It is formulated in Article 32 in Trademark Law of the People’s Republic of China that no trademark application shall infringe upon another party’s existing prior rights. Here “existing prior rights” means other legal prior rights, like copyright, trade name right, design right, etc., except for trademark.
According to this clause, if your figure logo is qualified as an existing prior copyright, you can file an opposition against the trademark application on grounds that it conflicts with your existing legitimate prior copyright to CTMO within three months after preliminary publication, when the trademark is already registered, you may, within five years from the date of registration, file an invalidation to TRAB seeking cancellation of registration of the disputed trademark.
Conditions of application of article 32
- The trademark at issue is identical with or substantially similar to the copyrighted work of which the copyright was earlier obtained by another person.
The phrase “the copyright was earlier obtained” refers to a case where, before the date of an application for registration of a trademark at issue, another person had already created and completed copyrighted work or obtained copyright through inheritance, assignment, etc.
The fact that existing prior copyright can be proved through copyright registration certificates, evidentiary materials proving that the said copyrighted work had been published earlier, or evidentiary materials proving that the copyrighted work had been completed earlier, evidentiary materials proving that copyright had been obtained earlier through inheritance, assignment, etc. and so forth.
Where the fact that copyright has been obtained earlier was confirmed by a legally effective judgment, if no sufficient contrary evidence, the fact can be affirmed.
For foreign copyright works, it is eligible to enjoy copyright protection in China under Berne Convention or other international treaty or on the basis of the principle of reciprocity. So the certificates or evidentiary materials obtained in other countries or regions which have above relations with China may also be used.
“Identical” refers to the trademark at issue has basically no difference with the prior copyrighted work on impression when being viewed. “Substantially similar” refers to the original part of the trademark and the copyrighted work is identical with or similar to each other. But for copyrighted work which is very simple in expression, only when the line design, color, composition elements of the trademark is identical with or almost the same to those of the copyrighted work, and the trademark is just a plagiarism of the copyrighted work, can the trademark be confirmed “substantially similar” to the work.
- The applicant of the said trademark at issue had accessed or possibly accessed the said copyrighted work.
“Access” means direct knowledge or a reasonable opportunity to acquire direct knowledge of the prior work. Normally “access” can be proved with:
a) Direct evidences that the applicant of the trademark had seen or read the prior work;
b) Indirect evidence that the copyrighted work had been published, exhibited, or broadcasted to the public before the application date of the trademark, and the trademark applicant had possibly accessed the work.
- The application for registration of the said trademark at issue has not been authorized by the said copyright owner.
The applicant or registrant of trademark at issue shall bear burden of proof of the fact that he obtained authorization from the copyright owner.
Conclusion
If you have no trademark application/registration in China, but have evidences to prove you had the prior copyright on the figure log, and meet the above three conditions, you can use the opposition or invalidation procedure to protection your copyright in China.
In addition, you are advised to file a trademark application for your figure logo in China as soon as possible to prevent infringements in advance.
