Beijing IP Court Granted the First Preliminary Injunction over “The Voice of China” --Insights into Chinese Preliminary Injunction Practice

On July 4, 2016, Beijing Intellectual Property Court upheld its injunction to stop Shanghai Global Star China Media Co. Ltd. (“Star”) from using the Chinese name of the popular TV talent show “The Voice of China,” which injunction was originally issued on June 20. This case appears to be the first preliminary injunction (also called pre-litigation act preservation) that a Chinese IP court, since establishment at the end of 2014, has ever granted so far.

While other outstanding issues are still pending before the Court, this verdict dealt mainly the issue of preliminary injunctive relief and applicable standards, in particular the requirement of the likelihood of success on the merits. We brief the verdict in this short article, together with our attorney’s insights into the preliminary injunction practice in Chin

The Voice of China July 1, 2001 set up a system of preliminary act Shanghai-based Star, the previous partner of the preservation for the first time, and the Trademark Law original series creator and rights owner of The Voice, and the Copyright Law as amended subsequently also Talpa Global (“Talpa”), has produced the TV talent introduced the principle in succession. These laws show “The Voice of China” for seasons 1-4. As the generally provided a relief of pre-litigation act partnership between Star and Talpa soured, Talpa preservation, but do not specify the standards for authorized Zhejiang-based Talent International Film judicial examination. Co., Ltd. (“Talent”) to produce seasons 5-8. Afterwards, the Supreme People's Court Viewing Star in the preparation of the fifth intensively issued a series of judicial interpretations,1 season of the show, Talent filed a complaint against which mainly further refined the specific measures, Star before Beijing Intellectual Property Court seeking steps, procedures etc., and did not put forward more injunctive relief and monetary damages of RMB 510 specific substantive examination standards. On April million on the grounds including infringement of 21, 2009, in view of 8-year juridical practice, the registered trademarks Nos. G1098388 and G1089326 Supreme People's Court provided more detailed (top two trademarks in the Figure), infringement of internal guidelines for applicable basics of intellectual unregistered well-known trademark and engagement property preliminary injunctions and proposed several into unfair competition, by using “The Voice of China” standards on preliminary injunction examination. See names (bottom two symbols in the Figure). Article 14, Opinions of the Supreme People’s Court on Several Issues Concerning Intellectual Property Trials Serving the Overall Objective Under the Current Economic Situation. Specifically, it put forward “ceasing infringements before the litigation is mainly applicable to cases in which there exist clear facts and infringements are easy to be determined, and moderately strictly grasp the standards for identifying the possibilities of infringements and shall reach a degree of basic assurance,” (emphasis added), i.e. proposing that preliminary injunctions shall be granted to the cases in which the possibilities of

