LivingSocial, Inc is the second largest group-buying website in the United States. The name of the company is copyright protected and always displayed as follows:
The artwork was first published in February 2011 in the United States. However, LivingSocial registered this artwork with China's National Copyright Administration only in 2012.
Guangzhou Honggu Supply Chain Management Co, Ltd had already submitted a trademark application for LIVINGSOCIAL artwork in Class 14 on May 10 2011.
LivingSocial filed an opposition, arguing that the registration infringed its copyright. To prove that its ownership of the copyrighted artwork predated the filing of the opposed mark, LivingSocial cited its registration of the trademark comprising LIVINGSOCIAL artwork in the United States and Australia on February 23 2011 and March 14 2011, respectively.
However, the Chinese Trademark Office (CTMO) dismissed LivingSocial's opposition on August 28 2013.
On September 18 2013 LivingSocial appealed to the Trademark Review and Adjudication Board (TRAB). In the evidence exchange proceeding, Honggu produced a copyright registration certificate of the LIVINGSOCIAL artwork. The certificate, which was issued on June 16 2011, alleged that the artwork had been created on April 11 1991 and first published on April 12 1991.
On December 24 2014 the TRAB decided in favour of LivingSocial based on the following:
- The opposed mark was a slavish copy of the opponent's copyrighted artwork in respect of components, design style and visual effect, making it substantially similar to the latter.
- The media coverage on the opponent's business activities, published before the opposed mark's application date, proved that Honggu may have had access to the copyrighted artwork before filing its trademark application.
- Without corroborating evidence, the copyright registration certificate submitted by Honggu was insufficient to prove that Honggu created the artwork before the opponent.
Honggu appealed against the TRAB decision before the Beijing IP Court, which ruled as follows:
- LivingSocial's artwork was original and copyrightable. Since China and the United States are member states of the Berne Convention for the Protection of Literary and Artistic Works, LivingSocial's artwork, whether published or not, fell under the protection scope of China's Copyright Law (Article 2.2 of the Copyright Law and Article 3(1)(a) of the Berne Convention).
- Although Honggu challenged the prior copyright of LivingSocial by arguing that the latter plagiarised its own artwork, the evidence adduced was insufficient to prove such argument. Given that China adopts the voluntary registration of works, there is no substantial examination on copyright registration. The time of creation and first publication of works as specified in the copyright registration certificate is inadmissible unless corroborated by other evidence. The opposed mark and many other marks replicating the litigious artwork of Honggu were filed in May 2011. The evidence submitted by Honggu was not compelling to establish that its artwork was created and first published at the alleged time. On the contrary, the evidence adduced by LivingSocial proved that the first publication of its artwork was no later than February 23 2011.
- It is acknowledged doctrine that if an accused trademark exhibits substantial similarity to copyrighted works, once access to the copyrighted works has been demonstrated by the accused, copyright infringement can be established, unless the accused can prove that the accused work is the result of its independent creation. Such doctrine applied to this case. Without compelling evidence that the opposed mark was created independently by Honggu, the court found that the opposed mark infringed the prior copyright of LivingSocial.
On October 10 2017 the Beijing IP Court upheld the TRAB's decision.
Under Article 33 of the Trademark Law 2014, only a prior rights holder or interested party can file an opposition. The present case rested on the establishment of prior copyright ownership.
In practice, a copyright registration certificate is direct evidence of ownership. Since copyright registration is optional, many copyright owners do not proceed with the registration for their creative designs or artworks until falling victim to bad-faith filings of trademark squatters. Therefore, registering artwork as early as possible is advised.
In case there is no prior copyright registration before the application of the offending mark, Article 19.3 of the Provisions of the Supreme People's Court on Several Issues concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights 2017 provides an alternative of use: "Trademark gazettes and trademark registration certificates as preliminary evidence to prove that the trademark applicant is entitled to claim his rights, as an interested party, over the copyright of the sign involved."
In practice, the opinions of the CTMO, TRAB and courts are divided in this regard. However, copyright owners stand a better chance of proving ownership if they can adduce corroborating evidence to support their claim. They should therefore preserve a complete chain of evidence – from the design process all the way down to the publication, registration and actual use of the relevant artwork.
For further information on this topic please contact Xiangrong Wu at Wanhuida Peksung by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
