Comcast wins TM dispute based on trade name and copyright

Comcast Corporation (Comcast) is the biggest cable operator and internet service provider in the US. In actual use, its name is displayed with a capital letter C in red color added to the word (see its logo 1).

Comcast did not register its name as a trademark in China for the reason that, according to the Foreign Investment Industrial Guidance Catalogue, which was released in 1995 by the National Development and Reform Commission and has been regularly updated, “telecommunications” and “internet related services” are among the business activities that are prohibited to foreigners. Therefore, Comcast, as a trademark and a trade name, has been used and promoted in a quite different manner compared with many other trademarks.

On 9 September 2010, a Chinese company filed for the registration of logo 2 as a trademark (the disputed trademark), designating goods in class 9: “computer peripheral device, fibre optic cable, cable, telephone wire, network communication equipment”. The trademark was approved on 28 September 2011. In its business promotion, the Chinese company even claimed that Comcast was one of its shareholders.

On 28 September 2016, Comcast filed an invalidation action against the disputed trademark before the Trademark Review and Adjudication Board (TRAB), claiming that, even not registered, the word Comcast had acquired a certain influence in China and the disputed trademark had been filed in bad faith.

However, Comcast was not able to justify any prior use of the trademark or any reputation in China. It is not surprising, therefore, that the TRAB dismissed, on 26 October 2017, the invalidation application and maintained the registration of the disputed trademark. Comcast appealed before the Beijing Intellectual Property Court, focusing on other “prior rights” (Article 31 of the 2001 version of the Trademark Law), namely, its trade name right “Comcast” and its copyright attached to the specific representation of its name.

Regarding the trade name, Comcast submitted evidence showing that extensive media coverage in Chinese periodicals and magazines had acquainted the relevant public in China with the name Comcast, even though Comcast was not directly engaged in providing “cable TV programmes, video-on-demand and hi-definition TV services or internet services” in China.

Comcast argued that the designated goods of the disputed trademark “cable, telephone wire and network communication equipment” are similar to Comcast’s “cable TV and communication network” services, which have attained a certain visibility among Chinese consumers, due to their close association and shared purpose, usage and consumers.

The Beijing IP Court was satisfied that the public in China is likely to associate the name Comcast with the American company, and not with the Chinese company. Besides, the false promotion, claiming that Comcast was one of its shareholders, obviously backlashed against the trademark registrant.

Regarding the copyright claim, Comcast needed to convince the Court that the specific representation of its name is sufficiently aesthetic and original to deserve copyright protection, and that it is the owner of the copyright.

In its judgment, the Beijing IP Court described the logo 1 and stated that the word “comcast” is combined with a red semicircle encircling the first letter of the word. Notwithstanding the simplicity of the design, the combination is original. In particular, the layout of the red semicircle provides “eye-catching, unique and simple” artistic features, reaching the threshold of originality for copyright protection.