1 Including Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Copyright Disputes over Computer Network implemented on December 21, 2000, Provisions of the Supreme People’s Court on Several Issues Concerning the Application of Law to Pre-litigation Injunctions to Cease Patent Infringements implemented on July 1, The Legal Principle and Past Court Practice 2001, Interpretation of the Supreme People’s Court on Issues Under the traditional principles of equity, Concerning the Application of Law to Pre-litigation Injunctions to Chinese laws codify the principle of preliminary Cease Infringing to the Rights to Exclusive Use of Registered injunctions. Article 61 of the Chinese Patent Law Trademarks implemented on January 22, 2002 and Interpretation of the Supreme People’s Court on Several Issues Concerning the amended on August 25, 2000 and implemented on Application of Law in the Trial of Cases involving Copyright Civil Disputes implemented on October 27, 2002. infringements are easy to be determined, and the decided; and standard needs to be grasped strictly and the The dispute here related to the program mark I, the standard of basic assurance shall be reached. In other mark consisting of Chinese words “中国好声音” (“The words, it proposed the idea of the likelihood of Voice of China”) and a vehicle of V-shaped hand success on the merits, and provided very strict holding a microphone, and the program mark II, the examination standards for this. mark consisting of words of Chinese “中国好声音” and English “The Voice of China,” and the Court Given the strict standards, Beijing Second concerned about the registerability of the marks Intermediate People’s Court reported on April 25, including the word “China.” 2014 that during the past ten (10) years, the Court only tried twenty (20) intellectual property act c. given the well-known show name of “The Voice preservation cases, including nineteen (19) of China” and Talpa’s ownership of the show name, preliminary injunctions and one (1) interlocutory an unfair competition by Star would likely be found. injunction, where there were thirteen (13) cases Firstly, it had a higher possibility that “中国好声音” involving trademark rights, five (5) cases involving and “The Voice of China” were identified to be patent rights and two (2) cases involving copyrights. well-known service held names in services of TV From the results of trials, there were five (5) cases entertainment programs and the production thereof. withdrawn, five (5) cases granted and ten (10) cases Secondly, according to the licence agreements on the rejected. production and broadcasting of “The Voice of China” in seasons 1-4 between the Talpa and the relevant On February 26, 2015, the Supreme People’s companies, it was higher possibility that Talpa owned Court published Interpretation of the Supreme the rights and interests of the program names “中国 People’s Court on Several Issues Concerning the 好声音” and “The Voice of China.” Thirdly, both Application of Law in the Examination of Act companies Star and Talent might produce programs Preservation Cases Involving Intellectual Property and using “中国好声音” and “2016 中国好声音” as Competition Disputes (Draft for Discussion, “Draft program names, and during marketing, promotion, Judicial Interpretation”) for public opinions. Article 7 mass-audition and advertisement sales, etc. of the Draft Judicial Interpretation details the basics of establishing grounds for granting an act preservation In the Court review procedure, the dispute of the (injunction), including: case focused on the above-unfair competition claim (i) Whether the applicant seeking an injunction is regarding the show name “中国好声音” (“The Voice likely to succeed on the merits, including whether the of China”). In respect of the issues of both parties, the owned intellectual property rights are stable and review verdict firstly construed the first requirement valid; of the likelihood of success on merits specified by (ii) Whether the applicant seeking an injunction is Article 7 of the Draft Judicial Interpretation, supra: likely to suffer irreparable harm to his legitimate “the alleged likelihood of success on the merits is rights and interests; a judgment of the possibility made by the court (iii) Whether the balance of the harm to the according to the existing evidences in combination applicant seeking an injunction and the harm to the with the features of procedural provisional measures, respondent tips in favor of granting; and which is obviously different from the affirmation of (iv) Whether an injunction is against the public certainty after a substantive trial. Therefore, at the interest. examination stage of the pre-litigation act preservation application, the likelihood of success on The Injunction Granted and Court the merits does not necessarily exclude the possibility Considerations of losing the lawsuit for the preservation applicant or In this “The Voice of China” case, Beijing winning the lawsuit for the preservation respondent.” Intellectual Property Court applied the criteria specified by Article 7 of the Draft Judicial On the basis of this, the Court examined several Interpretation, supra, and in particular examined the factual bases affecting the winning possibility: first requirement of the likelihood of success on the a. Such five Chinese characters as “中国好声音” merits. neither was a registered trademark in China, nor was identified to be “a well-known service held name” In the original verdict dated June 20, 2016, the through any legal procedures (the legal basis of a case Court mainly examined the likelihood of infringement involving unfair competition). For this, the court and concluded that: asserted “according to the documents submitted by a. the infringement of exclusive rights of registered Talent, it is highly possible that Chinese program trademarks No. G1098388 and No. G1089326 would name of “中国好声音” would be able to be identified likely be found; as a well-known service held name in services of TV entertainment programs and the production thereof”. b. as the well-known trademark status cannot be determined, the infringement of unregistered b. The popularity of “中国好声音” was formed by well-known trademarks would not be able to be integrating the multiple efforts therein. In respect of

