In trademark opposition proceedings, prior rights may be cited against the opposed trademark. Article 31 of the Trademark Law provides that:
"[a]n application for registration of a trademark shall not be of such a nature as to infringe the existing earlier right of another person. An application shall not be made with intent to register a trademark which is used by another person and enjoys [a] certain reputation."
Copyright is one of the prior rights that may be cited in trademark oppositions. The Chinese courts have recently confirmed that copyright can be invoked in respect of a stylised trademark logo.
In 2002 Mr Su applied to the China Trademark Office to register the mark below in Class 11:
The mark incorporated the Chinese transliteration of the word 'summit'. It was identical to the trademark registered by the opponent, Guangdong Xin Ming Zhu Ceramics Group Co Ltd, which had registered it in 2001 for goods in Class 10. In the trademark opposition proceedings, and in the review by the Trademark Review and Adjudication Board that followed, the opponent argued that the application constituted infringement of its well-known trademark and of its copyright in the logo; however, this argument was rejected on both occasions.
In 2010 the opponent appealed to the Beijing Number 1 Intermediate Court. The court found that Xin Ming Zhu had provided the board with a trademark registration certificate, an affidavit from the logo designer and drawings of the logo bearing its corporate seal. In the absence of evidence to the contrary, this was sufficient to prove that before the application for the disputed trademark, the opponent had asserted copyright in its trademark and had published it by means of registration. The relevant public therefore had access to the trademark logo. The disputed mark was identical to the opponent's trademark and thus infringed the opponent's prior copyright. The court found that the board had failed to examine the drawings provided by the opponent, and held that the board's decision should be reversed.
In 2011 the Beijing Higher Court affirmed the lower court's decision and the board rejected Su's trademark application.(1)
In trademark opposition proceedings in China, it is difficult to seek recognition of well-known trademark status or to prove that the opponent's trademark, although not registered in China, has obtained sufficient reputation through use. However, in many cases the disputed trademark is a slavish copy of the opponent's stylised trademark. If the opponent can provide evidence that it holds copyright in the stylised trademark, the authorities may uphold the opposition under Article 31 of the Trademark Law.
In practice, the standard of creativity required for a work under Chinese copyright law is fairly low, so a stylised trademark may well be regarded as eligible for copyright (ie, categorised as a 'work of fine art' under China's Copyright Law). Citing copyright in a trademark opposition can be either a last resort or a supplementary argument.
However, it is not enough for the opponent simply to provide its prior trademark registration certificate to prove that it holds the copyright in the stylised logo, as a trademark registrant does not necessarily own the copyright. Supplementary evidence must be provided, such as a contract with the designer, logo drawings and potentially even a copyright registration certificate.
For further information on this topic please contact Zhang Shuhua at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000), fax (+86 10 6894 8030) or email ([email protected]).
(1) 2010, Yi Zhong Zhi Xing Chu Zi 2818.