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Final Judgment of the Figurative Trademark Dispute Case of Boliya Company
来源: 作者: Chinapoo时间: 2013-3-15 16:37:6

 

Administrative Judgment of Beijing Higher People’s Court

  (2007) G.H.Z.Z. No. 479

Appellant (the third party in first trail): Guangdong Apollo Cosmetics Co., Ltd. Domicile, Hanji Industrial Village, Shiji Town, Panyu District, Guangzhou City

Legal representative NIU Gangqing, Chairman

 Authorized agent: YU Dapang, Attorney of Guangdong Huake Law Firm

 Authorized agent: HUANG Xiaoyan, Apprentice lawyer of Guangdong Huake Law Firm

 Defendant in first trial: (hereinafter referred to as TRAB), address: No.8, Sanlihe East Road, XingCheng District, Beijing City

 Legal representative: HOU Lin, Director.

 Authorized agent: ZHANG Honghua, cadre of the Trademark Review and Adjudication Board of the State Administration for Industry and Commence.

 Authorized agent: CUI Yingqi, cadre of the Trademark Review and Adjudication Board of the State Administration for Industry and Commence.

 Appellee (Plaintiff of fist trail): Guangzhou Boliya Daily Chemical Co., Ltd., Domicile: Building 3 East, No. 4, Zengcha Road, Baiyun District, Guangzhou City.

 Legal representative: ZHONG Maocheng, General Manager.

 Authorized agent: WANG Guoqiang, attorney of Beijing Yuren Law Firm.

 The applicant: Guangdong Apollo Cosmetics Co., Ltd. is not satisfied with No. 185 Z.G.C.Z. Administrative Judgment (2007) regarding to trademark dispute made by Beijing No.1 Intermediate People’s Court and instituted an appeal to this court. This court formed collegiate bench according to law and publicly heard this trail. Authorized agents YU Dapang and HUANG Xiaoyan of the appellant Apollo Company, and authorized agent of Guangdong Boliya Daily Chemical Co., Ltd. WANG Guoqiang appeared in court, and defendant of the first trail (The Trademark Review and Adjudication Board of the State Administration for Industry and Commence) failed to appear in the court. This case has been finally concluded.

 On December 18, 2006, according to Article 31, Item 2, Article 41, Article 43, Trademark Law of People’s Republic of China (hereinafter referred to as Trademark Law), the Trademark Review and Adjudication Board reached a verdict: S.P.Z. [2006] No. 4217, (hereinafter referred to as No. 4217 Verdict), which believed that Apollo Company enjoys the copyright of the packaging design works in plant anti-hairless shampoo, and the graphics of disputed trademark are the same with the artworks of Apollo Company, so that, the application for trademark registration infringed upon the prior copyright of Apollo Company, therefore, the reasons for disputes on No. 1395207 graphic trademark applied by Boliya Company are affirmed, and the registration of such trademark shall be revoked. In case that Boliya is unsatisfied with such verdict, an administrative lawsuit may be filed to Beijing No. 1 Intermediate People’s Court.

 Court of first trail affirmed that, because the disputed trademarks experienced registration dispute, the effective judgment of court was made in December 2004, and the announcement date of such trademark dispute verdict is not earlier than such period. Thus, the trademark dispute proposed by Apollo Company in 2006 is still within the limited period of five years.

 The reasons for instituting such lawsuit include that the disputed trademarks infringed upon the packaging decoration, copyright and patent right of the well-known products, and there is agency relation between Boliya Company and Apollo Company, etc. among which, the reason that disputed trademark infringes upon the prior copyright and patent right is newly added reason. The design sketches submitted is newly added facts, thus, they does not belong to the same fact and reason, and the objection reasons proposed by Boliya is untenable due to the lack of sufficient evidence. Thus, the application for such trademark dispute proposed by Apollo Company is approved. The facts that TRAB accepted the application for review, and made comments on such newly added facts and reasons are appropriate.

