We are thrilled to announce that Chang Tsi successfully prevented registration of a similar infringing trademark on behalf of our client based on prior copyright.

Case Overview

The opposed mark is a graphic mark applied for by a Chinese individual, designated for goods in Class 25. This mark closely resembles a prior artwork of our client. Moreover, Class 25 clothing-related goods are a core concern for our client. Acting on behalf of the client, we filed an opposition based on the prior right of trademark application under Article 30 and the prior copyright under Article 32 of the Trademark Law.

The CNIPA disapproved the registration of the trademark based on the client's prior trademark rights and copyright in the opposition decision. Subsequently, the opposed party, dissatisfied with this decision, filed for a review. It is worth mentioning that the status of the client's prior application is unstable, with a high possibility of eventually becoming invalid. We actively submitted reply grounds and evidence on behalf of the client, strengthening the copyright argument and evidence.

Ultimately, in the review of the opposition decision, the office recognized that "the opposed party had applied for the registration of a mark that substantially resembles a graphic work previously published and used by another person without permission, thereby infringing upon the prior copyright of the opponent," and decided to disapprove the application for registration of the opposed mark in Class 25.

Difficulties

1. The status of the client's prior application in Class 25 is unstable and eventually became invalid, so we could not rely on the prior trademark right to successfully combat the opposed mark in the review procedure.

2. The opposed mark and the client's prior copyright are not entirely identical; therefore, we needed to analyze and persuade the examiners to determine that both graphics constitute substantial similarity.

3. The client previously did not register the copyright in China, and we needed to submit sufficient evidence to prove that our client owns the prior copyright of the artwork. In this case, we presented the following evidence to demonstrate that the opponent holds the prior copyright and that the opposed party had access to the work: an introduction on Baidu Baike, the opponent's statements regarding the creation of the graphic artwork, information and related reports about the appearance of the opponent and their work in China, social media platform information, etc. The evidence proved that before the application date of the opposed mark, the opponent had publicly published and widely used their graphic work in mainland China.

Key Takeaways from this case

This case provides the following references and insights for opposition or invalidation cases based on prior copyright to combat infringing trademarks:

1. Copyright protection can cover all goods/services and is not restricted by specific trademark classes. This can effectively prevent the registration of similar trademarks by others, especially in situations where the client lacks prior trademark rights or such rights are unstable.

2. To rely on prior copyright for protection, the following four points need to be proven: 1) The opponent holds prior copyright of their artwork; 2) The opposed mark constitutes substantial similarity to the opponent's prior work; 3) The opposed party had the possibility of accessing the work; and 4) The opposed party applied for the trademark registration without the copyright holder's permission. Among these, it is particularly crucial to prove the first three points. For the first point, proving prior copyright is not limited to a copyright registration certificate. In cases where the client has not registered the copyright with the CPCC, submitting trademark and copyright registration certificates from other countries, creator's statements, and other evidence can help establish prior copyright. For the second point, in this case, we mainly argued the similarity of the graphics from multiple aspects such as compositional elements, design style, detailed characteristics, form of expression, and visual effect, and obtained the CNIPA’s recognition. For the third point, especially when the two graphics are not completely identical, it is necessary to prove the likelihood that the Chinese opposed party had access to the client's work. Therefore, collecting and submitting extensive evidence of the usage and promotion of the client’s work in the Chinese market is essential.