CHANG TSI
Insights
Annie Bie
In daily trademark practice, we frequently receive inquires from our clients about how to protect works of fine art under copyright and/or trademark law. We have conducted a preliminary study on the strengths and weaknesses of these two rights, along with a discussion of individual cases. We conclude with suggestions on how to provide an integrated IP solution for our clients.
Works of fine art refer to two or three-dimensional art works composed of lines, colors, or other techniques, such as paintings, calligraphy and sculpture. Copyright protection for fine art focuses on the design curve, color matching, and other forms of planar or three-dimensional modeling. [KN: Define the length of protection]
A trademark is composed of various elements such as text, graphics, and color. It is a symbol used to distinguish the origin of brands for different business operators. Trademarks can be classified into word trademarks, graphic trademarks, sound trademarks, and three-dimensional trademarks. Generally speaking, a graphic trademark refers to an image. If the image is featured with distinctive design curves and unique artistic composition, it can be registered as a piece of fine art work under copyright law as well.
In contrast, a word mark consisting solely of characters cannot be registered as a work of fine art because the font is an common font, not a creative font, and cannot be registered as copyrighted text as the number of characters is insufficient. The compromise is to design the word mark into an art font and record it as a piece of fine art works, which, however, renders protection only to the art font rather than the text content itself.
A trademark right abides by the first-to-file principle in China. That is to say, a trademark becomes a proprietary right only if the trademark is first filed and then approved for registration.
Copyright is generated automatically, and it need not go through special registration procedures to take effect. The purpose of copyright registration is to facilitate the proof that the applicant has a legal and exclusive right to own the work. In the event of infringement disputes, the party holding the registration certificate will generally be recognized as the copyright holder of the work by the judicial or administrative agency, unless there is contrary evidence to overturn the substance of the copyright registration certificate.
A trademark right is territorial in scope; that is, a trademark obtained in China can only be protected in China and not in territories outside of China.
Copyright can thus be protected in all Berne member countries, across all industries and geographical regions. Namely, a copyright applies to all the 45 trademark classes as stipulated in the Nice Classification.
The validity period of a trademark is 10 years. A renewal application shall be filed within 1 year prior to the expiry of the 10 year period to keep the trademark valid.
The validity period of a copyright varies with the applicant's identity.
Trademark applications are examined by the China Trademark Office (CTMO), while copyright applications are examined by the Copyright Protection Center of China (CPCC). Thus, trademark and copyright examinations are handled by two different institutions using two different databases. In the examination of a trademark, the CTMO examiners will not search the CPCC’s database to check if there are any prior copyrights identical with or similar to the trademark which has been filed. Likewise, the Copyright Office will not search the trademark database to check if there are any prior trademarks identical with or similar to the copyright which has been filed.
III. Can “copyright” combat trademarks?
Article 32 of China Trademark Law stipulates that an application for registration of a trademark shall not be of such a nature as to infringe the existing prior right of another party. An application shall not be made with intent to register a trademark which is used by another party and enjoys certain reputation.
The conflict between prior copyright and prior trademark rights is typical in the protection of “prior rights” as stipulated in the first half of Article 32 of the China Trademark Law.
The application for registration of a piece of fine art as a trademark without the permission of the copyright owner shall be deemed as a damage to the prior copyright of the other party. [KN: Please illustrate how this occurs in practice. For example…] The applicable conditions of this situation are listed as follows: (i) the disputed trademark is identical with or substantially similar to another’s copyright work; (ii) the applicant of the disputed trademark had access to the copyright; (iii) the disputed trademark was applied for without the authorization of the copyright owner.
In practice, the applicable rules for copyright to combat trademark rights are listed as follows:
Invalidation on device trademark No. 6285542
(Logo 1) (Logo 2)
Logo 1 (i.e. trademark No. 6285542) was filed on September 20, 2007 by Hong Kong Riley Investment Co., Ltd. for “banking services” in Class 36. It was approved for registration on April 7, 2011 and is valid until April 6, 2021. This trademark was assigned to Ningbo Jiangdong Zhongliao Innovation Industrial Investment Consulting Co., Ltd on February 24, 2010.