 The commission contract for design submitted by Apollo Company can be deemed as the declaration of real intention of contract parties, thus, there is no valid reason for Boliya Company to deny the validity of such contract due to the fact that contract parties are affiliated enterprises. However, Based on the existing evidence, on one hand, it can not be sufficiently proved that the signing date of such contract is April, 1996, and the information proved by notarial certificate only complies with the contents of original documents and copies, however, the contract parties fail to carry out instant notarization; on the other hand, under the premise that the signing date of this contract can be determined, and what is needed to further examined is the review of the relevance between such attachment and the commission contract for design. The draft attachments submitted by Apollo Company can not prove its formation time, and there is no sufficient evidence to prove the relevance between such attachment and the commission contract for design, and it does not specify that draft or sketch have already been formed, or whether such sketch is further designed according to draft or further improved on basis of such draft. Meanwhile, the carrier of completed design shall be film and optical disk according to the commission contract of design, and Apollo Company still does not provide any evidences and materials mentioned above until now. Thus the combination of such commission contract of design and its supplementary agreement and the design sketches can not form a complete evidence chain, which can not prove the artworks showed in the draft were designed in April, 1996; as for the design sketch provided by Apollo Company as the attachment of, although the submission date toward TRAB is one day later than the submission date of the voluntary registration certificate of artworks copyright, such documents can be deemed as supplementary evidence submitted in one time within the fixed period in replying the respondent’s defense, and TRAB’s acceptance is tenable. The voluntary registration certificate of artworks copyright submitted by Apollo Company is prepared ten years later, not applied in real-time. On that basis, the commission contract of design, supplementary contract and design sketch submitted by Apollo Company, together with the voluntary registration certificate of artworks copyright and its attachment can not form an effective evidence chain to prove the completion of obtaining the copyright of corresponding artworks before the application for the registration of such disputed trademark by Boliya Company.

 To sum up, TRAB believed that the evidences for the prior copyright of Apollo Company are insufficient, thus, revoked No. 4217 Verdict of TRAB according to Section 1, Item 2, Article 54, Administrative Procedure Law of People’s Republic of China.

 Apollo Company refused to accept the judgment and ruling of the first trail, institute an appeal on May 22, 2007, which alleged that the factual findings of the court at first trail is unclear. 1. The signing time of “” is April 5, 1996, which is evident, complete and real, but court of first trial can not prove that it was signed in April 1996, which violated the factual finding. 2. Court of first trail denied the effectiveness of notarial certificate and the signing date of “co-operative contract of package design” by appellant on the basis of the fact that such notarial certificate is not real-time notarial certificate, which is completely error without solid basis according to law. 3. The findings of court of first trail that “design sketch attachments provided by appellant can not prove its formation time” are wrong. Such draft bears the seal of designing units and signature of supplier and the submission date is April 10, 1996, which is clearly evident. 4. On the basis of the fact that “appellant did not provide the evidence materials of the completed design according to “co-operative contract” through using film and optical disk as its carriers, court of first trail believed that the cooperative contract of package design of plant anti-hairless shampoo and the supplementary contract submitted by appellant, together with the design sketch can not form a complete and unique evidence chain, however, court of first trail did not hear whether appellant provide “film and optical disk”, such findings are evidently inconsistent with the actual fact. In conclusion, the factual findings of court of first trail are ambiguous, and the evidence adopted and laws applied are incorrect. While, the verdict of TRAB is clearly in factual findings, correct in law application, sufficient and reliable in evidence, legitimate in procedure, therefore, such verdict shall be affirmed. Appellant requested court of second trail to deny the verdict of first trail.

 Appellee (Boliya Company) alleged that the verdict of first trail completely complies with the actual fact, which held that appellant did not enjoy the copyright of such disputed trademark. The copyright registration institute entrusted by appellant did not examine the completion time of such artwork, which can be proved by the latest copyright registration conducted by appellant. Thus, except for real-time registration, the copyright registration can not prove the registration time of such artwork. In conclusion, the court of first trial is clear in factual findings, sufficient in evidence, correct in law application, and the verdict of first trail shall be maintained.

 As the defendant of first trail, TRAB did not provide any statement.

