In practice, it is very common for other’s prior rights to be preempted by trademark squartters.   In many cases, others' works of art with copyright are registered as trademarks.  In this kind of case, the copyright owner or interested party can stop it by claiming their prior copyright through the trademark opposition or invalidation procedure.  In this paper, the author mainly analyzes the application of copyright claim in trademark opposition and invalidation actions through several cases.

The first half of Article 32 of China Trademark Law states that “application for trademark registration shall not damage the existing prior rights of others’.  Copyright belongs to one of the "prior rights" stipulated in Article 32 of China Trademark Law.

Without the permission of the copyright owner, an application for registration of a trademark for a works in which another person has copyright shall be deemed as damage to the prior copyright of the other person, and the trademark in dispute shall not be approved for registration or shall be declared invalid. The applicable requirements are as follows:

(1) Others have already enjoyed the copyright before the filing date of the disputed trademark;

(2) The disputed trademark is the same or substantially similar to the work in which others enjoyed prior copyright.

(3) It is possible for the applicant for the registration of a disputed trademark to access to the other person’s copyright works;

(4) The applicant for trademark registration has not obtained the permission from the copyright owner.

The above applicable elements will be discussed in turn through cases.

1.  Before the filing date of the disputed trademark, others have already enjoyed the copyright

Prior ownership of copyright means that before the filing date of the disputed trademark, another person has obtained the copyright by creating a finished work or by inheritance or transfer.  "Work" refers to the object protected by China Copyright Law.

Although the regulations for the implementation of the copyright law stipulates that only the labor achievements with originality can become the works in the sense of copyright law, there is no provision for the height of originality.  Due to the lack of definition of originality in legislation, the judgment scale in administrative and judicial practice cannot be unified.

In “” trademark invalidation case, the China National Intellectual Property Administration (hereinafter refer to “CNIPA”) held that “the applicant’s graphic work “” is a handwritten for “POMELLATO”, which was created on October 3, 1967, and was published for first time on October 4, 1967 in Milan, Italy.  The text has some originality in writing style and special forms of expression, and has become a work of art in the sense of copyright law.”

But in the case " of administrative litigation of trademark invalidation, Beijing Intellectual Property Court held that "the logo ‘ for which the plaintiff claims prior copyright is only composed of four printed Latin letters, it can not reach the height of writing works in terms of words, and the font itself does not constitute art works. Therefore, the logo for which the plaintiff claimed copyright does not constitute a work in the sense of copyright law, and the application for registration of the trademark in dispute does not infringe the prior copyright of the plaintiff. ”

In the case of opposition or invalidation, even if the copyright owner or the interested party submits the copyright registration certificate, the examiner will still examine whether the claimed works constitute works under Copyright Law and whether the registered subject is the copyright owner.  This is because the Chinese Copyright Registration Authority only conducts formal examination rather than substantive examination in the process of copyright registration.

The fact that the prior copyright is enjoyed can be proved by the following evidence materials: the evidence materials for the creation and completion of the work, and the evidence materials for the prior acquisition of the copyright through inheritance, transfer, etc., the copyright registration certificate in any country and area, the evidence materials for the prior public publication of the work around the world (preferable in China), etc.  The trademark registration certificate or the copyright registration certificate registered later than the filing date of the disputed trademark, alone, shall not be used as the strong evidence for the establishment of the copyright .

In the trademark opposition case, a third party filed trademark application for registration for  over the goods “clothing, shoes, hats, socks, ties.”   Carrefour SA, a world-famous supermarket operator, filed opposition against the mark based on its  prior copyright for works of art    After examination, the CNIPA held that “evidence such as trademark registration information provided by the opponent, publicity pages for participating in public welfare activities, copies of audit reports of some cities, invoices for advertising expenses and posters, copies of copyright transfer agreement and its Chinese translation, and copyright registration certificate issued by the French State Industrial Property Office can prove that before the filing date of the disputed mark, the opponent  has published its work and enjoy copyright.  The opposed trademark is highly similar to the opponent’s work in terms of design conception, expression method and overall visual effect, which has constituted substantial similarity.  Further, the opposing party does not submit evidence to prove that the opposed trademark is an independent creation. Therefore, the application for registration of the opposed trademark has constituted an infringement of the prior copyright of the opponent.”

In the above-mentioned case, the opponent, Carrefour SA submitted the assignment of art work from the original copyright owner as early as before the application date of the opposed trademark, the copyright registration certificate of the art work issued by the French State Industrial Property Office, and the materials that the opponent promoted and used the work as a trademark in China.   The CNIPA believes that the above materials are sufficient to prove that Carrefour SA has publicly published its art works before the application for registration of the opposed trademark and enjoyed copyright.

In practice, many enterprises do not pay attention to the preservation of the evidence of creation or assignment of works, such as design manuscript, assignment agreement, payment certificate, etc., and also do not apply for copyright registration, which leads to the failure to prove that they have enjoyed the copyright prior to the application for registration of disputed trademarks in the case of opposition and invalidity.  Only providing the trademark registration certificate registered with the works cannot prove that they enjoy the prior copyright.

2. The disputed trademark is the same or substantially similar to the work of others who previously enjoyed the copyright

The examination criteria for judging whether two works are substantially similar are different from those for judging whether two trademarks are similar. “Trademark similarity” means that compared with the prior trademark, the applied trademark has similar font, pronunciation, meaning or the composition and color of graphics, or the overall structure after the combination of all elements, or its three-dimensional shape and color combination, it is easy to cause the relevant public to misidentify the origin of the goods or to think that the goods derived from the prior trademark owner or that there are certain connection between the parties.  The substantial similarity of “works” should be based on the protection of others’ works to see whether the later works reproduce the whole of the earlier works or the parts with original expression (main characteristics).