whether licensor Talpa was entitled to the lawful licensee, and said case was being arbitrated in the rights and interests of “中国好声音”, the Court Hong Kong Arbitration Court. For this, the court asserted “it can be determined according to the asserted “the final right announcement decision existing evidences that such a program as “中国好声 made by the Hong Kong Arbitration Court in the 音” was initially derived from Talpa’s authorization on verdict, the treatment of the temporary measurement the related program pattern, i.e. such a program application filed by Talpa and the adjustments which name as “中国好声音” is directed at a program may be made by the Hong Kong High Court according having a specific pattern, and the generation of the to the temporary injunction made by the Hong Kong rights and interests of said program name originates Arbitration Court in the verdict do not necessarily from the operating behaviors of Talpa. Therefore, affect the court’s judgment on whether the upon the authorization, Talent may be entitled to the pre-litigation act preservation measure is adopted and prior rights and interests of such a program name as the implementation thereof. Furthermore, at present, “中国好声音””. the Hong Kong High Court does not make a conclusive affirmation on the contract agreed attribution of c. An outsider, Zhejiang TV, alleged that “中国好声 Chinese program name “中国好声音” in the verdict, 音” was a program name on which it got an approval either. Therefore, it cannot be procedurally excluded for the registration from the State Administration of either that the Zhejiang Talent company has the right Radio, Film, and Television, and it legally held the “好 to file a pre-litigation act preservation application in 声音” trademark. For this, the Court asserted “firstly, this case”. the original verdict does not involve a certain Accordingly, Beijing Intellectual Property Court determination of the attribution of said rights and conducted a beneficial exploration on the standard for interests. The determination of the final attribution of the examination of the first requirement of the the rights and interests of Chinese program name “中 likelihood of success on merits specified by Article VII 国好声音” falls into the contents of the substantive of the Draft Judicial Interpretation, systematically put trial in the subsequent infringement litigation, rather forward the contents and standards for the injunction than the scope determined by the examination examination in the present case, and set an example procedures for the pre-litigation act preservation in combination with the facts of the case. application in this case. Secondly, based on the Our Comments current reality that the production of a broadcasting It should be noted that issues remain in this case and TV program is separated from the broadcasting regarding whether “中国好声音” can be used as a thereof, for the careful consideration, the court has well-known held name, whether the applicant is requested the Shanghai Shimmering Stars company entitled to the lawful rights and interests, how the for many times to submit the relevant agreement held names and the trademarks of the plaintiff and the and signed with Zhejiang TV. Based on the declaration outsider Zhejiang TV get along if the rights and of the Shanghai Shimmering Stars company, the interests of the plaintiff are determined, whether the submission of said agreement may be favorable to the relationship between the Court’s injunction finding out of its declared facts, but it never procedures and the effective arbitration agreements submitted the same. Furthermore, Zhejiang TV also merely stays at the parties concerned as indicated in only submitted a written statement and failed to the case without the consideration of the true facts of submit any other corresponding documents. Thirdly, the case, etc. In view of these, the standard for the the present case does not exclude the possibility that first requirement of the likelihood of success on Zhejiang TV would eventually own the rights and merits applied by Beijing Intellectual Property Court in interests of Chinese program name “中国好声音”. this case seems to be lower than that announced by However, the administrative regulations of the State Beijing Second Intermediate People’s Court in the Administration of Press, Publication, Radio, Film, and previous cases. In the wording of the verdict, the Television (i.e. the SARFT) on Television Stations and word “possibility” also occurred for many times. the recordation of TV program names are not the only basis for determining the attribution of civil rights and In short, the determination of likelihood may interests”. vary among courts, and more detailed judicial guidance would be expected. Careful review of the d. In respect of the right attribution of “中国好声 trends in the future is critical for both plaintiffs and 音”, the licensor Talpa agreed effective arbitration defendants. clauses in the license contract with the previous

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Yan HONG, J.S.D (Partner, Attorney-at-Law, Patent Attorney): [email protected]