 It is found that Boliya Company applied to the Trademark Review and Adjudication Board of the State Administration for Industry and Commence for registration of the trademark used in cosmetic commodities of category 3 on February 1, 1999, its application number is 9900011005. On February 14, 2000, TRAB made the preliminary examination for approval toward the application of Boliya Company and published it on the Trademark Gazette (vol. 723), and the number for preliminary examination for approval is 1395207.

 On March 28, 2000, Apollo Company filed a trademark opposition to the Trademark Office on basis of the infringement upon the prior right to use, malicious registering actions of improper plagiarism and duplicating, etc. On August 23, 2001, Trademark Office reached a verdict, determining that the designing time of such disputed trademark entrusted by Boliya Company is in August, 1996, which is obviously earlier than earliest using time (October, 1997) of such trademark by Apollo Company according to the verdict of the Trademark Office. Besides that, such disputed trademark was previously applied. Because Apollo Company failed to provide sufficient evidences to prove that Boliya Company duplicated, imitated and translated the trademarks well-known to the public. Thus, the Trademark Office believed that the opposition raised by Apollo Company is untenable, and the registration of such trademarks is granted.

 On September 25, 2001, Apollo Company applied to TRAB for reexamination, which request TRAB to refuse the registration of such disputed trademark according to Article 27, Trademark Law, Article 25, Regulation for Implementing Trademark Law of People’s Republic of China (hereinafter referred to as Regulation for Implementing Trademark Law). Meanwhile, Apollo Company filed six copies of appurtenant materials to TRAB.

 On November 15, 2001, TRAB sent the notice of defense to Boliya Company. After receiving such notice, Boliya Company submitted four copies of appurtenant materials to TRAB. On July 11, 2003, Boliya Company filed four copies of notarial certificates in supplementary, and TRAB believed that the Boliya Company applied for the registration of such disputed trademark at earlier stage, and used at earlier stage, and the application for registration of disputed trademark complies with the stipulations of Trademark Law. Apollo Company’s claims that Boliya Company copied and duplicated the disputed trademark by improper means under the conditions of knowing or ought to know the fact that such trademark belongs to Apollo Company are not supported due to the lack of sufficient evidence, therefore, the reasons for review of adjudication on opposition raised by Apollo Company are untenable, the disputed trademark is granted to be registered. On February 16, 2004, TRAB issued No. 0276 Verdict, which believed that the reasons for review of adjudication on opposition toward No. 1395207 figurative trademark applied by Boliya Company after the preliminary examination for approval and announced by TRAB, raised by Apollo Company, are untenable, thus, the disputed trademark is granted to be registered.

 Apollo Company refused to accept No. 0276 verdict, and filed an administrative lawsuit to Beijing No. 1 Intermediate People’s Court on March 19, 2004. After hearing, court of first trail maintained No. 0276 verdict, Beijing Higher People’s Court reached No. 419 verdict on December 13, 2004, which affirmed the verdict of first trail.

 

On January 13, 2005, Apollo Company filed an application to TRAB for trademark opposition with respect to No. 1395207 figurative trademark (i.e. the disputed trademark involved in this case) in Category three commodities, such as toothpaste (which is applied by Boliya Company), On November 20, 2006, TRAB reached a verdict that the reasons raised by Apollo Company for trademark review is untenable, thus, the registration of such trademark is granted.

