The Shandong Provincial Higher People\u2019s Court recently held a trademark agent responsible for one half of the damages suffered by the plaintiff trademark owner based upon (a) extensive bad faith trademark registration; (b) use of the trademark by a company associated with the agent; and (c) the agent\u2019s handling of additional bad faith applications even after the applicant had been the subject of opposition and invalidation decisions confirming bad faith.<\/p>\n\n\n\n
The total compensation awarded was RMB200,000 (US$28,000), of which the agent was held jointly and severally liable for half.<\/p>\n\n\n\n
This is the second reported decision in which a trademark agent was held civilly liable for compensation, the first being a case decided in 2022 by the Fujian Provincial Higher People\u2019s Court involving the mark \u201cIn-Sink-Erator.\u201d In that case, the trademark agent was held jointly and severally liable for 40% of total compensation, resulting in an award against the agent of RMB 640,000 (US$89,600).<\/p>\n\n\n\n
Notably, the Shandong court also ordered the defendant to withdraw or voluntarily cancel its bad faith applications and registrations. This is the second reported decision in which a Chinese court ordered a registry pirate to withdraw and cancel its remaining applications and registrations, the first being a case decided in Ningbo City in 2023 (involving the mark \u201cReFa\u201d [(2023)\u6d590212\u6c11\u521d4045\u53f7].<\/p>\n\n\n\n
See East IP case notes on the ReFa and In-Sink-Erator decisions \u66f4\u591a\u4fe1\u606f\u53c2\u89c1\u6b64\u5904<\/a> \u548c \u66f4\u591a\u4fe1\u606f\u53c2\u89c1\u6b64\u5904<\/a>.<\/p>\n\n\n\n \u201cTina & Tony\u201d is a Russian cartoon published in China by Youku. Tina is an elephant, and Tony is a hippopotamus. <\/p>\n\n\n\n Riki Co. Ltd. and Alibaba Culture & Media Co., ltd. (\u201cAlibaba\u201d) jointly owned copyright in the relevant animation works. <\/p>\n\n\n\n Youku registered copyright in the animation logo and images of \u201cTina & Tony\u201d characters in China. <\/p>\n\n\n\n The works were first published in 2015 and the animation generated a high level of recognition in China.<\/p>\n\n\n\n Between December 2018 and August 2019, Ding filed 34 trademarks based on the \u201cTina & Tony\u201d cartoons, including eight trademarks consisting of images of \u201cTina & Tony\u201d characters and 26 trademarks for \u201cTina & Tony\u201d characters\u2019 names. <\/p>\n\n\n\n Youku and Alibaba opposed Ding\u2019s applications for the eight cartoon images based on their prior copyright in the \u201cTina & Tony\u201d characters and animations. In early 2021, Youku and Alibaba received favorable decisions in each case.<\/p>\n\n\n\n Youku and Alibaba also filed invalidations against Ding\u2019s 26 trademark registrations for \u201cTina & Tony\u201d character names. These disputes were likewise all decided in Youku and Alibaba\u2019s favor.<\/p>\n\n\n\n The Trademark Review and Adjudication Department (TRAD) decided these cases based upon Ding\u2019s apparent bad faith. Specifically, the decisions were based on Article 44 of the PRC Trademark Law<\/em>, which prohibits registration of marks using \u201cdeceptive or other improper means.\u201d Ding did not appeal any of these decisions. <\/p>\n\n\n\n Ding filed a second batch of 20 trademark applications copying \u201cTina & Tony\u201d IP between August 2021 to January 2022 and a third batch of 15 trademarks after February 2022.<\/p>\n\n\n\n Altogether, Ding filed 69 trademarks targeting the \u201cTina & Tony\u201d brand.<\/p>\n\n\n\n Further, Ding was associated with two companies, including Shandong Elephant Tina E-commerce Co., Ltd.\u201d (previously known as Linyi Huakai Illumination Co. Ltd.), which sold \u201cTina & Tony\u201d-branded food products on Taobao and Tmall<\/span>. <\/p>\n\n\n\n The Linyi court found that Ding\u2019s affiliated companies had filed more than 40 trademarks that copied or imitated other parties\u2019 famous marks.<\/p>\n\n\n\n Youku submitted evidence that it had spent more than RMB 396,000 (US$56,000) to deal with registry actions and court appeals concerning Ding\u2019s first batch of 34 pirate marks. Youku also claimed RMB 2 million (US$285,000) in other damages.