Background

The opponent, FEDERATION INTERNATIONALE DE L’AUTOMOBILE, was established in 1904. As a non-profit international organization, the objective of FIA is to promote the development of automobile industry. FIA was recognized by the International Olympic Committee as an individual sports organization. The association currently counts 213 members after more than a century of development, which includes China Automobile Sports Association, which joined in 1986.  FIA has been in charge of various of events and competitions related to automobiles, including the well-known FI (FIA Formula 1 World Championship), and Rally Fusion, iceberg racing, hill racing and others.

FIA’s prior copyright , as their main logo, frequently showed on all kinds of media releases, and has been widely known amongst fans, audience, organizations and participants worldwide.  Moreover, with the widespread use of the internet in recent years, the logo acquired a high reputation amongst the Chinese customers through extensive online media reports. The opposed party had access to the work, while they applied for the confusingly similar mark .

Kangxin Partners, P.C., acting on behalf of FEDERATION INTERNATIONALE DE L’AUTOMOBILE, filed an opposition against the trademark  (No. 18160645) based on prior copyright on December 6, 2016.  Below are details of the opposed mark:

Kangxin Partners, P.C., acting on behalf of FEDERATION INTERNATIONALE DE L’AUTOMOBILE (hereinafter referred to as “the opponent”), filed an opposition against the trademark  (No. 18160645) (hereinafter referred to as “the opposed mark”) based on prior copyright on December 6, 2016.  During the examination, we mainly argued that 1) the opponent enjoyed copyright for the work ; 2) the opposed mark is substantially similar to the copyrighted work; 3) the mark  was published before the filing date of the opposed mark; 4）registration of the opposed mark was not authorized by the opponent.  After examination, the CTMO issued the decision that the opposed mark should not be approved for registration.Process

Key features

The key issue of this case is to prove that registration of the opposed mark infringed the opponent’s prior copyright (Article 32, PRC Trademark Law). Our main arguments and evidence are as follows:

1.       The opponent enjoyed prior copyright for the work . In this case, the opponent assigned a design company, CARTER WONG DESIGN, to create the logo before the filing date of the opposed mark. We submitted the relevant media report for the founder of the design company, Phil Wong, who created the logo. Furthermore, the logo  was shown on the licensing certificate, certificates of award and the media releases.  Therefore, the opponent enjoyed copyright for the work .

2.       The opposed mark is substantially similar to the copyrighted work. To support this argument, we analyzed the similarity of the copyrighted work and the opposed mark in detail from the perspective of design, overall appearance and visual effects, and it reached the requirement of “substantially similar.” The opposed mark copied and imitated the opponent’s work, which violated their copyright.

3.       The mark  was published before the filing date of the opposed mark, and the opposed party had access to the work. Firstly, the evidence is sufficient to prove that the copyrighted work was published on the 20th century. Secondly, the work has acquired a high reputation amongst the relevant public through long-term and extensive use and promotion. We submitted copious evidence, including media releases, National Library Search Report, relevant prizes and awards won to prove its reputation and further prove that the opposed party had access to it.

4.       Registration of the opposed mark was not authorized by the opponent. There is no evidence indicated that registration of the opposed mark was authorized or consented by the opponent. Therefore, registration and use of the opposed mark violated the opponent’s copyright.

Result

On January 2, 2018, the CTMO issued a decision after examination:

1.         The opponent’s evidence is sufficient to prove that the assigned mark was published before the filing date of the opposed mark.

2.         The mark was distinctively creative and the opponent enjoyed copyright for it.

3.         The opposed mark is almost identical to the copyrighted work in respect to design style and distinctive features, etc., which violated the opponent’s prior copyright.

Therefore, the opposed trademark should be rejected for registration.