 On April 29, 2006, Apollo Company filed an application for trademark opposition with respect to the disputed trademark again, on grounds that Apollo Company, as an owner of China famous brand, is a company in cosmetics industry, which belongs to Guangdong Apollo Group Co., Ltd., designed the package, decoration of “ and the disputed trademarks in April 1996, then put the commodities into production and carried out advertising. Thus, Apollo Company enjoys the copyright of the disputed figurative trademark. Meanwhile, such graphics is also the package and decoration of the well-known commodity “Apollo Plant Anti-hairless Shampoo”, Apollo Company has already applied for the design patent for the protection of it. Boliya Company, as the manufacturer and sales agent of part of commodities (including the shampoo products with the disputed trademark) of Apollo Company, conducted a serial of dishonest activities including rush registration of the trademark of “Apollo” after learning of the tremendous marketing value and prospect of the company’s products. Such trademark has already been revoked by TRAB, and has been approved by G.X.Z.S.Z. No. 397 verdict (2005) issued by Beijing Higher People’s Court. Nowadays, the application for registration of the disputed trademark involved in this case by Boliya Company is the continuation of its willful infringement, which violates the principle of honesty and credibility, thus, Apollo Company requests to revoke the registration of such disputed trademark according to Item 2, Article 41, Trademark Law. In addition, Boliya had provided discrediting evidence and fabricated false facts with respect to the disputed trademark in the process of the original review of adjudication on opposition, i.e. Boliya Company proved that the design time of the disputed trademark is in August, 1996, which is earlier than the using time with respect to this trademark by Apollo Company, but the entrusted party: Lvfa Technology Co., Ltd. in Yuexiu District, Guangzhou City did not exist in August, 1996, which are not authorized to registered for establishment by Industrial and Commercial Administrative Department, and copies of No. 8491181 and No. 8491178 value added tax invoices submitted by Boliya Company with the purpose of proving its prior use of such trademark, which did not clearly indicate the specific name or statement on its graphics, and can not prove that the products purchased belongs to Boliya Company, the purchasing parties of such value added tax invoices are Guangbai Co., Ltd. Guangzhou Women and Children Products Co., Ltd. and because the testifying party and the purchaser are different, but the times of these two proofs are exactly the same, which indicates that such evidence is in lack of credibility. Meanwhile, both the two invoices mentioned above are in lack of the critical value added tax invoice codes. Apollo Company raised doubt on the authenticity of these two invoices.

 In order to support its allegations, Apollo Company submitted the following materials to TRAB: 1. Notarized Cooperation Contract for Package Design of Apollo Plant Anti-hairless Shampoo and First Draft of Package Design; 2. Supplementary Contract of the commission contract of package design of Apollo Plant Anti-hairless Shampoo; 3. Registration certificate of copyright relating to graphics design relating to plant anti-hairless shampoo; 4. Copies of the packages of Apollo plant anti-hairless shampoo actually used by Apollo Company; 5. Graphics of disputed trademarks; 6. Design Patent Certificate; 7.  Well-known Trademark Announcement; 8, Business License of appellant; 9. Relevant proofs of product publicity and awards; 10. Commission Processing Contract and Supplemental Agreement of Guangdong Market; 11. Beijing Higher People’s Court (2005) G.Z.H.Z. No. 397 Verdict; 12. Commission Contract of Package Design signed between appellee and Lvfa Advertising Co., Ltd. and certificate, and the registration and alteration materials of such advertising company; 13. Copies of No. 8491181 and No. 8491178 value added tax invoices; 14. State Administration of Taxation, Notice on Uniform Compilation and Printing of 1995 VAT Special Invoice Code.

 Boliya Company alleged that, Apollo Company had filed an application to TRAB for trademark dispute with respect to the same trademark and pleas, nowadays, Apollo Company filed the application once again without new relevant evidence. The design patent right of Apollo Company has already been revoked according to law. No. 0276 Verdict of TRAB concluded that such disputed trademark was started to be used in 1996, and Apollo Company started to use such disputed trademark from October 1997, and such verdict has been affirmed finally by the court, thus, the use of such disputed trademark is earlier, so that, there is no need to examine the fact that Apollo Company has no prior right toward such disputed trademark, the well-known trademark of the so-called Apollo Group Company has no relation with the trademark involved in this case. Copies submitted by Apollo Company as evidences do not comply with the rule of evidence of TRAB. In conclusion, as the effective verdict of TRAB and effective verdict of the court determined, the grounds for the trademark disputes raised by Apollo Company were untenable according to law, and Boliya Company enjoys the right to use trademark.

 With the purpose of supporting its allegation, Boliya Company filed the following materials to TRAB: 1. Notice of Defense for Trademark Dispute, proving the existence of the same trademark dispute case; 2. No. 0276 Verdict, proving the effectiveness of such verdict; 3.No. 419 final judgment, proving the final judgment of such trademark dispute; 4, Decision on revoking the patent request, proving the invalidity of prior right claimed by Apollo Company.

