We are thrilled to announce that Chang Tsi successfully combated trademark squatting on behalf of our client based on prior copyright.

Case Overview

The opposed mark is a graphic trademark applied for registration by a company in Fujian, China, designated for goods in Class 25. This mark is identical to a logo owned by our client. On behalf of our client, we filed an opposition against the trademark based on Article 32 of the China Trademark Law, which states, "The application for trademark registration shall not infringe upon the prior rights of others." The National Intellectual Property Administration ruled that "the opposed party's application for registration of the opposed mark constitutes an infringement of the opponent's prior copyright." Consequently, the application for registration was disapproved.

Difficulties

1. Lack of Prior Registered Trademark in Similar Goods: Our client's core business does not fall under Class 25, hence there is no trademark registration in this class, making it difficult to combat the opposed mark based on prior trademark registration.

2. Evidence Collection and Submission for Prior Copyright: We filed a trademark opposition on the grounds that the application for trademark registration should not harm third parties’ prior copyright. We needed to submit sufficient evidence to prove that our client holds the prior copyright over the artwork. In this case, the opponent submitted the following evidence to prove their prior copyright: the opponent's trademark registration certificates; a notarized and legalized U.S. copyright registration certificate; a Chinese copyright registration certificate; a national library search report; media reports on the opponent's work; and other evidential materials. All registrations or formations of these documents predate the application date of the opposed mark.

Key Takeaways from this case

Regarding the issue of copyright owners' works being preemptively registered as trademarks, we offer the following suggestions to rights holders:

Ensure the Graphic is Not Overly Simple: The copyright owner, when claiming prior copyright based on China Trademark Law, should meet the basic standards of what constitutes a work, which cannot be overly simple. For example, in this case, the National Intellectual Property Administration recognized that our client's artwork has a unique form of expression, reflecting the author's special choices, design, and arrangement, and possesses certain aesthetic significance, which should be protected as an artwork under copyright law.

Strengthen Evidence Awareness: In their daily business activities, rights holders should pay attention to the fixation and preservation of relevant evidence. For example, if the rights holder plans to launch a design with strong originality, they should promptly apply for copyright registration, both in their own country and in China, and save evidence of public use related to the work in a timely manner. In this case, the National Intellectual Property Administration recognized that the evidence submitted by our client, including the U.S. copyright registration certificate, the Chinese copyright registration certificate, the national library search report, and media reports, could prove that our client, as the rights holder, is entitled to claim the prior copyright of the artwork.

Ensure Comprehensive Protection: Rights holders may apply for both trademark and copyright registration simultaneously for works that can be protected as both trademarks and artworks. Compared to trademark registration, copyright registration is not limited by the classification of goods and services. Rights holders do not need to apply for trademark registration in all 45 classes; a copyright registration can prevent trademark squatting to a large extent.