The Intellectual Property Court recently rejected an appeal by Ethan Liu (劉順龍), the creator of the Onion Head (洋蔥頭) character, to revoke a Hong Kong office’s registration of the character as a trademark, saying Liu had failed to prove that the registration was legally unsound.
The Onion Head character first appeared in the popular blog Onion Club in September 2005, and was later used as an MSN emoticon.
Liu said he had signed a contract with the Taiwanese office of the Hong Kong-based Full Tone Image (豐朵圖像) to act as his agent dealing with licensing for peripheral products tied to the Onion Head character.
However, the company’s Hong Kong office later applied to register rights to all contractual and commercial dealings he had had with the Taiwan office, as well as the rights to the trademark, without obtaining his prior consent, he said.
Full Tone Image applied and was granted approval to have the character registered as a trademark in 2008.
Liu later filed an administrative lawsuit after his applications to have the Hong Kong office’s trademark registration invalidated were rejected.
The Intellectual Property Office (IPO) said the Hong Kong office would only have been able to register the rights if it was able to produce documentation at the time it submitted the application establishing the fact that Liu’s consent had been granted. Furthermore, Liu had failed to produce any evidence recognized by the courts that Full Tone Hong Kong had violated his artistic rights.
Liu said he only consented to have Full Tone register the trademark in its Taiwan office and that he never agreed to have the trademark registered in the name of the Hong Kong office.
The collegiate bench of the Intellectual Property Court said unless Liu could prove that documents detailing his consent had been forged, all the IPO could do was to review the documents themselves and rule on any licenses already granted.
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