 TRAB believed that, according to article 35 Regulation for Implementing Trademark Law of People’s Republic of China, where TRAB has made a verdict or decision on the application for trademark review, no one shall applied for trademark review again on the basis of the same fact and grounds. On January 13, 2005, Apollo Company filed an application for the trademark dispute on grounds on grounds that , and TRAB ruled that the such grounds were untenable, and approved the registration of disputed trademarks. Currently, Apollo Company applied to TRAB for the cancelation of the disputed trademark on grounds that the disputed trademark infringes upon the prior rights of the package decoration, copyright and patent right of well-known products, and there is agency relation existed between both parties, among which, the infringements upon prior copyright and patent right are newly added, and Apollo Company also provided the corresponding evidences to support that, thus this case does not fall into the circumstance of applying for trademark review under the same grounds, TRAB accepted such application and commented on the newly added facts and grounds.

 TRAB believed that the focus of dispute in this case is whether the application for registration of the disputed trademark violates Article 31, Trademark Law “the application for registration of trademarks shall not infringe upon the existing prior rights of others”. The prior rights involved in this case include patent right and copyright. First, with the purpose of supporting its allegation that the disputed trademark infringed upon its design patent, Apollo Company submitted the Design Patent Certificate of the package box of plant anti-hairless shampoo containing the disputed trademark graphics. After examination, it is found that the obtaining time of such design patent is latter than the registration date of such disputed trademark, and evidence 4 indicated that such design patent has already been revoked by Intellectual Property Office, thus, TRAB refuses to support such claim of Apollo Company. Second, Apollo Company claimed the copyright to the design pattern artworks of plant anti-hairless shampoo, and provided the design contract, design draft and registration certificate of such graphics. After investigation, Apollo Company and Guangdong Apollo Advertising Communication Company had reached the Cooperation Contract of Package Design for Apollo Plant Anti-hairless Shampoo on April 5, 1996 (evidence 1), and the design draft shall be finished on April 25, 1996 according to the contract. The design draft bears the official seal of the designing unit (Guangdong Apollo Advertising Communication Company). The contract and design draft were notarized by the Notary Office of Yuexiu District, Guangzhou City, and TRAB has approved its authenticity. Meanwhile, it is agreed in the Supplementary Contract (evidence 2) between Apollo Company and Guangdong Apollo Advertising Communication Company that the copyright of the finished design graphics of the package of plant anti-hairless shampoo belongs to Apollo Company. On May 18, 2006, Apollo Company applied for the registration of the copyright of such design graphics, and it’s indicated in the copyright registration certificate (evidence 3) that the completion date of such artwork is April 10, 1996. Upon comparison, the graphics showed in the copyright registration certificate is exactly the same with that of design draft provided by Apollo Company. TRAB believed that the combination of these evidences mentioned above can prove that the artworks of design graphics for plant anti-hairless shampoo was completed in April 1996, and under the circumstance of no evidence to the contrary, Guangdong Apollo Advertising Communication Company is the author to such artwork, while Apollo Company enjoys the copyright of such artworks.

 TRAB believed that evidences, accepted in S.P.Z. (2004) No. 0276 as proving that Boliya Company’s use time of such disputed trademark commenced from year 1996, mainly contained No. 8491191 and No. 8491178 VAT invoices of Guangdong Province, account sales of VAT special invoice and certificates issued by the purchasers in the invoices: Guangzhou Guangbai Co., Ltd. and Guangzhou Women and Children Products Co., Ltd. Although still raised doubts to the credibility of evidences provided by Boliya Company, even if the times (October 7, 1996, October 8, 1996) indicated in No. 8491191 and No. 8491178 VAT invoices of Guangdong Province are accepted as the use time of such disputed trademark by Boliya Company, such times are latter than the time for obtaining the copyright of the design graphics for Plant Anti-hairless Shampoo.

