One Case a Day | China: Confirmation of Trademark Priority Application Right - Supreme People's Court Gazette Case (2021) Supreme People's Court Administrative Retrial No. 261

Case Introduction

Today's shared case is a trademark case published in Issue 12 of the Supreme People's Court Gazette in 2025. This case is a retrial case. How effective is a registered trademark used later than others? Does jointly using a trademark or jointly contributing to the trademark's goodwill necessarily make one a joint trademark owner? This case provides a clear answer.

Case Information

• Trademark Registration Number: 6925383 (filed on August 29, 2008)
• Invention Name: Beautiful Beauty and Figure
• Applicant: Oriental Fengxing Company
• Opposition Ruling: No. 337
• Opposition Review: Commercial Review Word [2015] No. 47798
• Second Instance Judgment: Beijing High People's Court (2018) Jing Xing Zhong No. 4403
• Retrial Judgment: (2021) Supreme People's Court Administrative Retrial No. 261

The program Beautiful Beauty was prepared and produced by Oriental Huanteng Company in the second half of 2005. In 2006 and 2007, Oriental Huanteng Company signed cooperation agreements with Travel Satellite TV Company, stipulating that the Beautiful Beauty program would be jointly invested by both parties, produced by Oriental Huanteng Company, and the copyright of the program would be jointly owned by both parties. In January 2008, Oriental Fengxing Company signed a cooperation agreement with Travel Satellite TV Company, stipulating that the Beautiful Beauty program would be jointly invested by both parties, produced by Oriental Fengxing Company, and the program copyright would be jointly owned by both parties. In January 2006, the Beautiful Beauty program premiered on Travel Satellite TV and continued to be broadcast on this platform until December 31, 2012. In January 2008, Oriental Huanteng Company and Oriental Fengxing Company signed a contract, stipulating that Oriental Huanteng Company would transfer the copyright of the Beautiful Beauty television program (a total of 312 episodes from 2006 to 2007) jointly enjoyed with Travel Satellite TV Company to Oriental Fengxing Company. After Oriental Huanteng Company was deregistered, its shareholders issued a statement, clearly transferring all rights and interests, including the copyright of the "Beautiful Beauty" artwork, to Oriental Fengxing Company from January 15, 2008.

Judgment Summary

China's Trademark Law implements a system of trademark right acquisition through registration, adopting the principle of first-to-file. It does not stipulate that only a trademark used first can be applied for registration, nor does it stipulate that joint use of a trademark or joint contribution to the trademark's goodwill makes one a joint trademark owner. In the absence of clear legal provisions and contractual basis, the approach of property co-ownership cannot be adopted to determine that trademark goodwill should be shared, thereby denying the applicant's legitimate qualification for prior trademark registration.

Views of the Parties

Ruling No. 47798 held: The Beautiful Beauty television program was jointly produced and broadcast by Travel Satellite TV Company and Oriental Fengxing Company, and both parties also defined their respective rights, obligations, and related commercial benefit distribution through written agreements. Before the application date of the disputed trademark, the Beautiful Beauty television program had already gained high recognition among relevant consumers and had won the "Annual China's Most Influential Socially Produced Television Program" award for five consecutive years. Therefore, this case should determine that "Beautiful Beauty," as a trademark used in related services such as television entertainment activities, has been well-known to relevant consumers and has gained certain social recognition. The property value carried by the words "Beautiful Beauty" was jointly realized by Travel Satellite TV Company and Oriental Fengxing Company. Both parties have the right to enjoy the goodwill carried by "Beautiful Beauty" and conduct continuous market operations. Therefore, "Beautiful Beauty" should not be exclusively enjoyed and monopolized by Oriental Fengxing Company alone. If the disputed trademark is approved for registration, it may easily hinder the realization of Travel Satellite TV Company's legitimate rights and interests. Considering the above facts and starting from safeguarding the actual interests of both parties, the disputed trademark, in 18 service items including "broadcast and television program production," violates the provisions of Article 32 of the 2013 Trademark Law regarding "applying for trademark registration shall not preemptively register by improper means a trademark that others have used and has gained certain influence," and should not be approved for registration.

The first-instance court held: China's Trademark Law adopts the principle of first-to-file for trademark registration. Unlike the Patent Law or Copyright Law, the Trademark Law does not have provisions similar to "the person who creates the work is the author" or "the person who makes substantive contributions to the technical solution of the invention is the inventor." Therefore, in the absence of other legal or contractual basis, it cannot be analogized that "joint users of a trademark" should be "joint trademark owners."

