CHANG TSI
Insights
Overview
This is a trademark opposition case. In this case, the Opposed Mark is (Device) under App. No. 69201854 in Class 9 in the name of Zhongda Cable Group Co., Ltd. The Opponent and the client is Zendesk, Inc. The China National Intellectual Property Administration (CNIPA) refused the registration of the Opposed Mark based on Articles 32 and 35 of the Trademark Law, on the grounds that “the Opposed Party’s application for registration of the Opposed Mark without the consent of the Opponent constitutes an infringement of the Opponent’s prior copyright.”
The main reason that prompted the CNIPA to recognize that the client enjoys prior copyright is the substantial and sufficient evidence of prior use for the Z logo. The Opponent’s prior use of its cited trademark (which is also the copyrighted artwork) and its copyright registration certificate are the two key pieces of evidence proving the Opponent’s prior copyright. In this case, although the client’s prior mark (Z logo) has been globally used, including in China, this device (which is also a work of art) has not been registered for copyright in China and the services on which the client prior used the Z logo are different from the designated goods of the Opposed Mark. Chang Tsi successfully helped the client avoid this disadvantage by focusing on proving the client’s prior use of its cited trademark (artwork) in the Chinese market. After multiple rounds of communication, Chang Tsi, together with the client, collected sufficient and favorable evidence, laying a solid foundation for the favorable opposition decision. Ultimately, the CNIPA concluded: “The Opponent enjoys prior copyright in this artwork, and the Opponent’s cited trademark has acquired a certain level of reputation and influence in the Chinese market through long-term promotion and use. The Opposed Party has opportunity to learn about the Opponent’s artwork. The Opposed Mark and the Opponent’s artwork are identical in respect of design components, detail characteristic, expressive style and overall visual effect. Therefore, the Opposed Party’s application for registration of the Opposed Mark without the Opponent’s permission constitute infringement upon the Opponent’s copyrights.” Following this determination, the CNIPA refused the registration of the Opposed Mark.
This case is of significant importance for protecting the client’s prior trademark rights and copyright in China, ensuring the client’s well operation in the Chinese market, combating plagiarism and trademark squatting, and it also clears prior obstacle for the client’s own trademark application in China.
Our client, Zendesk, Inc. (hereinafter referred to as “the client”), has registered and used the mark Z logo (hereinafter referred to as “Z logo”) abroad and holds prior registration of this trademark in the United States. While the client has not applied for or registered this trademark in China, nor has it registered for copyright. The Opposed Party discovered this gap and registered an identical “Z logo” under its name in China. After receiving instructions from the client, we filed an opposition against the Opposed Party’s pirated mark“Z”. We advised the client to provide substantial evidence to prove its prior trademark rights and prior copyright in relation to the Z logo (artwork). To avoid any disadvantages arising from the client’s lack of copyright registration certificate in China, we recommended focusing on demonstrating the client’s prior use and reputation of the client’s Z logo trademark in China and filing copyright registration for the Z logo in China at the same time. We adopted a flexible strategy for the opposition submission. Before the opposition deadline, we first submitted a simple basis for the opposition to preserve the client’s rights, and then we filed detailed supplementary grounds and evidence within the three-month supplemental period, thus allowing sufficient time for the client to gather as much evidence as possible. During our email communications with the client, we discovered that the client did not intend to proceed with copyright registration in China at the current stage. While the absence of copyright registration certificate could negatively affect our chances of success in the opposition, we promptly adjusted our strategy by respecting the client’s decision not to register the copyright at this time and further emphasized the breadth, depth, and quality of the evidence to be collected. Under our guidance, the client provided various pieces of evidence, including registration certificates from other countries and regions, invoices from the past several years, public sales presentations targeted at the Chinese market, advertisements, promotions, and information on the use of the Z logo in exhibitions and other commercial activities, including specific materials relevant to the Chinese market. These pieces of evidence strongly supported the client’s influence and reputation, as well as the prior use of the Z logo, ultimately determining the favorable outcome.
On May 2, 2024, in the opposition decision, the China National Intellectual Property Administration (CNIPA) refused the registration of the Opposed Mark Z under App. No. 69201854 in Class 9 under the provisions of Articles 32 and 35 of the Trademark Law. This decision is of significant importance for protecting the client’s prior trademark rights and copyright in China, ensuring a favorable operational environment for the client in the Chinese market, combating plagiarism and trademark squatting, and clearing prior obstacle for the client’s own trademark application in China.
Firstly, the client has not applied for or registered Z logo in China, nor has it registered for copyright, which results in a lack of proof of prior trademark rights and prior copyright ownership in mainland China
Secondly, the trademark in question is a device trademark, which requires substantial evidence to prove copyright to the device artwork. In the meantime, the services on which the client prior used the device mark are different from the designated goods of the Opposed Mark.