 Whereas the factual findings mentioned above, TRAB believed that Apollo Company enjoyed the copyright to design graphics for plant anti-hairless shampoo, and the disputed trademark graphics were exactly the same with such artworks of Apollo Company, thus, the application for the registration of such trademark infringed upon the prior copyright of Apollo Company. Thus, in accordance with Article 31, Item 2, Article 41 and Article 43, Trademark Law, TRAB reached a verdict that the trademark dispute with respect to No. 1395207 figurative trademark registered in Category three commodities (such as toothpaste) applied by Boliya Company were affirmed, and such trademark registered shall be revoked.

 Boliya Company refused to accept such verdict and filed an administrative lawsuit to Beijing No.1 Intermediate People’s Court.

 During the period of first trail and second trail, defendant of first trail submitted the following evidences: 1. First set of evidences are disputed trademarks archives; 2. Second set of evidences are all materials with respect to such disputed trademark submitted by Apollo Company when filing such trademark disputes ; 3. Third set of evidences are all materials submitted by Boliya Company in the administrative procedure.

 Appellee (Boliya Company) submitted the following materials: 1. No. 4217 Verdict; 2. No. 0276 Verdict; 3. No. 419 Verdict; 4. S.P.Z.(2006) No. 3693 Verdict of Trademark Dispute Regarding No. 1395207 Figurative Trademark; 5. D.F.M.S.C.Z. No. 15 Civil Judgment (2005); 6. Court summons F0050526.

 Appellant did not submit any evidence.

 All evidences mentioned above shall be transferred to this court for cross-examination and verification through court hearing and the conclusions of first trail is determined to be correct and can be used as the basis for the determination of the factual findings of such case.

 This court believed that, as for issues whether the application for trademark dispute of Apollo Company exceeds the time limit, and whether TRAB repeatedly reviewed such disputed trademark involved in this case, this court affirmed the court’s decisions of first trail toward these two issues, and because there is no controversies among all parties, no need to be repeated here.

 As for the critical issue of this case: whether appellant (Apollo Company) has the prior copyright, this court believed that the draft attachment submitted by Apollo Company can not prove its formation time, and notarial certificate can only prove that the contents of original document complies with the copies, because such notarial certificate is not the real-time notarization carried out by the contracting parties of such commission contract of design, and there is not sufficient evidence to prove the relevance between such attachment and the commission contract of design, and it does not specify that draft or sketch have already been formed, or whether such sketch is further designed according to draft or further improved on basis of such draft. Meanwhile, the carrier of completed design shall be film and optical disk according to the commission contract of design, and Apollo Company still does not provide any evidences and materials mentioned above until now. Thus the combination of such commission contract of design and its supplementary agreement and the design sketches can not form a complete evidence chain, which can not prove the artworks showed in the draft were designed in April, 1996. The voluntary registration certificate of artworks copyright submitted by Apollo Company is prepared ten years later, not applied in real-time. Although such attachment clearly specified the specific subject protected by the copyright, the completion time of such artwork specified in the registration items can not be directly adopted as established fact, and under the premise of no other evidence, it can not be used as the direct evidence to prove the completion time. Therefore, the commission contract of design, supplementary contract and design sketch submitted by Apollo Company, together with the voluntary registration certificate of artworks copyright and its attachment can not sufficiently prove the fact that the time for obtaining the copyright to corresponding artworks by Apollo Company is earlier than the time of application for the registration of such disputed trademark by Boliya Company.

 In conclusion, TRAB believed that all major materials relating to prior copyrights owned by Apollo Company are insufficient, Verdict of first trial that revoke S.P.Z. [2006] No. 4217, The Verdict of Trademark Dispute Regarding No. 1395207 Figurative Trademark made by TRAB is affirmed. In accordance with Item 1, Article 61, Administrative Procedure Law of People’s Republic of China, this court decides as follows: dismissal of appeal, maintenance of the first instance judgment. The litigation fee of second trail is 100 Yuan, which shall be assumed by appellant Guangdong Apollo Cosmetics Co., Ltd. (already paid).

 This judgment is final judgment.

 

Chief Judge: ZHU Shikuan

 Judge: WANG Yan

 Acting Judge: GAO Jingwen

 November 27, 2007

 Court Clerk: ZHANG Yi

 

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