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Trademark practice - use of prior copyright in trademark opposition and invalidation
Time: 2021-08-31
Trademark practice - use of prior copyright in trademark opposition and invalidation

Kavin Tan | Aug 28, 2021

According to Article 32 of Chinese Trademark Law, no trademark application should infringe upon another party's existing prior rights. Prior rights include non-trademark rights obtained before trademark rights, such as copyright, design patent rights, name rights, trade name rights, portrait rights, and patent rights.

Recently, Jiaquan’s lawyers successfully opposed a trademark registration for our client by claiming prior rights. This action was supported by the China National Intellectual Property Administration (CNIPA) and the trademark application was rejected as a result. Additional details are included in the case review below.

Case Review

Company A, a US-based card and board game company, designed Figure 1 (hereinafter referred to as the “Drunk Man Image”) in 2017 and has continuously used it on its products since that year. In 2019, Company A noticed a trademark filed by a Chinese company, Company B, featuring Figure 2. Company A then entrusted Jiaquan IP Law Firm with opposing the trademark via claiming prior copyright.


  Figure 1                 Figure 2 


CNIPA decided that Company B’s conduct constituted an infringement of Company A’s prior copyright and that the opposed trademark would not be registered, based on the following reasons:
1) Company A’s work, the Drunk Man Image, bears a unique aesthetic. It is therefore a work protected by the Copyright Law.
2) Company B’s work appears to be an exact copy of the head of the individual in the Drunk Man Image.
3) Prior to the trademark filing date of the opposing company, Company A had been selling game cards displaying the Drunk Man Image via e-commerce platforms such as Taobao and Alibaba. It could therefore be reasonably inferred that Company B had already been exposed to the work of Company A.
4) Company B did not provide any evidence to indicate that the opposed work was created independently.

Jiaquan’s View

Due to factors including the examiner’s scope of knowledge and limitations on information sources, the examination results of CNIPA may not be perfect. However, the Trademark Law provides two remedies to the prior right holders: opposition and invalidation. China utilizes a “first-to-file” system for trademark registration, which is quite different from the “first-to-use” system employed by the United States.

However, China also considers and honors prior rights in trademark cases. Copyright, as a right automatically obtained with the completion of work, has often been used as a prior right during opposition and invalidation cases

Key Requirements for Prior Copyright Claim

1.Copyright prior to the trademark application day.

First, the copyrighted work should be an artwork as defined in Regulations for the Implementation of the Copyright Law. Specifically, the work must be a two or three-dimensional formative artwork, with aesthetic significance that is created in lines, colors, or other ways, including paintings, works of calligraphy, and sculptures. Second, the copyrighted work must have been completed before the filing date of the trademark application at issue. In the case described above, the overall design of the Drunk Man Image is unique and very original. It evidently belongs to the category of artworks protected by the Copyright Law. In addition, Company A provided design manuscripts and emails with suppliers regarding printing and publishing; these included timestamps far earlier than the filing date of the application at issue. In the absence of evidence to the contrary, the evidence provided by the company was sufficient to prove that Company A had completed the work long before the filing date of the application at issue.

2.The application at issue is identical or substantially similar to the prior copyrighted work. 

In the case described above, the application at issue was for a nearly exact copy of the head of the Drunk Man Image; the newer artwork would therefore be considered substantially similar to the original work in both shape and form.

3.The applicant of the applicant at issue has had access to or is likely to have had access to the copyrighted works. 

This requirement refers to the possibility that the applicant of the trademark application at issue knew or should have known about the existence of the prior work. Given the diverse nature of artwork, it is highly unlikely that two different parties would create an identical or substantially similar work independently. In the case described above, game cards bearing the Drunk Man Image are available for purchase on several Chinese e-commerce platforms. Images provided by Company A proved that the Drunk Man Image had been made publicly visible before the filing date of the application at issue and that Company B had access to it.

Extended Thoughts 

Copyright exists from the moment a work is created. China adopts a "voluntary registration" system for copyright. Although registration is entirely voluntary, a Copyright Registration Certificate displaying a registration date earlier than the application date of a disputed trademark can be used as solid proof that the holder has prior copyright

If the registration date displayed by the Copyright Registration Certificate is later than the application date of the disputed trademark, the copyright holder must present draft designs and other evidence that can adequately prove the process of creation and completion date of the work. If such evidence corroborates each other and can form a complete chain of evidence, it can then be asserted that the author or right holder has prior copyright over the disputed trademark.

Related Law 

Trademark Law of the People’s Republic of China Article 32 - The application for trademark registration should not damage the prior rights of others, or register a trademark that has been used by others or one that has a certain influence improperly.

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