Logo mark protected as copyright in opposition proceedings

China

Article 31 of China’s Trademark Law provides as follows:

"An application for registration of a trademark shall not be of such a nature as to infringe the earlier right of another person. An application shall not be made with the intent to register a trademark which is used by another person and enjoys a certain reputation."

In trademark opposition proceedings, one may rely on prior rights to oppose the registration of a trademark. Copyright is one of the prior rights that can be cited. Can a logo trademark be cited as copyright against an applicant? In the SUMMIT case, the Chinese courts gave an affirmative answer.

In 2002 a Mr Su applied to the Chinese Trademark Office for registration of the mark depicted below, which included the word 'summit' and the Chinese transliteration of 'summit', in Class 11 of the Nice Classification:

The logo was exactly the same as a trademark owned by opponent Guangdong Xin Ming Zhu Ceramics Group Co Ltd, who had registered the mark in 2001 for goods in Class 10. In the trademark opposition proceedings and ensuing review by the Trademark Review and Adjudication Board (TRAB), the opponent argued that the application constituted an infringement of its well-known trademark and of its copyright in the logo. However, this argument was not upheld in either procedure.

In 2010 the opponent appealed to the Beijing Number 1 Intermediate Court. After hearing the case, the court found that the opponent had submitted to the TRAB the registration certificate of the cited trademark, an affidavit from the logo designer, as well as the drawings of the logo with the opponent’s corporate seal. In the absence of contrary evidence, this evidence was sufficient to prove that, before the filing of the application for the opposed trademark, the opponent had already obtained copyright in the cited trademark, and had published it through trademark registration. The relevant public could have access to this logo. The opposed trademark was exactly the same as the cited trademark, and thus infringed the opponent’s prior copyright. The court held that the TRAB had failed to examine the drawings provided by the opponent, and that the TRAB decision should be reversed (Decision (2010) Yi Zhong Zhi Xing Chu Zi 2818).

In 2011 the Beijing Higher Court affirmed the decision of the Beijing Number 1 Intermediate Court, and the TRAB rejected the trademark application accordingly.

Within the context of opposition proceedings, it is very difficult to:

  • seek recognition of a trademark's well-known status in China; or
  • prove that the opponent’s own trademark, although not registered in China, has obtained a certain reputation through use.

However, in some cases, the opposed trademark is a slavish copy of the stylised trademark of the opponent. If the opponent can provide evidence that it owns the copyright in the stylised trademark, the Chinese authorities may uphold the opposition under Article 31 of the Trademark Law.

In China’s copyright law practice, the creativity threshold is fairly low. This means that a stylised trademark may well be treated as a copyrightable work under the Copyright Law. In opposition proceedings, citing copyright can be either a last resort or as supplementary argument.

However, the opponent cannot simply provide the trademark registration certificate of its prior trademark to prove that it owns the copyright in the logo mark, because the trademark owner does not necessarily own the copyright in the logo. To prove copyright ownership, one must provide supplementary evidence, such as a contract with the logo designer, drawings of the logo and even a registration certificate.

Zhang Shuhua, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

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