<\/p>\n\n\n\n The Linyi Intermediate People\u2019s Court found that Youku is the copyright holder of the \u201cTina & Tony\u201d logo and character images, and that:<\/p>\n\n\n\n \u201c(t)he rights and interests of copyright owners and other rights\u2019 owners to commercialize relevant elements in films, television dramas and animations should be protected by the PRC Anti-unfair Competition Law as part of the owners\u2019 important competitive advantages and market interests in the market for derivative works\u201d.<\/em><\/p>\n\n\n\n Based on Youku\u2019s extensive evidence of its promotion of \u201cTina & Tony,\u201d the court also found that the \u201cTina & Tony\u201d animation logos and character images and names constitute \u201csigns with certain degree of influence (fame)\u201d under Articles 6.1 and 6.4 of the PRC Anti-unfair Competition Law<\/em>.<\/p>\n\n\n\n The court also found that Ding\u2019s filing for the \u201cTina & Tony\u201d cartoon character images and names violated the principle that trademark filings should not infringe upon other\u2019s prior rights under the PRC Trademark Law<\/em>.<\/p>\n\n\n\n Regarding the trademark agent Weicheng, the court found that it had violated the principle of honesty and good faith, as evidenced by the fact that Weicheng continued to assist Ding in filing for \u201cTina & Tony\u201d trademarks even after the first 34 marks were successfully opposed and invalidated.<\/p>\n\n\n\n Thus, taking into consideration the fame of the \u201cTina & Tony\u201d IP, the defendants\u2019 bad faith, and the fact that Youku did not submit evidence to prove its actual losses or the defendants\u2019 illegal gains, but did spend considerable resources to stop the infringement, the first instance court ordered that:<\/p>\n\n\n\n Youku appealed the lower court\u2019s decision to the Shandong High People’s Court as it was dissatisfied with the damages awarded, as it constituted only 10% of the amount it originally claimed in the first-instance proceedings.<\/p>\n\n\n\n The defendant Weicheng also appealed, claiming that it should not bear any legal responsibility.<\/p>\n\n\n\n Ding did not appeal.<\/p>\n\n\n\n In its decision, the second instance court upheld the lower court\u2019s holding on both issues:<\/p>\n\n\n\n Because Youku did not submit evidence to prove its loss or profit obtained by Ding and Weicheng, taking into consideration the fame of Youku\u2019s prior rights, as well as the bad faith of Ding and Weicheng, Linyi Court ordered a damage of US$28,000 is reasonable, and should be upheld.<\/p>\n\n\n\n <\/p>","protected":false},"excerpt":{"rendered":" The Shandong Provincial Higher People\u2019s Court recently held a trademark agent responsible for one half of the damages suffered by the plaintiff trademark owner<\/p>","protected":false},"author":4,"featured_media":1005,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[79,15,19],"tags":[32,82,33,34],"class_list":["post-3083","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-cases","category-insights","category-trademark","tag-bad-faith","tag-case-notes","tag-civil-damages","tag-unfair-competition"],"acf":[],"_links":{"self":[{"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/posts\/3083","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/users\/4"}],"replies":[{"embeddable":true,"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/comments?post=3083"}],"version-history":[{"count":5,"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/posts\/3083\/revisions"}],"predecessor-version":[{"id":3094,"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/posts\/3083\/revisions\/3094"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/media\/1005"}],"wp:attachment":[{"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/media?parent=3083"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/categories?post=3083"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.east-ip.com\/zh\/wp-json\/wp\/v2\/tags?post=3083"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}Details of Tony & Tina Decision<\/h2>\n\n\n\n
Plaintiff (appellant in second-instance proceedings):<\/strong><\/h3>\n\n\n\n
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Defendants (respondents in second-instance proceedings):<\/h3>\n\n\n\n
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Courts and Dates of Decisions:<\/h3>\n\n\n\n
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\u80cc\u666f\u8bf4\u660e<\/h3>\n\n\n\n
First Instance Decision by Linyi City Intermediate People’s Court<\/h3>\n\n\n\n
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Second Instance Decision by Shandong High People’s Court<\/h3>\n\n\n\n
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