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11 September 2016
The Beijing IP Court recently issued a widely discussed preliminary injunction against Canxing (上海灿星文化传播有限公司) in a trademark dispute about the name of a famous TV program “the Voice of China”/”中国好声音”. In its first preliminary injunction since its establishment in December 2014, the Beijing IP Court ordered Canxing to immediately cease the use of the name “the Voice of China” and “中国好声音” for its TV program. This preliminary injunction indicates a welcoming trend that the IP Courts are prepared to grant preliminary injunctions to avoid or mitigate irreparable harm caused by IP infringement in the entertainment and IT industries (see a summary of the injunction in the Blizzard case -which our firm handled- here).
Factual background
The Dutch media company Talpa owns the IP rights in “The Voice”, an internationally famous singing competition franchise. In July 2012, Talpa licensed the program to Canxing, and authorized it to produce several seasons of the program “The Voice of China”. Canxing produced seasons 1-4 of “The Voice of China” (“中国好声音”), which turned out to be an enormous hit in China. However, on 8 January 2016, Talpa terminated the license to Canxing over a dispute about royalty fees, and instead decided to grant an exclusive license to another company, Tangde (“浙江唐德影视股份有限公司”). Despite the termination and new license, Canxing started producing a new series and called it “The Voice of China; Season 5”, later on changing its name to “2016 The Voice of China” (“2016中国好声音”), which was scheduled to be broadcasted via Zhejiang Satellite TV Station in July 2016.
History of Proceedings: Hong Kong arbitration vs. Beijing litigation
On 22 January 2016, Talpa applied for a preliminary arbitral award against Canxing’s affiliate, STAR Group Limited, before the Hong Kong International Arbitration Center (“HKIAC”). Talpa requested an order to cease the production and broadcasting of the program “The Voice of China; Season 5”, citing the license agreement between the parties.
However, the HKIAC dismissed Talpa’s application with respect to the program name in Chinese “中国好声音”. The HKIAC held that this Chinese mark (as opposed to the English mark) was not registered by Talpa, but by Zhejiang Satellite TV.
At the about the same time (end of June), Tangde, Talpa’s new licensee, filed a request for a preliminary injunction as well as a lawsuit on the merits before the Beijing IP Court against Canxing, claiming RMB 510m in damages arising from Canxing’s trademark infringement and unfair competition.
The Beijing IP Court granted the preliminary injunction, ordering Canxing to cease the use of both the “The Voice of China” and the “中国好声音” marks. Canxing filed a request for review of this decision, which was finally rejected in July.
The Beijing IP Court’s reasoning
The Beijing IP Court issued the preliminary injunction against Canxing based on the following reasons:
1- Likelihood of winning on merits
The Court held that the evidence produced by Tangde made it clear that the program names “The Voice of China” and “中国好声音” would, in a procedure on the merits, very likely be recognized as the unique name of the famous TV format, and that Talpa had granted Tangde an exclusive license to the IP rights in that program. The Court also held that the program name “中国好声音” clearly referred to the TV format covered by Talpa’s license and that Talpa seemed to own the rights in that program, including its Chinese name. Given these considerations, the court held that it was likely that Tangde had an overriding interest in the program name “中国好声音”.
2- The HKIAC’s refusal to issue an award regarding the Chinese name has no impact upon the court proceedings.
Turning to the HKIAC’s refusal to issue an award regarding the Chinese name, the Court held that although it couldn’t rule out the possibility that Zhejiang Satellite TV owned the rights to the Chinese name, the evidence produced before the Court showed that Tangde had sufficiently stable rights in the name. The Court held that this was adequate in preliminary injunction proceedings.
3- Urgency of the injunction
The Court held that allowing a similar singing competition to be broadcasted under the name “中国好声音” would deprive Tangde of its competitive advantage in its subsequent production of the same type of program. Moreover, given the enormous fame and popularity, wide distribution and important participation of advertisers and the media in the production, the dissemination of the program would exacerbate Tangde’s losses, and deprive it from an effective remedy. Therefore, taking into account the evidence that Zhejiang Satellite TV wanted to broadcast the Canxing-produced program, the Court held that the urgency requirement was met.
4- Balance of interests
Turning to the balance of interests, the Court held that the preliminary injunction would not impact the production and broadcasting of Canxing’s program under a different name, and that the losses caused to Canxing were predictable. However, on the other hand, if Canxing’s program were to be broadcasted as “2016 The Voice of China”, it would cause incalculable losses to Tangde.
5- Public interest
Canxing argued that the preliminary injunction would harm the interests of Zhejiang Satellite TV Channel and the singers participating in the program. The Court rejected this argument, ruling these are not public interests, and that Canxing produced no evidence to show that the preliminary injunction would harm any public interests.
Conclusions
Following the Beijing IP Court’s preliminary injunction (and the rejection of the review request), Canxing’s program finally aired on 15 July 2016 through Zhejiang Satellite TV under a different name, “中国新歌声” (“New Singing of China”). Meanwhile, the procedure on the merits remains pending.
It is welcoming to see that the Chinese IP Courts appear to be increasingly receptive to granting preliminary injunctions (see a summary of the injunction in the Blizzard case -which our firm handled- here).