Thirdly, when our team received the case, there was little time left before the opposition deadline, necessitating the rapid collection of a large volume of high-quality evidence within a limited time.
Fourthly, the client’s lack of intent to register for copyright negatively impacts the likelihood of success in this opposition case.
In light of the challenges presented in this case, we devised the following strategy:
1. Addressing the Lack of Domestic Copyright Registration Certificate: Since the client did not have copyright registration certificate in China, we focused on demonstrating the client’s global influence and brand recognition, as well as the prior use of the Z logo in the Chinese market. To achieve this, we worked with the client to collect various types of evidence, including the client introductions and advertising materials on global online platforms, global influence reports, successful case studies of the client’s companies in the Chinese market, transaction invoices in China, images of exhibitions and presentations held in China, etc. These pieces of evidence helped demonstrate that the client had significant global influence, and that the Z logo had been widely used as part of the client’s business activities, including in the Chinese market. This convincing evidence ultimately persuaded the China National Intellectual Property Administration (CNIPA) to acknowledge the client’s prior copyright to the Z logo in its opposition decision.
2. Overcoming the Challenge of Proving Copyright with Extensive Evidence: Given the need to provide substantial evidence to prove copyright ownership, we prepared a detailed evidence outline at the initial stage of communication with the client. We provided a comprehensive list of required evidence for the client’s reference, and later guided the client to provide the specific evidence we needed. Additionally, drawing from our successful experience in copyright enforcement, we gathered supporting evidence from various online platforms, including major websites and the client’s official website, to strengthen the evidence base.
3. Addressing the Tight Timeline for Evidence Collection and Opposition Submission: Given the time constraints before the opposition deadline, we adopted a flexible opposition submission strategy. Before the opposition deadline, we first submitted a simple basis for the opposition to preserve the client’s rights, and then we filed detailed supplementary grounds and evidence within the three-month supplemental period, thus allowing sufficient time for the client to gather as much evidence as possible. This allowed us ample time to collect necessary evidence while meeting all procedural requirements.
4. Addressing the Client’s Reluctance to Register for Copyright: Although the client was not inclined to register for copyright in China, we quickly adapted our strategy to respect the client’s decision. Instead of pushing for copyright registration, we focused on ensuring the collection of high-quality, comprehensive evidence to mitigate the potential negative impact of the absence of copyright registration. By doing so, we aimed to strengthen our case and avoid disadvantages that might arise from the lack of a formal copyright registration.
To support the above strategy, we conducted extensive research and guided the client in collecting substantial, effective evidence. Under our guidance, the client provided the following evidence: introduction and promotional materials from various websites and the client’s official site; registration certificates from other countries and regions; invoices from the past several years; sales presentations, advertisements, promotions, exhibitions, and other commercial activities in the Chinese market using the Z logo (artwork), including China-specific materials. This evidence strongly supported the client’s influence, recognition, and prior use of the Z logo, ultimately leading to the successful opposition outcome.
In conclusion, by strategically addressing each challenge and meticulously gathering and presenting evidence, we were able to secure a favorable opposition decision, protecting the client’s intellectual property rights and reinforcing their presence in the Chinese market.
This case has reference and enlightening significance for using prior copyright to crack down the pirated marks in contentious cases (opposition, invalidation, etc.). The protection for copyright encompasses full Classes, without being restricted to specific trademark Class. Correspondingly, in proving that the client enjoys copyright over their trademark (artwork), it is necessary to provide a substantial amount of high-quality evidence, especially in the absence of prior copyright ownership proof (copyright registration certificate), which raises the evidentiary requirements. In this case, the primary reason that prompted the CNIPA to make a favorable decision for the client is that the evidence we provided sufficiently supported the client’s influence, reputation, and extensive and long-term prior use of the Z logo (the services on which the Z logo are used are different from the deisgnated goods of the Opposed Mark), proving that the client enjoys copyright to the Z logo. Therefore, this case also highlights the importance of a copyright registration certificate in practice for determining the rights holder’s enjoyment of the prior copyright. A copyright registration certificate can initially prove and support the rights holder’s copyright to the artwork, although it still needs to be combined with the evidence of use to comprehensively assess the rights holder’s possession of the prior copyright. This can significantly alleviate the pressure on the rights holder to collect and provide the evidence of use for the artwork. In this case, the Z logo owned by the client was not registered for copyright in mainland China, which greatly increased the pressure and difficulty in collecting evidence. Therefore, in future practice, if similar situations arise, it is advisable to suggest that clients promptly register the copyright for their device trademarks (artworks).
