Yu GAO

Chinese Trademark Attorney
 Chinese Attorney-at-Law
Wei Chixue Law Firm

 
As the most important intangible asset in business activities, a trademark with a novel, aesthetic, easy-to-remember and catchy design is often a powerful tool for business to open the market, maintain competitiveness and accumulate goodwill. Most businesses are willing to take the trouble to design their own trademark and apply for registration to have it protected. However, the protection of a registered trademark is subject to the goods or services approved for use and the country where the trademark is approved for registration. Applying for registration of a large number of trademarks for defensive purposes is not only costly, there is also some uncertainty about whether the registration will be granted, and even if it is registered successfully, there is still a risk that it will be cancelled due to non-use.

However, a trademark with strong originality may also be works protected under the Copyright Law. The difference lies in that the Copyright Law does not limit the protection of works to a specific class of goods or services. Moreover, Berne Convention provides an author who is a citizen of any member state or who first publishes a work in any member state is automatically protected in other member states. Therefore, the scope of copyright protection for works does not have the same strict territorial limitation as trademarks. Also, compared to other intellectual property rights such as design patents, works are protected for a longer period of time.

Article 32 of the Trademark Law provides that “the application for trademark registration shall not damage the existing prior rights of others”. In trademark right affirmation cases, a valid prior copyright is one of the most common and effective prior rights against a later trademark. Then what is the difference between the protection of trademark right and copyright? What types of trademarks can be protected by the Copyright Law? How to judge the similarity between a trademark and works? This article will analyze these questions combining with trademark right affirmation cases in practice.

I. Difference Between Trademark Right and Copyright

Trademark and copyright are two fundamental rights in modern intellectual property system. They are two different kinds of rights, with distinct differences in terms of protection objects, legislative goals, and protection principles.

1. Trademark right

The protection object under the Trademark Law is a trademark, that is, a mark that can distinguish the goods (services) of a natural person, legal entity or other organization from those of others. A trademark right is a type of industrial property right.

Historically, trademarks were created to combat commercial fraud. A weaver filed a lawsuit in a civil court in England in the 15th century. The plaintiff, who had built a successful textile business, frequently used his logo on textiles to indicate that they were made by him. When another weaver noticed this phenomenon, he used the same logo on his inferior textiles. The plaintiff filed a fraud action, which the court upheld. Trademark rights evolved into a legal franchise¹ after being increasingly analogized to proprietorship.

It can be seen that trademarks are primarily used to maintain market order and protect operators and public interests from the moment they are created. A trademark registrant can monopolize the use of its registered trademark for an extended period of time through renewal, which is beneficial for establishing market position, accumulating goodwill, and gaining competitive advantages. Therefore, the exclusive right to use a registered trademark is an absolute right, and the registrant has a monopoly right against others over the registered trademark it owns. Due to the monopolistic nature of trademark rights, the Trademark Law has imposed certain restrictions on the scope of trademark protection in order to prevent the scope of protection of registered trademarks from being too broad and impeding equal competition. A registered trademark can only be protected in respect of the identical or similar goods or services that have already been approved for use.

The Trademark Law’s legislative goal is to maintain market competition order, prevent confusion, protect the interests of operators and the public, and promote the development of the market economy. Throughout the Trademark Law, the principles of “no confusion” and “honesty and credibility” have been applied. The Trademark Law does not require the wording and design of the trademark to be original, but only requires a minimum level of distinctiveness and differentiation, in order to realize the function and role of the trademark in distinguishing the producers of goods and service providers and indicating the source of goods or services.

2. Copyright

The Copyright Law protects original works, specifically original intellectual achievements in the fields of literature, art, and science that can be expressed in a specific form. In order to be qualified as works in the sense of Copyright Law, works must meet the requirements of both “independent creation” and “minimum creativity.”