In this case, Oriental Fengxing Company (Oriental Huanteng Company) began preparing and first producing the Beautiful Beauty program in the second half of 2005, and the brand concept and design of the program both came from Oriental Fengxing Company. The cooperation agreement signed between Oriental Fengxing Company and Travel Satellite TV Company also clearly stipulated that the Beautiful Beauty program was produced by Oriental Fengxing Company and exclusively broadcast through "Travel Satellite TV." Later, the Beautiful Beauty program premiered on Travel Satellite TV on January 21, 2006. This broadcast time was certainly later than the time when Oriental Fengxing Company prepared and produced the program, so Travel Satellite TV Company did not have the fact of prior use of the "Beautiful Beauty" mark. Although it is undeniable that the Beautiful Beauty program became well-known to relevant consumers through continuous broadcasting on "Travel Satellite TV" and thus gained certain social recognition, this does not mean that Travel Satellite TV Company naturally obtained "joint trademark rights" to the "Beautiful Beauty" mark. Since Oriental Fengxing Company applied for registration of the disputed trademark first and used the "Beautiful Beauty" mark earlier than Travel Satellite TV Company, it did not have the fact of preemptively registering a trademark that Travel Satellite TV Company had used first and had gained certain influence, and certainly did not have the subjective malice of preemptively registering the goodwill of a trademark that Travel Satellite TV Company had used first and had gained certain influence. Therefore, its application for registration of the disputed trademark complies with legal provisions and does not violate the principle of good faith. The application for registration of the disputed trademark in service items such as "broadcast and television program production" does not constitute the situation referred to in Article 32 of the 2013 Trademark Law regarding "preemptively registering by improper means a trademark that others have used and has gained certain influence."

The second-instance court held: Article 32 of the 2013 Trademark Law requires judging whether the trademark claimed for protection is a trademark used first and whether the trademark has gained certain influence. In this case, although Oriental Fengxing Company submitted the Copyright Transfer Contract signed with Oriental Huanteng Company, this contract is an agreement between the two parties on the ownership of copyright and does not stipulate the rights to related trademark marks. Moreover, Oriental Fengxing Company and Oriental Huanteng Company are different legal entities and cannot be confused. Therefore, the use behavior of Oriental Huanteng Company regarding "Beautiful Beauty" cannot be equated with the use behavior of Oriental Fengxing Company.

The disputed trademark was applied for registration on August 29, 2008. Before this time, the Beautiful Beauty program had been broadcast on Travel Satellite TV Company's platform in January 2006. ... Since the Beautiful Beauty program premiered on Travel Satellite TV Company's channel in 2006, the program has won multiple awards. Before the application date of the disputed trademark, the "Beautiful Beauty" mark, as the name of the Beautiful Beauty program, was disseminated and used through Travel Satellite TV Company's platform, which had already enabled relevant consumers to recognize it as a television entertainment program, thus serving the function of distinguishing the source of goods or services, constituting an unregistered trademark in the sense of trademark law. Travel Satellite TV Company's use behavior also made the Beautiful Beauty television program gain high recognition among relevant consumers. Therefore, Travel Satellite TV Company's "Beautiful Beauty" mark, as a trademark used in service items such as television entertainment activities, had already been well-known to relevant consumers before the application date of the disputed trademark, constituting a trademark used first and having gained certain influence.

In summary, under the circumstance that the "Beautiful Beauty" mark, as a trademark used in service items such as television entertainment activities, had already been well-known to relevant consumers through Travel Satellite TV Company's use and promotion, constituting a "trademark used first and having gained certain influence," Oriental Fengxing Company, knowing the existence of this mark, applied to register it as the disputed trademark in this case. Its behavior has constituted the situation stipulated in Article 32 of the 2013 Trademark Law regarding "preemptively registering by improper means a trademark that others have used and have gained certain influence." Therefore, Travel Satellite TV Company's relevant appeal reasons are established, and the second-instance court supports them.

Retrial Views

The controversial focus at the retrial stage of this case is: whether the application for registration of the disputed trademark violates the latter part of Article 32 of the 2013 Trademark Law regarding "applying for trademark registration shall not preemptively register by improper means a trademark that others have used and have gained certain influence."

Article 32 of the 2013 Trademark Law stipulates: "Applying for trademark registration shall not harm the existing prior rights of others, nor shall it preemptively register by improper means a trademark that others have used and have gained certain influence." Article 23 of the Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Trademark Authorization and Validity Administrative Cases stipulates: "If a prior user claims that the trademark applicant preemptively registered by improper means a trademark that they have used first and have gained certain influence, if the prior used trademark has gained certain influence, and the trademark applicant knows or should have known the trademark, it can be presumed that they constitute 'preemptive registration by improper means.' However, if the trademark applicant provides evidence proving that they did not have the malice of utilizing the goodwill of the prior used trademark, it is an exception. If the prior user provides evidence proving that their prior trademark has a certain continuous use time, region, sales volume, or advertising, the people's court may determine that it has gained certain influence. If the prior user claims that the trademark applicant applied for registration of their prior used and gained certain influence trademark on goods dissimilar to theirs, violating the provisions of Article 32 of the Trademark Law, the people's court shall not support it." According to the above provisions, one of the constituent elements of the latter part of Article 32 is that the trademark applicant has subjective malice, i.e., preemptively registering a trademark by improper means.

