Xiaomi vs HM (Beijing) Laser & Nc Development Co., Ltd (“HM Ltd”)

Case overview
In the recent invalidity decision, the proprietor was HM Laser, a manufacturer of laser cutting machines. The Applicant was Xiaomi, the renowned Chinese electronic manufacturer.

The Applicant challenged the following registration: UK Trade Mark No. 918284608 for HM LASER DEVICE in Classes 7 and 9:

They relied on a number of trade mark registrations for their MI DEVICE which covered a number of identical/similar goods in Classes 8, 9, 35, 42:

The legal tests needed to be successful under likelihood of confusion, reputation, passing off and bad faith were not met, and so the Applicant failed under these trade mark grounds.

However, they also relied on the copyright that subsists in the MI DEVICE and were successful.

What is needed to be successful under the copyright grounds?
As set out in this decision, if you are relying on copyright in proceedings, the two overarching tests that need to be satisfied are:

• Test No. 1: Is there a “work” which is capable of being protected by copyright?
• Test No. 2: Has the work been copied? As the name “copyright” suggests, a work is not infringed by an independent design that is coincidentally similar. It must be shown that the similarity results from copying.

Test No. 1 – What is a work?

In order to determine whether there is an earlier copyright work, two of the key questions that need to be considered are as follows:

• Is the mark a “work” under the Copyright, Designs and Patents Act 1988 (“CDPA”)? For something to be capable of being protected by copyright, it must fall under the LDMA umbrella (literary, dramatic, music, artistic works), as specified in the legislation. In this case, the answer was, yes, as the image is an artistic work, specifically a “graphic work”.
• Was the work created by the owner in a place that qualifies for copyright protection? In this case, the answer was yes, the owner is Xiaomi and they created/published the work in China. This was evidenced by the fact that the logo was registered for copyright protection at the China Copyright Centre (in China) in 2010.

Unlike trade marks, copyright protection is not bound by country borders. If a copyright work is published in a country that is party to “the Berne convention”, then that copyright protection is recognised/enforceable in other countries that are also members. China and the UK have both signed up to the Berne Convention and so the copyright work that was published in China could be enforced in the UK.

Test No. 2 – How can we show a work has been copied?

There are two key subtests which need to be satisfied under this question:

• What constitutes the whole/substantial part of the original work? Here, the whole of the work clearly wasn’t copied, and so the Hearing Officer needed to work out if a “substantial” part had instead been copied. In this case, it was decided that the stylised M element constituted a substantial part within the earlier work. This was on the basis that the configuration of lines were striking and stylised enough that they formed the part of the work that the author has contributed, “knowledge, labour, skill” to, i.e. the part where they’ve applied effort.

• Has the whole/substantial part of the work been copied? In an ideal world, the best way to meet this test is to show direct evidence that someone has purposefully copied the whole/substantial part of the work. This type of evidence is of course difficult to find and so parties instead usually give the Hearing Office evidence to infer that there has been copying. In order to show this, it needs to be demonstrated that: (1) the defendant knew about or had access to the work, (2) the works are so similar/identical that they must have been copied, and this can’t be explained in some other way.

Here, it was decided that (1) the Proprietor likely had access to the work, relying on the fact that the evidence showed Xiaomi have been highly successful in China, a country that the proprietor is established, and (2) the M in the original work was highly similar to the M in later mark and so “the similarities between the stylised letters “M” are more likely to be the result of copying than coincidence”.

Different assessments of similarity
The key point to be taken from this case is that even though the respective marks weren’t similar enough to for Xiaomi to succeed in a case based on likelihood of confusion, copyright afforded Xiaomi a helpful alternative option for enforcing its rights . For ease of reference, I set out a table which shows the different ways in which the rights were compared under the separate grounds:

Grounds	Comparison	Visual similarity finding
Likelihood of confusion – S.5(2)(b)	Earlier trade mark: vs Contested mark:	“The marks are visually similar to a low degree”.
Earlier copyright – S.5(4)(b)	Earlier Copyright Vs Contested mark:	“In my view, the similarities between the stylised “M” letters are more likely to be the result of copying than coincidence”.

Conclusions
The judgement demonstrates that, under the comparison of trade marks, the assessment of similarity between the dominant/distinctive elements is always in reference to the overall impression of both marks, i.e. other elements such as words, images, position within the mark etc.

However, the judgement also highlights that comparison between copyrighted works (where applicable) and trademarks is different as it is not necessary to assess the overall impression of the later mark in its entirety. It is only necessary to identify the features that have been allegedly copied, and then compare that to the original work (or a substantial part of that work).

Narrowing down the area of comparison can therefore mean it is easier to claim similarity by relying on copyright works, rather than earlier trade marks, which would have to compare the marks as a whole.

Our leading trade marks team regularly advise on UK oppositions. An introduction to our trade mark practice can be found here.