Any foreign cartoon character is suffering from preemptive registration which meets each above situations the TRAB for removal of the preemptive registration within 5 years.
Regarding the situation 1, the key point for the aggrieved proprietor to successfully remove the preemptive trademark registration is that the proprietor proves the foreign cartoon character has been well-known and already held great market influence in connection with the relevant goods before the preemptive registration application filed. In other words, being well-known in China is a prerequisite for protection; otherwise, different route has to be taken.
Situation 2 also requires well-known status, as it mainly focuses on free riding problem and applies to that the proprietor has secured trademark registration on particular classes of goods but he/she wants to get exclusive trademark protection in all other classes.
Regarding the situation 3, it applies to restrict the foreign cartoon characters being registered in bad faith by the agent or representative of the real right owner. Currently in China, such bad faith behavior always arises from Chinese agencies or representatives, by taking advantage of the negligence and ignorance by the licensor (or foreign real right owner); or the licensor being unfamiliar with the laws of China; or relevant contents never be stipulated in the agreement by each other, preemptively register foreign cartoon images as trademark in China by themselves. What’s more, it may also happen to the licensor that the bad faith domestic agencies or representatives by means of the opportunity on discussing the business such as foreign cartoon character licensing, registration or promotion in China with the licensor (or foreign proprietor), preemptively register foreign cartoon characters as trademark in China in name of themselves or their related companies in secret once the preliminary negotiation is broken, etc.
Regarding the situation 4, it is quite easy to unde
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| Xie Lijia |
rstand. Generally, geographic mark is clearly indicative. This article may be cited where foreign cartoon characters were preemptively registered as trademark which contains geographic mark.
Regarding the situation 5, prior right means the legal right forms before the preemptive registration application filed, which generally includes but not limited to copyright, well-known trade name, business name, domain name, etc. In the “Crayon Shin-Chan” case, copyright owner of “Crayon Shin- Chan” claimed the infringement due to the preemptive registration trademark on his characters exactly for the reason that the preemptive registration trademark infringed his prior copyright on “Crayon Shin-Chan.” This reason supporting the claim of infringement issued by the proprietor was finally recognized by the court in commercial litigation procedure, but in the procedure of registration trademark revocation judged by the TRAB, the claim on this reason was dismissed due to 5 years limitation expired. Even so we insist on that Article in situation 5 shall play a very positive role in legal protection of foreign cartoon characters in China. Generally speaking, cartoon characters always fall in the scope of “works” defined in the Copyright Law of China and China is also a contracting party of Berne Convention. So the foreign cartoon characters will also be protected by the Copyright Law of China. In summary, the Article in situation 5 can apply to registration revocation when preemptive trademark registration happens to foreign cartoon characters, but the claim shall be filed within 5 years. In a word, the limitation period of 5 years is the precondition of realizing above-mentioned 5 legal remedies, and the period is fixed without suspension or discontinuance. But is there any legal remedy applying to the foreign cartoon characters preemptively registered as trademark persisting for more than 5 years?
III. Absolute grounds for removal of preemptive registration of cartoon character as trademark The absolute grounds for removal are in relation to the above Section II of relative grounds for removal. With absolute grounds for removal, the proprietor of foreign cartoon characters has the support which is not limited within 5 years period and is entitled to request removal of preemptive registration trademark at any time. According to the Law, other entities or individuals can request removal of registration trademark without time limitation once following situations occur: 1. A mark that is the emblem of the state, the Party or an international or g a n iza t ion , or i s r a c i a l ly discriminative, or exaggeratively deceptive, or publicly scandalous; 2. A mark that lacks distinctiveness, or is generic for the goods it covers; 3. A three-dimensional mark that is the natural shape of the product, or the shape for technical effect, or the shape that renders the product substantially utilitarian; or 4. A mark that is preemptively registered through fraudulent or other inequitable means.
Regarding above situation 1, 2 and 3 they are related to the characteristic and nature of the cartoon character. Whatever the foreign cartoon characters involved in this article or preemptive registration characters, they absolutely will not be protected by law due to above 3 situations. So the details will not be explained further here.
Regarding the situation 4, it has a strong practical significance and wide interpretation space and is even used as a catch-all-clause in revocation of preemptive registration trademark. Someone registers the trademark by deceitful or other illegitimate means here can be legally interpreted: (i). when filing the application for trademark registration, the preemptive registrant deceives the Trademark Office in order to get the registration by means of falsification; or (ii). the preemptive registrant registers the trademark in bad faith in order to seek illegal profits or subject to unfair competition. Especially the latter (ii), which is the powerful weapon we often use to claim the preemptive registration revocation. Therefore, we hold the views that this type of regulation will limit the preemptive trademark registration on the base that the preemptive registrant has already or is obliged to know the character or trademark belongs to others but not him/herself, and also will limit the preemptive registrants by means of registering large number of trademarks then re-selling for illegal profits. Basically, the similar behaviors of preemptive registration mentioned above, without any doubt, have materially broken the management orders of trademark registration system and even public orders, furthermore, public interests will be deeply damaged.
Among the cases we having focused and settled on foreign cartoon characters preemptively registered as trademarks, there are many illegal behaviors including but not limit to (i). already knew or is obliged to know the trademark is owned by others but still preemptively register; or (ii). continuously and preemptively registers trademarks in large-scale and then re-selling for illegal profits but without personal use; or (iii). unfair competing by means of preemptive trademark registration, etc. We always take full advantage of this point to win the case or build dominance in the negotiation. Additionally, it is necessary for real right owner to prove that foreign cartoon characters belonging to others shall be already known by preemptively registrant or the preemptively registrant shall be obliged to know, meanwhile, the popularity of the foreign cartoon characters also plays a role in this situation.
