BKIP Limited

COPYRIGHT BKIP 2020
Big Head Son and Small Head Father_Trademark Invalidation Case Dec 2020
1. Basic background The trademark registration No. 19540871 "Big Head Son and Small Head Father" (hereinafter referred as “the disputed trademark”) was filed for registration by Hangzhou Big Head Son Cultural Development Co., Ltd. (the respondent in this case) on April 6, 2016. After opposition, on 28 December 2018, it was approved to be registered in class 44 for "gardening" and other services, and the trademark right would last until 20 August 2027. CCTV Animation Co., Ltd. (the applicant in this case, hereinafter referred to as CCTV Animation Company) filed a request for invalidation of the disputed trademark on 16 April 2019, claiming that the disputed trademark consists of the applicant’s "Big Head Son and Small Head Father" animation and its characters, which is easy to cause confusion and misidentification, infringing on the well-known character name rights of the applicant’s “Big Head Son”, “Small Head Father” and “Apron Mother” and the copyright of the character and related works, and the respondent and its affiliates have preemptively registered trademarks such as "Little Tadpoles Looking for Mother", "Dingdou Doll", and "Mike Panda" in multiple categories violated the principle of good faith and the maliciousness was obvious, the disputed trademark should be declared invalid. The applicant submitted a total of 20 administrative judgments and other evidences under Administrative no. 2018 Jing Xing Zhong No. 4479-4498. The respondent did not respond in this action.
2. Case analysis The trial concluded that, first of all, the disputed trademark, as a pure text trademark, did not infringe the copyright of the characters’ derivative work as claimed by the applicant. However, according to the determination in the court judgments submitted by the applicant, the literary works and cartoons of "Big Head Son and Small Head Father" have been well-known throughout the country. Among them, "Big Head Son", "Small Head Father" and "Apron Mother" are already well-known to the relevant public and has a clear reputation. Through the publicity and promotion of CCTV Animation Company and its affiliates, it has acquired certain commercial value. CCTV Animation Company has the right to claim related rights and interests in the literary works of "Big Head Son and Small Head Father" and the character names of "Big Head Son", "Small Head Father" and "Apron Mother" in the cartoon. The rights falls into the scope of Article 32 of year 2013 Trademark Law as "prior rights" mentioned in it. The disputed trademark "Big Head Son and Small Head Father" is identical to the character names in the literary works and cartoons of "Big Head Son and Small Head Father". When used in the designated service, it is easy for the relevant public to misunderstand that the service is provided by certain interested party or might have specific connections with the same, which can cause confusion and misidentification. Therefore, the application and registration of the disputed trademark damages the applicant’s rights and interests in the literary works and the cartoons of “Big Head Son and the Small Head Father”, and the rights for the character names of “Big Head Son” and “Small Head Father”, and constitutes "damage the existing prior rights of others" according to the Article 32 of the 2013 Trademark Law.
3. Typical meaning The core issue that needs to be discussed in this case is that CCTV Animation Company claimed that the disputed trademark infringed its characters’ name rights of “Big Head Son” and “Small Head Father”, whether this claim can be established. First of all, according to section 2 or Article 22 of the Supreme People's Court Regulations on Several Issues Concerning the Trial of Administrative Cases for the Authorization and Confirmation of Trademarks, "For works within the term of copyright protection, if the name of the work, the name of the characters etc. with high popularity, the use of it as a trademark on related goods can easily lead the relevant public to mistakenly believe that it is licensed by the right holders or has a specific connection with the right holders, then when the right holders claim that they constitute prior rights and interests, the People’s court will support it.” In this case, referring to the above provision, and according to the determination of the court judgments submitted by the applicant, the literary works and cartoons of "Big Head Son and Small Head Father" have been well-known throughout the country, and the characters "Big Head Son", "Small Head Father" and "Apron Mother" are already very familiar to the relevant public, and have a clear reputation, and have a certain commercial value. CCTV Animation Company has the right to claim related rights and interests in the literary works of "Big Head Son and Small Head Father" and the character names of "Big Head Son", "Small Head Father" and "Apron Mother" in the cartoon. The rights falls into the scope of Article 32 of 2013 Trademark Law as "prior rights" mentioned in it. Secondly, "Big Head Son", "Small Head Father" and " Apron Mother" are not fixed collocation phrases with certain originality. Third, the disputed trademark "Big Head Son and Small Head Father" is the same as the character names in the literary works and cartoons of "Big Head Son and Small Head Father". When used in the relevant service, it is easy for the relevant public to misunderstand that the service is provided by certain interested party or there might have specific connections with the same, which can cause confusion and misidentification. Therefore, the respondent’s application and registration of the disputed trademark actually improperly used the popularity and influence of the literary works and cartoons of "Big Head Son and Small Head Father", and squeezed out the commercial value and trading opportunities the right holder of the character name should enjoy based on the role name of "Big Head Son" and "Small Head Father", and harmed the applicant’s rights and interests from the literary works of "Big Head Son and Small Head Father" and the character names of "Big Head Son" and "Small Head Father" in the cartoon, and constitutes "damage the existing prior rights of others" according to the Article 32 of the 2013 Trademark Law.