You can find the previous published article in our website introducing Bear Grylls, who is well known by Chinese through the famous TV show, Man. vs. Wild, which described a case where the TV personality won the opposition case to protect his name right. As the proverb goes “Tall trees catch much wind", Mr. Bear Grylls, a man standing on the top of the food chain, not only needs to protect his name right, but also to protect the abbreviation of his name “BG,” which was also copied and imitated by others. In this case, we will analyze how to protect the copyright of Mr. Bear Grylls through the trademark invalidation action.
Kangxin Partners, P.C., acting on behalf of BEAR GRYLLS VENTURES LLP (“the applicant” hereunder), filed invalidations against the trademarks (No. 12979687) and (No. 13696724) (“the disputed marks” hereunder) on January 6, 2017 and June 6, 2017 respectively. In the invalidations, we mainly argued that 1) the applicant’s right to file the invalidation, 2) the applicant owns the prior copyright, 3) high reputation of Mr. BEAR GRYLLS, 4）the registration of the disputed marks will damage the interests of both the applicant and Mr. Bear Grylls. In addition, we also cited other prior cases’ decisions as evidence. After examination, the TRAB issued the decisions that the disputed marks should be invalided.
As a man standing on the top of the food chain, Mr. BEAR GRYLLS is a famous adventurer, writer and television presenter. He is widely known for his TV show “Man. vs. Wild”. In China, his fans called him “BEAR” or “Mr. Bear”. He established his own namesake company “BEAR GRYLLS VENTURES LLP” and brand, which is well-known among consumers through the promotion by media. In addition, the applicant applied for copyright protection for the design of the brand and owns copyright for his brand.
Kangxin Partners, P.C., acting on behalf of BEAR GRYLLS VENTURES LLP, filed an invalidation against the trademarks and on January 6, 2017 and June 6, 2017, and mainly argues that the application of disputed mark infringes the copyright right of the applicant.
Below are details of the disputed marks:
The key argument is whether the registration of the disputed mark violates the prior copyright of the applicant, we mainly argued that:
1. The applicant is qualified to file the invalidation. In this case, the applicant, “BEAR GRYLLS VENTURES LLP”, is founded by Mr. Bear Grylls in his own name in 2010, and after that, the applicant entrusted Delbert Shoopman to design works “”,“”and “” which containing the name of Mr. Bear Grylls as well as its initial letters “BG”, thus, the applicant acquired the relevant copyright in 2010. On July 19, 2016, the applicant recorded an assignment agreement for the three works with China Copyright Protection Center (“CPPC”) and the CPPC issued the Certificate of Copyrights. Thus, the client is qualified as the applicant to claim the argument.
2. The disputed marks are substantive similar to the applicant’s prior work which enjoys copyright. In these cases, we argued that: 1) the composing letters BG of the marks is designed and in bold style; 2) the right line of letter B superpose with the left line of letter G; 3) there is a tick in the top line of letter G. Thus, the disputed marks are substantive similar to the applicant’s prior work.
3. The counterparty may have access to the applicant’s work which enjoys prior copyrights. We collected large amount of evidence to prove Mr. Bear Grylls enjoys high reputation in China, including internet search results relating to Mr. Bear Grylls and his brands, promotional materials and photos shown on various magazines, copies of registration certificates of Bear Grylls brands worldwide, screenshot of his programs, etc. In addition, the counterparty registered lots of marks containing Mr. Bear Grylls' name, and "BG device", which further prove that the counterparty knows the applicant and its founder.
4. The registration of the disputed mark will cause negative impact in the market, and damage the interests of both the applicant and Mr. Bear Grylls. We organized relevant evidence to prove the bad-faith of the disputed party and the disputed party rushed to register trademarks of the applicant, which violates the good-faith principle, mislead the consumer and damage the interests of the applicant.
5. Precedent. We also submitted other prior successful decision to further support our arguments.
On January 10, 2018, the TRAB issued the decision, holding that:
1. Evidence submitted by the applicant indicates that: applicant's "BG" device owns certain originality, and shall be protected by China Copyright Law.
2. The registration of disputed marks violates the applicant's prior copyright.
Thus, the disputed marks should be invalidated.