Trademark “BATTLESTAR GALACTICA” in Chinese & Latin characters” Invalidated by China Trademark Review and Adjudication Board for being Identical with a Universal Movie Name
The mark “BATTLESTAR GALACTICA in Chinese and Latin characters”under No. 10660950 (hereinafter referred to as the disputed mark) was filed by Shanghai Zuli Business Consult Co., Ltd. (respondent in this case) on March 22, 2012 and was registered on August 14, 2015 on goods in Class 28. On November 23, 2015, UNIVERSAL CITY STUDIOS LLC (hereinafter referred to as the applicant) filed an invalidation application against this mark on the following basis: “BATTLESTAR GALACTICA” is the name of the applicant’s classic SF movie and drama series. The Chinese characters contained in the mark is also the Chinese translation. The disputed mark is an infringement of the commercialization right of the applicant and should be invalidated according to Article 32 of China Trademark Law.
After examination, the TRAB holds that the movie posters, promotional reports and certificates etc could testify that the applicant is the film producer who released the movie “BATTLESTAR GALACTICA” and it is a classic America SF work since 2003. And before the filing date of the disputed mark, this movie had been widely promoted and released in China. “BATTLESTAR GALACTICA” as the name of the movie is familiar to the public and has gained good reputation. The diputed mark is identical with the movie name and its designated goods in Class 28 could be the popular derivative products of film industry. The use of the disputed mark on its designated goods will mislead the public that such goods are related to the producer of the movie or has the authorization, thus throwing trust to such products. This would inappropriately take advantage of the commerical reputation of the movie and invade the market share of the applicant. So the disputed mark is an infringement of the right on basis of the name of the movie, and violates Article 32 of China Trademark Law. And TRAB decided that the disputed mark should be invalidated.
Article 32 of China Trademark Law says “No trademark application shall infringe upon another party’s existing prior rights. Nor shall an applicant rush to register in an unfair manner a mark that is already in use by another party and enjoys substantial influence.”
“Existing prior rights” as mentioned in this Article should be understand in its broad meaning. In other words, any other legal rights and interests that should be protected except trademark right should be taken as existing prior rights. In this case, the commercialization right as claimed by the applicant over its movie “BATTLESTAR GALACTICA” is not an existing right as confirmed by current Chinese laws. But when a movie or a character name/image becomes reputive, and such elements are not limited by the movie itself and combined with specific goods/services, the public who watched the movie would cast their emotion to the movie name or the character name. And the public would feel empathy to the goods/services as combined with the movie.
When the right owner can earn extra commercial value and trade opportunity except the movie release based on such empathy, then the movie name or character name/image could be protected as existing prior right as provided for in Article 32 of China Trademark Law.
Tag：Trademark Refusal; Trademark Invalidation in China; Trademark Protection in China