Logo 2 is owned by Jiangsu Bank. It was a corporate logo designed by the famous Chinese design company, Dongdao Design. Upon completion of the design of the logo, the owner filed a copyright application for this logo with the CPCC, and the logo has been registered.
The owners of both logos are in the financial services industry. The copyright owner of Logo 2, Jiangsu Bank, noted the existence of the registered trademark, and then filed an invalidation application against the disputed trademark based on the grounds that the disputed trademark is highly similar to its own copyright works. Jiangsu Bank claimed that the registration of the disputed trademark infringes upon the applicant’s prior copyright.
The respondent, Hong Kong Riley Investment Co., pleaded in the response to the invalidation that it also enjoys copyright over the disputed trademark as a graphic, and the copyright certificate submitted by the applicant did not contain sufficient evidential weight. Thus, the respondent requested that its registration of the disputed trademark should be maintained. The respondent did not provide valid proof of copyright.
Upon examination, the Trademark Review and Adjudication Board (TRAB) held that based on the evidence submitted by Jiangsu Bank, such as the applicant’s profile, papers evidencing government approval of its establishment, biding documents on the applicant’s trademark design, image design contract and copyright registration certificate, it can be inferred that the Logo 2 is the applicant’s corporate logo designed by Dongdao Design. This logo was created prior to the application date of the disputed trademark, and the applicant registered the design as a copyright. The applicant's copyright registration certificate and the evidence of creation and first publication corroborate its claims, which serve to prove the applicant’s copyright over the device logo.
The disputed mark is a design trademark. The design in the center is nearly identical with Logo 2 in terms of compositional elements, structure and design and overall appearance. Thus, they are substantially similar. Furthermore, the former applicant of the disputed mark and the current respondent have registered a number of trademarks similar to the logos of other commercial banks in connection with “banking services” in Class 36. It can be inferred from the above that the respondent is keenly aware of the logos of commercial banks, and they would have had access to Jiansu Bank’s logo design. In addition, the respondent did not submit valid evidence to prove that its copyright works was created on March 10, 1996. Thus, the respondent’s claim that it enjoys copyright over the graphic in the disputed trademark is untenable. Accordingly, the registration of the disputed trademark has constituted damage to the prior copyright of another party as stipulated in Article 31 of the former China Trademark Law, and the disputed trademark shall be invalidated.
As stated in Part II, the examination of a trademark and the examination of a copyright are completely separate operations. In the examination of a trademark, the CTMO examiners will not search the CPCC’s database to check if there are any prior copyrights identical with or similar to the trademark which has been filed. Likewise, the Copyright Office will not search the trademark database to check if there are any prior trademarks identical with or similar to the copyright which has been filed. In this scenario, the following consequences can occur. For the same trademark sample, even if one party may register it as a trademark, there is a possibility that the other party may record it as a piece of copyright works prior to the application date of the trademark. In this case, the copyright holder may file a lawsuit to challenge the trademark holder that it has infringed its prior copyright. Even if the trademark holder is able to provide evidence to prove it is the genuine owner of the logo, it will cost time and money to resolve.
Therefore, in order to avoid such disputes in the future, the simplest way is to take an integrated approach in IP protection. In order to avoid the intellectual property disputes between different entities holding the copyright and trademark right over the same piece of art works, it’s advised that the right holder shall record the logo as both a piece of copyright works and a trademark simultaneously.
Chang Tsi & Partners on behalf of BOE Technology Group Co, Ltd and Beijing Orient Vacuum Electric Co, Ltd. won the case of BOE Technology Group Co,Ltd. & Beijing Orient Vacuum Electric Co, Ltd. Suing Wenzhou BOE Vacuum Electric Co, Ltd. unfair competition.
This is a case in which a shell company established in Hong Kong seeks unreasonable compensation by squatting trademarks and bringing a lawsuit against a multinational corporation for trademark infringement.
To enhance the efficiency of examinations of trademark applications in China, so that trademark applications can mature to registration more quickly, the China trademark authorities have been speeding up examination procedures. By doing so, many pending cases have been concluded and the examination period has been drastically shortened. In the past, it was normal for a trademark application to be pending 3 years after its application date; today, an application can be approved for preliminary registration in around 6 months.