Historically, copyright arose with the invention of the printing press. To combat piracy and protect the interests of printers, some kingdoms in Italy were the first to establish a system of printing franchise in the 15th century. In 1710, England passed the Statute of Anne, “legally confirmed the right of authors to print and publish their own works for the first time in history, so that copyright was no longer a privilege granted by the crown.²”

The legislative goal of Copyright Law is to encourage the creation and dissemination of intellectual works by protecting the rights and interests related to those works, and ultimately to promote the progress of culture and science. The principle of “distinction between ideas and expressions” runs throughout the Copyright Law. The Copyright Law does not protect ideas or emotions, but only original expressions of ideas or emotions in the fields of literature, art, music and science. “When the original expression of ideas is solely or extremely limited, even if the original expressions between different subjects are substantially similar to each other, they do not constitute copyright infringement to each other, otherwise the freedom of expression and freedom of action of others will be seriously impeded.” Thus, the less creative a work is, the more stringent other conditions shall be for protection. However, in order to encourage the creation and dissemination of intellectual achievements, the Copyright Law only requires a work to have a minimum level of creativity and does not require the work to reach a certain “creative height.” As long as one's own expression differs from that of others, the expression is considered to satisfy the element of “creativity.”  Thus, "even a kindergarten child’s painting or calligraphy can satisfy the creative element. ³”

II. Copyright Protection in Trademark Right Affirmation Cases

Copyright is one of the “prior rights” stipulated in the first half of Article 32 of the Trademark Law of China. Although trademark right and copyright are two different rights, since both works and trademarks can be expressed in words, devices and other elements, trademarks with originality can be works protected by the Copyright Law.

As mentioned above, the protection of works under the Copyright Law is not restricted by the class of goods or services, therefore, copyright owners can claim their rights in trademark right affirmation cases without being restricted by the scope of goods or services. Moreover, according to the Copyright Law, once a work is completed, the author enjoys the copyright and does not need to obtain the right through registration. Therefore, claiming the copyright does not require proving that the work is well-known as in the case of “well-known trademarks.” Therefore, in such cases, the copyrighted work claimed by the copyright owner (prior trademark owner) is generally also its registered trademark.

Although in practice, some people believe that giving prior copyrighted works more protection than “well-known trademarks” in trademark affirmation cases may undermine the existing trademark registration system, and therefore the criteria of originality and substantial similarity of works should be strictly controlled. However, the protection of the copyright of prior works of others in trademark right affirmation cases is actually in line with the principle of “good faith and credibility” of the Trademark Law and the legislative goal of encouraging lawful competition. Therefore, it is not inappropriate to protect works with originality in trademark cases. Even for works with little originality, as long as they meet the minimum requirements of the Copyright Law for originality of works, they should be recognized as works in the sense of the Copyright Law in the first place. When determining whether the work and trademark constitutes substantial similarity, the competent administrative authority and the court may consider the degree of originality of the work, the similarity between the disputed trademark and the work, and the subjective bad faith of the applicant of the disputed trademark in copying and imitating the work of others.

In such trademark right affirmation cases in which copyright is claimed, the competent authorities and courts generally consider the following factors in the examination and trial.

(a) whether the work of another person constitutes the work in the sense of  Copyright Law;
(b) whether the other party enjoys prior copyright to the work;
(c) whether the prior work is substantially similar to the trademark at issue;
(d) whether the respondent has the possibility of access to the work of others;
(e) whether the disputed trademark registration application was filed without the permission of the copyright owner.

Among these issues, except for the issue of copyright ownership in item (b), the determination of issues (a) and (c) is often more critical.

III. What Kind of Trademarks can be Protected by Copyright Law

A trademark consists of words, devices, letters, numbers, three-dimensional marks, color combinations and sounds, as well as combinations of the above elements, among which words, devices and letters are the most common constituent elements of a trademark. The criteria for determining whether a trademark composed of various elements can constitute a work in the sense of the Copyright Law and whether the work and the disputed trademark constitute substantial similarity are different. The following analysis is made for several forms of trademarks that are commonly seen in practice.

1. Word marks in standard fonts are generally difficult to be protected by Copyright Law



A minimum degree of distinctiveness is required for a trademark to be able to perform its distinguishing function. As a result, word marks in standard fonts are typically short in order to meet the requirement of distinctiveness. However, in order to be considered an “original expression,” written works protected by the Copyright Law must be of a certain length. If the text is too short, it may be interpreted as being unified with the idea or lacking originality and thus not protected. Therefore, word marks in standard fonts are generally not recognized as works in the sense of the Copyright Law and are difficult to obtain protection under the Copyright Law. For example, none of the following trademarks have been found to constitute works in the adjudication proceedings.
 
