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2 May, 2017
The Hong Kong International Arbitration Center (“HKIAC”) has recently issued its final award in the trademark litigation saga surrounding “The Voice of China” – which we first discussed here. This case is high-profile and interesting, because it involves parallel arbitral and judicial procedures (including a rare preliminary injunction) about the ownership of the rights in the “The Voice of China” TV format.
In summary, the case involves Talpa (the Dutch global licensor of the format), Canxing (the former Chinese licensee of the format, who refused a license renewal because of a price hike), Zhejiang Satellite TV (Canxing’s broadcasting partner) and Tangde (the new Chinese licensee of the format). After Canxing’s negotiations with Talpa failed, Canxing and Zhejiang Satellite TV decided to broadcast their own, arguably similar, format, which was rebranded to “中国新歌声” (“New Singing of China”), after an injunction by the Beijing IP Court (for more details see here).
The latest development in this dispute is that the HKIAC has now ruled that the Dutch media company Talpa owns the IP rights in the format, including:
- The name rights, including “The Voice of China“, the equivalent Chinese characters “中国好声音” and its Chinese Pinyin version “Zhong Guo Hao Sheng Yin”;
- A number of Chinese trademarks registered/used by the broadcasting platform and its affiliate companies;
- The sound and video materials;
- The format’s social media accounts and app; and
- The domain name http://www.chvoice.com/.
In its award, the HKIAC rules that the format and the mark “The Voice of China” are exclusively licensed to Tangde, and that Canxing and Zhejiang Satellite TV do not have any rights in the format or trademark.
Has the dust settled?
Not yet. Although the HKIAC’s award regarding the ownership of the “The Voice of China” IP rights is final, four main issues remain to be resolved in the parallel judicial procedures before the Chinese courts:
1- Is the award enforceable?
In line with international practice, an arbitral award is only legally binding on the involved parties and needs to go through a recognition/enforcement procedure in China. Canxing could therefore still invoke e.g. procedural or public policy grounds to have the award rejected by the courts.
2- Did the HKIAC overstep its bounds?
The HKIAC’s ruling awarded to Talpa not only the IPR contested between Talpa and Canxing, but also IPR owned by third parties, such as Zhejiang Satellite TV’s rights in the programme name “中国好声音”. Since Zhejiang Satellite TV wasn’t directly involved in the arbitration (or license agreement) between Canxing and Talpa, it could be argued that the arbitral tribunal overstepped its bounds by issuing an award regarding rights that aren’t owned by the parties to the arbitration.
3- Will Canxing’s new TV format “中国新歌声” (“New Singing of China”) infringe upon Talpa’s The Voice of China-format?
Probably the most important question is whether Canxing’s new TV format will be held to infringe upon the “The Voice of China” format. Whether formats are protectable per se is currently a highly debated legal grey area. Under the copyright law, the test comes down to the ‘idea-expression dichotomy’: only the concrete expression of ideas (i.e. concrete scripts, scenarios, music, etc.) is protectable, while the idea/creativity behind them is not protectable.
Whether Canxing’s new format infringes on Talpa’s The Voice of China will therefore remain a highly contested issue that will be resolved by the Beijing IP Court.
4- Trademark invalidation procedures against Zhejiang Satellite TV’s Chinese trademarks
Finally, according to the most recent news reports, the Trademark Review and Adjudication Board (“TRAB”) has recently also invalidated Zhejiang Satellite TV’s Chinese trademarks for the Voice of China (“好声音”) – on the basis of bad faith – stating that the TV station knew, or should have known about the license agreement with Talpa. Meanwhile, an appeal was filed against this decision before the Beijing IP Court.
Conclusion
The “The Voice of China” case is a high-profile case that is closely followed by the IP community in China: not only does it clarify how and when the IP courts are willing to issue a preliminary injunction, but the case also involves complex legal issues regarding parallel arbitration and the protection of TV formats. These issues are of enormous importance to the rapidly expanding Chinese entertainment industry. We will continue to follow this case closely, and will keep you posted as further developments arise.
