Case summary:

Beijing TopWin Law Firm was entrusted by Aijun Xuan company in the administrative litigation before Beijing Intellectual Property Court and Beijing Higher People’s Court, and successfully protected the exclusive trademark right of the principal.

Timeline:

June 13, 2018: Xin Solomon company file invalidation against the trademark NO.15932719 Of Aijun Xuan company.

April 28, 2019: the State Intellectual Property Office made a decision and upheld Xin Solomon company’s claims.

July 11, 2019: Beijing Intellectual Property Court accepted lawsuit against the above decision filed by Aijun Xuan company.

November 27, 2019: Beijing Intellectual Property Court concluded to revoke the decision made by State Intellectual Property Office and the invalidation case should be reexamination.

December 18, 2019: Xin Solomon company filed lawsuit against the ruling of Beijing Intellectual Property Court before Beijing Higher People’s Court.

December 18, 2018:Aijun Xuan company

June 24, 2020: Beijing Higher People’s Court concluded to upheld Beijing Intellectual Property Court’s decision, which is final ruling.

August 13, 2020: the State Intellectual Property Office decided to maintain the trademark No.15932719 of Aijun Xuan company  

Content of the Judgement:

Administrative Litigation Judgment of Beijing Higher People’s Court

                                        Document Number: No.1075[2020]

Appellant(third party of original trial):Shenzhen Xin Solomon Technology Co., Ltd , located at 204, Floor 2, Building 2, Dayun Software Town, No. 8288, Longgang Avenue, Yuanshan Street, Longgang District, Shenzhen City, Guangdong Province.

Legal Representative: Chen Chaobo, the General Manager.

Authorized Agent AD litem: Hu Qiuhua ,the lawyer at Guangdong Prometheus (Dongguan) Law Firm.

Appellee(Plaintiff);Nanjing Aijun Xuan Trading Co., Ltd., locates in room B128, building one ,Changjiang Back Street No.6, Xuanwu District, Nanjing City, Jiangsu Province.

Legal Representative:Min Zang, the executive Director.

Authorized Agent AD litem:Fu Qiuju,the lawyer at Beijing Topwin Law Firm.

Defendant:State Intellectual Property Office,locates in No. 6 Xitucheng Road, Jimenqiao, Haidian District, Beijing.

Legal Representative:Shen Changyu,the director general.

Authorized Agent AD litem:Wei Ping, the examiner at the State Intellectual Property Office.

In the case of administrative dispute over the request for invalidity of trademark right, the appellant– Shenzhen Xin Solomon Technology Co., Ltd. (Xin Solomon Company for short) refused to accept the administrative judgment No. 8295 of Beijing Intellectual Property Court (2019), and files an appeal to this court.

After accepting the case, the Court formed a collegial benchl in accordance with the law and held a public hearing on June 18th, 2020.

Chen Chaobo,the legal representative , Hu Qiuhua,authorized Agent AD litem of Xin Solomon Company and Fu Qiuju, the legal representative of Nanjing Aijun Xuan Trading Co., Ltd. (hereinafter referred to as Aijun Xuan Company), attended the court.The case is now concluded.

Beijing Intellectual Property Court found out:

I、Litigation trademark

1.Registrant：Aijun Xuan Company.

2.Registration mark：15932719.

3.The date of application。December 15^th 2014.

4.Exclusive right expiration date: March 6^th 2026.

5.Mark:

Approved services: sanatorium ; physical therapy ; nails’ repairing ; beauty salon ; makeup service ; sauna bath service ; massage ; animal feeding ; horticulture learning ; Opticians’ services.

II、Accused ruling:Trademark Review Case[2019] No.92999 Request for Invalidation of the Trademark of “Hepulan,Herbplantist and design” No. 15932719.

Time of decision made:April 28th 2019.

The State Intellectual Property Office ruled that the contested trademark was invalid on the grounds that the application for registration of the contested trademark constituted the circumstances referred to in Article 32 of the Trademark Law of the People’s Republic of China (hereinafter referred to as the Trademark Law of 2014) which came into effect in 2014. Aijun Xuan Company refused to accept the decision and filed an administrative lawsuit with the Beijing Intellectual Property Court within the legal time limit.

III、Other facts

During the phase of trademark review, Xin Solomon Company submitted the following evidences:

1.Archives information of litigation trademark and cited trademark .

2.Registration certificate of work of Xin Solomon Company.

3.The trademark licensing agreement signed by Xin Solomon Company and its affiliated company Shenzhen Hepulan Cosmetics Co., Ltd. (Hepulan Company for short).

4.Hepulan company’s WeChat public number history articles, advertising, media reports, the honor and other evidences of use of “Hepulan” trademark and visibility.

5.Enterprise credit information of Xin Solomon Company and its affiliated company Hepulan Company and Aijun Xuan Company.

6.The introduction of the University of Hepulan and Hepulan on Encyclopedia .

7.San disco international beauty conference report.

8.The honor that Hepulan company won,personal materials of Cai Guangxin, the founder. 

9.Evidence for the use of “Hepulan” trademark, supplementary publicity materials, etc.

In the original trial proceedings, Xin Solomon Company submitted the following evidences:

1.The original logo design drawing involved in the case completed in 2013 by Xin Solomon Company .

2.The contracts, lists, invoices, product warehousing lists, labor lists, accounting vouchers, etc. of  skin care/washing series products that Hemulan processed and customized In October and November 2014.

