China’s Beijing Intellectual Property Court in April ruled in favor of Chinese licensing company Shanghai Character License Administrative Co., Ltd. (SCLA) (上海新创华文化发展有限公司), a licensed manager and operator of the intellectual property rights of Japanese special effects studio Tsuburaya Productions, in a trademark infringement lawsuit lodged by it against Chinese consumer products company Shenzhen Hongyun Technology Co., Ltd. (深圳宏韵科技有限公司) over Tsuburaya Productions’s asset Ultraman, ordering Hongyun to pay 800,000 yuan ($120,000) in damages.
Established in 2002, SCLA is a Shanghai municipality-based specialized intellectual property rights licensing agency for many well-known Japanese animated and live-action shows such as Ultraman, Detective Conan, and Neon Genesis Evangelion. Ultraman, also known as the Ultra Series, is the collective name for all media produced by Tsuburaya Productions featuring the character Ultraman. Debuting in 1966, the Ultra Series is one of the most prominent live-action superhero genre productions from Japan. Ultraman has been among the world’s top-selling licensed characters since the 1980s. SCLA in 2004 became the exclusive licensee of the Ultra Series in mainland China, managing and operating the asset’s all IPRs.
Tsuburaya Productions registered Ultraman’s Chinese-language name “奥特曼” as Chinese Trademark No. 14183617 for goods and services in Class 28 including mainly toys, apparatus for playing games, sports equipment, amusement and novelty items, etc. In 2015 and Chinese Trademark No. 21074260 for goods and services in Class 9 including apparatus and instruments for scientific or research purposes, etc. in 2017.
SCLA sued Hongyun in the Beijing Intellectual Property Court in 2021 for manufacturing and distributing a model of children’s electric toothpastes utilizing the two Chinese-language Ultraman trademarks without authorization and falsely advertising this said model as a co-branded one officially licensed by Ultraman’s owner in text and audiovisual images explicitly and implicitly. The court ruled for SCLA and awarded it 800,000 yuan ($120,000) in damages. And the court also recognized the two infringed trademarks as Well-Known Trademarks. Hongyun has appealed the case, which is currently pending.
There are two avenues to obtain well-known trademark protection in China: administrative procedures and judicial procedures. As an administrative avenue, the Trademark Review and Adjudication Board (TRAB) can recognize well-known trademarks in trademark opposition and cancellation proceedings. As a judicial avenue, Chinese high people's courts at the level of the provinces, autonomous regions, and special municipalities can recognize well-known trademarks in trademark infringement lawsuits.
Once a trademark is recognized as well-known in China, its protection scope would cover the following: to prevent bad faith registration and others from using the unregistered mark for the same goods or services; to prevent others from applying for or registering a trademark identical to it in respect of non-similar goods or services; to prevent others from registering it as a business name; to prevent others from registering it as a domain name; to have a better chance of acquiring satisfactory compensation.
The case docket no. is （2021）京73民初437号, whose English transliteration is 437, first instance (初), civil case (民), (2021) Beijing Intellectual Property Court.
