Bvlgari Snake Head Design Enjoys Copyright in China
In April 2021, the Beijing Intellectual Property Court (‘BIPC’) announced its ruling in relation to a China National Intellectual Property Administration’s (‘CNIPA’) decision by deciding in favor of Bvlgari. The matter related to a trade mark application filed by Mr. Liu Rongjun in class 18 that consisted of a “snake head” design that resembled Bvlgari’s own “snake head” design (the ‘Snake Head Design’).
CNIPA decision
The case started when Bvlgari filed a request to invalidate the trade mark application made by Mr. Liu for the Snake Head Design. According to the CNIPA, Bvlgari did not establish the evidence to prove its ownership of copyright in the design to satisfy the requirements for a violation of Article 32 of the Trade Mark Law of 2014 (‘Trade Mark Law’). The Trade Mark Law provides that no trade mark application shall infringe upon another party’s existing prior rights.
Decision reversed by the Beijing IP
Bvlgari then appealed the matter to the BIPC. The BIPC ruled in favour of Bvlgari by finding that Liu’s registered Chinese trade mark number 15911982 infringed Bvlgari’s copyright in the design and overturned the CNIPA decision on the basis of the following grounds:
(a) The snake head graphic possesses a certain aesthetic significance and its expression has the prescribed “originality” in the legal sense. Therefore, the graphic comes under the purview of art works that are protected by copyright law.
(b) Bvlgari had promoted the products containing the Snake Head Design in well-known fashion magazines like L’Officiel, Hongxiu, Jiaren, ELLE World Fashion Clothing Court, Vogue Apparel and Beauty, and Harper’s Bazaar since 2011. In addition, Bvlgari also demonstrated some evidence of its sales records.
(c) The evidence showed that Bvlgari publicized the work on bags and other commodities and the trade mark registrant was also involved in the sale of bags, therefore, there was a possibility of exposure to the Snake Head Design.
(d) When compared the disputed trade mark to Bvlgari’s Snake Head Design, the two are very similar in terms of overall appearance, visual effects, contours, and basic graphic composition.
Accordingly, Beijing IP Court found Mr. Liu to have infringed on Bvlgari’s right over the Snake Head Design in violation of Article 32 of the Trade Mark Law and that CNIPA ruled incorrectly.
Takeaway Points:
- You can protect your intellectual property rights under trade mark law and copyright law.
- In this matter, both the disputed trade marks and the copyright works involved are graphics based on snake heads.
- Bvlgari proved that it had legally enjoyed the copyright in the works before the filing date of the disputed trade mark on 11 December, 2014.
- The two works are very much similar with each other in terms of overall appearance, visual effects, contours, and basic graphic composition.
- When lacking the effective prior similar trade mark rights to argue a disputed trade mark, the application of Article 32 and whether the disputed trade mark violates another’s prior copyright is a good alternative tool.
- This decision shows an approach to challenging trade mark squatters through the use of copyright law when a trade mark design or logo is hijacked.
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Alessandra “Max” Maxine, Digital Administrator
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Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.