In the case of trademark invalidation against , the CNIPA held that “even if the applicant, PUMA SE submitted copyright registration certificate for its works “, and the copyright license agreement, the disputed trademark does not substantially similar to the works as a whole claimed by PUMA, thus the claims that the disputed trademark infringes its prior copyright cannot be established.” 

After hearing the above case, the Beijing First Intermediate Court held that: “the significant identification part of the disputed trademark is quite different from the significant identification part of the cited trademark “, so it is not easy to cause confusion and misidentification among relevant consumers and therefore they do not constitute a similar trademark.   In addition, since the disputed trademark and the citation trademark do not constitute similar trademarks, it is unnecessary to consider the infringement of the copyright, and the decision made by the CNIPA is correct, which is supported by the court.”

PUMA appealed the above case to the Beijing High Court, insisting on the claim that the disputed trademark infringes its prior copyright.  The Beijing High Court held that: “the animal figure in the disputed trademark is basically the same as the works for which PUMA enjoyed prior copyright in terms of modeling features and visual effects.  So they constitute substantial similar, and registration of the disputed trademark damages the prior copyright of PUMA SE. The CNIPA’s decision that the disputed trademark as a whole does not constitute a substantial similarity to the works, and the registration of the disputed trademark does not damage the earlier copyright of PUMA SE is not correct.”

Obviously, in the above-mentioned invalidation decision and the first trial decision, the same judgment criteria are used to determine whether the disputed trademark and the cited trademark are similar to each other and whether the disputed trademark and the applicant’s works constitute substantial similarity, so the wrong decision was made.  In this case, the significant part of the disputed trademark should be the word part, because the word part is easier to identify and pronounce than the figure part, and the significant part of the cited trademark, namely the figure itself, may not be confused by the relevant public.  However, the graphic part of the disputed trademark obviously copies the works of which the applicant enjoys the prior copyright.  From the perspective of protecting the works of which the applicant enjoys the prior copyright, the two are substantially similar.

3. It is possible for the applicant for the registration of a disputed trademark to access to another person’s copyright works

If the copyright owner or interested party can provide evidence, such as contracts, invoices, photos and other evidences proving that the disputed trademark registrant has contacted the works in which the copyright owner previously enjoyed the copyright, then it can be directly recognized that the disputed trademark constitutes damage to others’ previous copyright, unless the disputed trademark registrant can prove that the disputed trademark is an independent creation completed or licensed by the copyright owner.

The situation of “direct contact” is not common in practice, but more “contact possibility”, which requires indirect evidence to infer. At this time, it is necessary to consider the publication and publicity of the works by the copyright owner or interested parties in mainland China, as well as the originality of the works, the similarity between the disputed trademarks and the works, etc comprehensive judgment is needed.

In the trademark opposition case against trademark “, the opposing party applied for the registration of this trademark on the goods “coffee, tea, beverage, sandwich, etc.” in Class 30.  The interested party of SHAKE SHACK, a well-known restaurant operator in the United States, SSE IP company filed opposition against the mark based on the prior copyright for “” enjoyed by SHAKE SHACK.  After examination, the CNIPA held that “the copyright registration certificate provided by the opponent and the use evidence of the works as trademark, such as the printed copy of the website information, relevant photos and media reports of the trademark can prove that works was created and published before the filing date of the opposed trademark, and it is widely used as trademark in the “restaurant” services operated by SHAKE SHACK.   Through the use and publicity, it has obtained certain popularity. The opposed trademark is substantially similar to the opponent’s art works, and the commodities designated by the opposed trademark are similar to those of the opponent’s business. Therefore, the opposed trademark has constituted an infringement of the prior copyright of the opponent.

In the above case, prior to the date of application of the disputed trademark, SHAKE SHACK has not opened restaurant in China, but because the restaurant is well-known online before the official opening of the restaurant in China, there are many Chinese media reports on it, which clearly showed its trademark and works.  Furthermore, the disputed trademark is basically the same as the works, and the registered goods are also related to the opponent’s business, so it can be concluded that the opposing party has the possibility of knowing the works before applying for the opposed trademark.

4. The applicant for trademark registration has not obtained the permission of the copyright owner

The disputed trademark applicant shall bear the burden of proof for the fact that he obtained the permission from the copyright owner.  According to the relevant provisions of China Copyright Law and its implementing regulations, the disputed trademark applicant shall prove that the copyright owner has made a direct and clear statement of intention to license his use of the works to apply for the registration of the trademark.  

Reference:

[1] Wang Qian, the sixth edition of the course of intellectual property law.

[2] No. 16626141 "Pomellato" trademark invalidation decision - ShangPingZi [2019] No. 45662.

[3] No. 15207770 "device" trademark opposition decision - (2017) Trademark No. 183.

[4] No. 19928460 "shake shake and device" trademark opposition decision - (2018) Trademark No. 47487.

[5] Trademark Dispute Decision of "LSMT and device" No. 3691497 - ShangPingZi [2014] No. 041510.

[6] Administrative judgment of Beijing First Intermediate Court-(2014) No. 10567.

[7] Administrative judgment of Beijing Higher Court- (2017) No. 785.

[8] Administrative judgment of Beijing Intellectual Property Court- (2018) No. 6779.