In this case, regarding whether Oriental Fengxing Company had subjective malice when applying for registration of the disputed trademark. First, although the cooperation agreements signed between Travel Satellite TV Company and Oriental Huanteng Company or Oriental Fengxing Company all stipulate that both parties jointly enjoy the copyright of the Beautiful Beauty program, they do not stipulate the ownership of the rights and interests of "Beautiful Beauty" as a trademark. Second, the disputed trademark in this case is a graphic trademark, and the mark is exactly the same as the "Beautiful Beauty" artwork. The "Beautiful Beauty" artwork was created in 2005 by Xu Linjiang commissioned by Oriental Huanteng Company, and the copyright belongs to Oriental Huanteng Company. After Oriental Huanteng Company was deregistered, the copyright of this artwork was transferred to Oriental Fengxing Company. Third, the Beautiful Beauty program was initially planned and produced by Oriental Huanteng Company. Before the application date of the disputed trademark, Oriental Fengxing Company had actually carried out Beautiful Beauty program production services. Considering the above factors comprehensively, Oriental Fengxing Company submitted the application for registration of the disputed trademark to the Trademark Office on August 29, 2008, applying for registration in service items such as Class 41 "broadcast and television program production, television entertainment programs," which has legitimacy and does not have subjective malice. Therefore, the registration of the disputed trademark does not violate the latter part of Article 32 of the 2013 Trademark Law regarding "applying for trademark registration shall not preemptively register by improper means a trademark that others have used and have gained certain influence." The second-instance court did not comprehensively consider the applicable elements of the latter part of Article 32 of the 2013 Trademark Law and erred in applying the law.

Regarding Ruling No. 47798's view that Travel Satellite TV Company and Oriental Fengxing Company both enjoy the goodwill carried by the disputed trademark and that it should not be exclusively enjoyed by Oriental Fengxing Company alone. First, the latter part of Article 32 of the 2013 Trademark Law should be understood within the trademark law system. China's Trademark Law implements a system of trademark right acquisition through registration. Article 3, Paragraph 1 of the 2013 Trademark Law stipulates: "A trademark approved and registered by the Trademark Office is a registered trademark, including commodity trademarks, service trademarks, collective trademarks, and certification trademarks; the trademark registrant enjoys the exclusive right to use the trademark, which is protected by law." Article 4 stipulates: "Natural persons, legal persons, or other organizations that need to obtain the exclusive right to use a trademark for their goods or services in production and business operations shall apply to the Trademark Office for trademark registration. The provisions of this Law regarding commodity trademarks apply to service trademarks." According to these provisions, the exclusive right to use a trademark is protected by law, and the way for relevant subjects to obtain the exclusive right to use a trademark is to apply for trademark registration. However, to balance the interests of all parties and consider the principle of fairness, China's Trademark Law also provides a certain degree of protection for unregistered trademarks, such as Article 13, Paragraph 2, Article 15, the latter part of Article 32, Article 59, Paragraph 3, etc., of the 2013 Trademark Law. For unregistered trademarks used first and having gained certain influence, on the one hand, the latter part of Article 32 of the 2013 Trademark Law prohibits others from maliciously preemptively registering them; on the other hand, Article 59, Paragraph 3 of the 2013 Trademark Law allows prior users to continue using them within the original scope. Second, regarding the attribution of rights, China's Trademark Law differs from the Copyright Law and Patent Law. According to the provisions of the Copyright Law, copyright generally belongs to the person who creates the work, i.e., the author. For works created jointly by two or more persons, the copyright is jointly enjoyed by the co-authors. According to the provisions of the Patent Law, for non-service invention-creation, the right to apply for a patent belongs to the inventor or designer, i.e., the person who makes creative contributions to the substantive features of the invention-creation. For invention-creation completed through cooperation or commission, unless otherwise agreed, the right to apply for a patent belongs to the unit or individual that completed or jointly completed it. However, trademark registration adopts the principle of first-to-file. According to Article 31 of the 2013 Trademark Law, the trademark with the earlier application date is preliminarily examined and announced; for applications filed on the same day, the trademark used first is preliminarily examined and announced. The Trademark Law neither stipulates that only a trademark used first can be applied for registration, nor does it stipulate that joint use of a trademark or joint contribution to the trademark's goodwill makes one a joint trademark owner. Third, when administrative organs determine whether the application for registration of a trademark violates the latter part of Article 32 of the 2013 Trademark Law, they must comprehensively analyze a series of constituent elements such as whether the goodwill of the prior used trademark has reached a certain influence, whether the trademark applicant has the malice of utilizing the goodwill of the prior used trademark, etc. As mentioned earlier, the applicant for the disputed trademark in this case, Oriental Fengxing Company, did not have the malice of utilizing the goodwill of others' prior used trademark. Therefore, in the absence of clear legal provisions and contractual basis, the Trademark Review and Adjudication Board's analysis and judgment of goodwill contribution, adopting the approach of property co-ownership and concluding that Travel Satellite TV Company and Oriental Fengxing Company share the goodwill of the disputed trademark, excluding Oriental Fengxing Company's prior application, is an error in applying the law.

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In summary, some of Oriental Fengxing Company's reasons for applying for retrial are established. The first-instance judgment result is correct and should be upheld.