Administrative Litigation Relating to a Trademark Opposition Review Case

Facts and Procedure:

Ritz appealed before the court for a trademark opposition review case, which was ruled against them in both the opposition as well as the opposition review proceedings successively. In particular, Ritz previously filed an opposition against the registration of Nanhua Stores' application No.1962902 inclass 35 before the Trademark Office (CTMO), but the CTMO ruled that the opposition was not justified and the registration of the Nanhua Stores' mark was approved. Ritz then appealed before the TRAB, and the TRAB still affirmed the holding of the Trademark Office of China. Not satisfied with the ruling from TRAB, Ritz brought the case to the court in due course.

The followings are trademark specimen of Nanhua Stores' application No. 1962902 (the opposed mark) and Ritz's cited marks

1.the opposed mark under Reg. No. 1962902

2.Ritz's marks

It is of Ritz's contention that 1) the lion and crown logo, appeared in the opposed mark, is an imitation and reproduction of the artistic work created and owned by Ritz. The registration of the opposed mark infringed Ritz's prior copyright for work of lion and crown design. 2) Ritz's prior registered trademarks for “Lion and Crown logo” and “THE RITZ-CARLTON with lion and crown logo” are famous trademarks used in luxury hotels around the world.Whereas, the dominant element of the opposed mark is exactly identical with Ritz's prior trademark for “Lion & Crown logo” and the opposed mark is obviously an imitation and reproduction mark; the services for which the opposed party provides are closely connected with the hotel services for which Ritz has provided. In that case, Ritz requests for recognition of its prior marks as well-known marks in hotel services inChina; and Ritz claims the registration of the opposed mark will mislead the public and damage the intestates of Ritz's well-known trademark. In sum, the opposed mark should be refused to register inChina. The first point from Ritz was finally upheld by the court.

Reasoning

The application for registration of the opposed mark has infringed the copyrights owned by Ritz. Firstly, the lion and crown logo is artistic expression for the lion head, which is of creativeness to some extent, and reproducible, then its belongs to copyrighted work, and the work is still falling into the protection term; secondly, the trademarks consisting of the above work has been registered in a number of other jurisdictions and published, without other contrary evidence exists, the opposed mark owner is presumable having chances of knowing the said work; thirdly, the design of the opposed mark is substantially identical with the said work, which obviously was created earlier than the filing date of the opposed mark.

Ruling

The verdict from the TRAB was overruled and the TRAB was ordered to make a fresh verdict thereafter.

Significance of the Case:

The criteria of applying to the article of article 31 of the Trademark Law of China, in the event that the prior right of copyright is involved.

Key Law Articles:

The Trademark Law

Article 31 No trademark application shall infringe upon another party's existing prior rights.