ZY's Success in Protection of Merchandising Rights
ZY's Success in Protection of Merchandising Rights
2016/12/31 By ZY Partners

Client DreamWorks Animation

Industry Movie

Areas of Law Trademark Law

Venue Supreme People’s Court

Highlights Recognition of merchandising rights

Insights Court granted famous animation movie titles for prior right protection

We successfully represented DreamWorks Animation in opposition against third parties pirating the “Kungfu Panda” and “How to Train You Dragon” marks based on the client’s prior rights.  The Beijing   IP Court and Beijing High Court ruled in the client’s favor and recognized movie titles enjoy the right of merchandising over goods and services that are usually derivative from movies in the industry.

In these cases, the courts are of view that, the “Prior Rights” provided under Article 31 of the PRC Trademark Law (the old law) shall include civil rights and interests according to the general provisions of the PRC General Principles of Civil Law and other laws.  Even though the merchandising right is not expressly provided by written laws, because the commercial use of the famous animation movie titles “Kungfu Panda” and “How to Train Your Dragon” in Chinese characters on specific goods or services will bring commercial value and trading opportunities, such movie titles and band name deserve protection as civil rights and interests.  The protection encourages creative passion and property investment in intellectual achievements.  The courts especially considered two factors in determining the protective scope of “prior rights”: (i) the distinctiveness and degree of fame of the prior rights in which protection is sought; and (ii) the likelihood of confusion.

These cases indicated China’s official recognition of merchandising rights and were named as two of the“62 Representative IP Cases” on the second anniversary of the establishment of the Beijing IP Court.

DreamWorks Animation v. Trademark Review and Adjudication Board, Supreme People’s Court (2016).