright claim. It was further held that prior registrations for the CKH logo by Cheung Kong in other classes of goods and services in China only helped to show that Cheung Kong is the owner of trademark rights, but not copyright in the logo.

On appeal to the Beijing First Intermediate Court, the court still refused to accept the copyright claim, but on a different ground - namely, that the CKH logo lacked artistic value and could not qualify for copyright protection.

On further appeal, the Beijing Higher People’s Court eventually took a different view and held that the CKH logo was a design with originality and did qualify for protection as an artistic work. Taking into consideration the copyright registration obtained by Cheung Kong for the CKH logo in China and that the logo was proven to have been substantially used for over 30 years, the court formally recognised Cheung Kong as the copyright owner of the logo and held that the mark filed by the Chinese company, being a reproduction of the CKH logo, had infringed the rights of Cheung Kong. Registration of the mark applied by the Chinese company in different classes was thus refused.

This important decision of the Beijing Higher People’s Court is a breakthrough in giving recognition of copyright protection to logos of this type and also in accepting prior user evidence, as well as copyright registration which was obtained only subsequent to the date of the applicant’s trademark application, as sufficient proof of copyright ownership.

Yvonne Chua, Wilkinson & Grist, Hong Kong

Wilkinson & Grist represented Cheung Kong in this case