3.The company’s official website publicity, media reports and photos of company staffs’ QQ space and WeChat Moments from 2011 to 2014.

4.Purchase contracts, printing contracts, outdoor publicity contracts and on-site photos of Hepulan Company in 2014.

5.The employee labor contracts and employee entry materials of Hemulan Company in 2013, etc.

6.The materials of Ai Junxuan company maliciously interfered with the normal operation of Hepulan company.

The Beijing Intellectual Property Court deemed that the trademark logo in dispute is composed of the characters of “Hepulan”,”Herbplantist” and the cross figure. Although the text part has certain design, it is mainly a simple deformation of Chinese characters and English letters. The cross figure is also a common graphic element and the design is relatively simple, so the overall originality of the logo involved in the case is low and does not constitute a work within the meaning of copyright law.

Although Xin salomon has gained registration certificate of works, but the registration work in China adopts the principle of voluntary registration and related management department does not do substantive examination to registration content , therefore , the registration certificate of works does not prove that the marks involved in case, as claimed by Xin Solomon, constitutes works within the meaning of Copyright Law of the People’s Republic of China(hereinafter refers to as copyright law).

Under this premise, the application of the litigation trademark does not damage the prior copyright claimed by Xin Solomon Company and the litigation trademark does not constitute the situation of ” trademark applying shall not damage the existing prior rights of others” as referred to in the Trademark Law of 2014.

In accordance with Article 69 of the Administrative Procedure Law of the People’s Republic of China, Beijing Intellectual Property Court has made the following judgments: 1. Revoke of the accused ruling made by the State Intellectual Property Office. 2. The State Intellectual Property Office should make a new decision.

Xin Solomon Company refused to accept the judgment of the original trial and filed an appeal to this court, requesting to revoke the judgment of the original trial and reject the lawsuit request of Ai Junxuan Company. The main reasons for appeal are as follows: 

1.The logo of the litigation trademark is made up of the characters of “hepulan”,”Herbplantist” and the cross figure. It is not a patchwork of common words and figures, but a creation of high level from the author’s love and understanding of natural life. This combination of the author’s choice, trade-offs and arrangement is reflected in all parts of the litigation trademark logo. It is wrong to identify the work in the sense of copyright law that the original judgment affirming the whole mark is of low originality .

2.The original judgment did not fully consider the premise of the dispute in this case but considered whether the trademark is a work in the sense of copyright law.3.

The original judgment affirms that Xin Solomon Company does not have the copyright of the litigation trademark , which will damage the legitimate rights and interests of Xin Solomon Company.

The State Intellectual Property Office and Aijun Xuan Company shall comply with the original judgment.

After the trial, the facts ascertained by the court of first trial are true, and there are the trademark files, the ruling against the lawsuit,and the evidential materials submitted by the parties and the statements of the parties to support the case, which the court confirms.

This court considers considers as below:

According to Article 32 of the Trademark Law in 2014, the application for trademark registration shall not damage the existing prior rights of others or register the trademark that has been used by others which has certain influence by unfair means in advance.

Article 19, Paragraph 1 of the Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Concerning the Authorization and Confirmation of Trademark Rights stipulates that if a party claims that a trademark has damaged its prior copyright , the people’s court shall comply with the Copyright Law and other relevant provisions to examine whether the object of the claim constitutes a work, whether the party concerned is the copyright holder or other interested persons who have the right to claim copyright and whether the litigation trademark constitutes the infringement of copyright.

The prior copyright, as a legal right, belongs to the prior right stipulated in Article 32 of the Trademark Law in 2014.The recognition of a work shall be in accordance with the provisions of the Copyright Law.

Works protected by copyright law are those intellectual achievements in the fields of literature, art and science that are original and can be reproduced in a tangible form.The originality required by the work should reflect the choices, trade-offs and arrangements of the author which should be distinguished from the expression of the public domain.

In this case, Xin Solomon Company claims that the logo involved in the copyright is composed of “Hepulan”, “Herbplantist” characters and four fan-shaped graphics. Although the Chinese character “lan” in the logo has been artistic processed, and the last horizontal bar has been extended to become the dividing line between the upper and lower parts, this kind of design is relatively common, and there is no obvious difference with the usual text arrangement design. In addition ,the four fan-shaped combination graphics are common and simple graphics. So the logo involved in the case advocated by Xin Solomon Company fails to reflect the choice, trade-offs and personalities expression of the author and is not original.

Therefore, the mark claimed as copyright by Xin Solomon Company does not constitute a work in the sense of copyright law . The registration of the litigation trademark does not infringe the prior copyright claimed by Solomon Company. The judgment of the first trial was not unreasonable, and this court confirmed it after examinations.

In conclusion, the original judgment found that the facts are clear, the applicable law is correct, the conclusion is correct and should be maintained. The court will not support the appeal of Xin Salomon Company on grounds of untenable.In accordance with the provisions of Article 89, subparagraph 1, paragraph 1 of the Administrative Procedure Law of the People’s Republic of China, the judgment is as follows:

The appeal was rejected and the original verdict was upheld.

The State Intellectual Property Office bore the receiving fee of RMB 100 for the first instance case (paid), and the receiving fee of RMB 100 for the second instance case bore by Shenzhen Xin Solomon Technology Co., Ltd. (paid).

This decision is final.