2.The designed word trademark with high originality can be protected by Copyright Law

Although the text content of the trademark itself is hardly protected by the Copyright Law, if the font design of the word mark is unique and highly original, it may still be protected by the Copyright Law, for example:


 
If the font design itself is relatively simple and does not reach a minimum level of originality, it is still difficult to qualify as works protected by the Copyright Law, for example:
 

 
 
Furthermore, for designed word trademarks, because the object of protection is the font designs, not only must the words in the disputed trademark and the prior copyrighted work be identical in content, but the fonts must also be substantially similar. In the aforementioned cases supported by the authority, for example, the disputed trademark and the prior work were nearly identical in design style, expression, and visual effect, so the work was protected.

However, if the disputed trademark and the prior works do not reach the level of substantial similarity, the prior works will hardly be protected by the Copyright Law. For example, in the following cases, the CNIPA found that the disputed mark and the cited mark constituted similar marks, but held that they did not constitute substantial similarity in the sense of Copyright Law.
 


3. Handwritten characters with relatively strong originality can be protected by the Trademark Law

Handwritten characters with relatively strong originality generally belong to the calligraphic works protected by the Copyright Law. Therefore, generally trademarks composed of  handwritten characters with relatively strong originality can also be protected by the Copyright Law, for example:
 
 
 
4. The degree of originality influences copyright protection of device trademark

The device elements in a trademark can be divided into decorative device, device as the background of words, prominent device, pure device trademark, etc. according to their position and function in the trademark. For different device elements, the difficulty of being able to be protected by the Copyright Law varies depending on the degree of originality, which is analyzed as follows.

A. Decorative device

Decorative devices generally have a small proportion in the combination trademark, and the device part only plays the role of decorating the text elements which is the man part performing the function of distinguishing. Therefore, in general, decorative devices are not highly original and can hardly meet the minimum level of originality required by the Copyright Law, for example:
 
 

B. Device being background in the trademark

Ordinary background devices in the trademarks, like decorative devices, are generally not highly original. However, a background device in the trademark with a high degree of originality may still constitute a work in the sense of Copyright Law and be protected; for instance, the background devices were found to constitute art works and were protected in the following cases.
 
 
 
However, background devices composed of simple device, lines and stripes are still difficult to be determined as works in the sense of Copyright Law or even if it constitutes a work, it is difficult to be considered as substantially similar because of the differences thereof, for example:



C. The prominent device part of the trademark and the pure device trademark

Such devices are generally the most prominent or the only identifying part of the trademark, which normally possess the required distinctiveness to obtain trademark registration, thus these device works often also have a certain degree of originality.

When determining whether works of high originality constitute substantial similarity, the judging criteria do not require that the device elements have to be identical; even if the constituent elements differ slightly, they can still be judged to constitute substantial similarity, for example:



In the above case, the disputed trademark and the applicant's work being a trademark were not identical, and the center of the device is respectively a human figure (the disputed trademark) and a five-petal flower figure (the applied-for work). The applicant's work, however, is highly original, and many other device elements contained in the two devices are identical, which is obviously difficult to be explained as coincidence, so the court found that the two devices constitute substantial similarity.



The design elements in the device part of the disputed trademark and the “U” pattern of the applicant’s works are of certain difference in the above case, and the word “Unicode” in the disputed trademark and “Unilever” in the applicant's works are not identical. But in view of the high level of originality of the applicant's works, the competent authority determined that the two had substantial similarities.

Thus, it can be seen that in cases involving trademarks and highly original graphic works, the criteria for determining whether the disputed trademarks and the works constitute substantial similarity are not significantly different from the criteria for determining confusing similarity in the trademark similarity judgment.

However, for works with less originality, the threshold of constituting substantial similarity may raise. If there are few differences between the trademark at issue and the graphic work, substantial similarity may not be found, for example:
 

 
Although the bull devices in the disputed trademark and the applicant’s trademark work were relatively similar in composition and visual effect, and they would generally be judged as similar trademarks, however, in determining whether the disputed trademark and the work constituted substantial similarity, the court apparently raised the standard of judgment, thus finding that the two did not reach the level of substantial similarity in the sense of Copyright Law based on the differences in details between the two devices.

IV. Summary

In summary, despite the difference between trademark right and copyright, a trademark with a certain degree of originality can be protected as a work by the Copyright Law in trademark right affirmation cases. In view of the Copyright Law’s legislative goal of encouraging the creation and dissemination of intellectual achievements, works only need to satisfy the minimum “originality” requirement to be protected by the Copyright Law. The current judicial practice of trademark right affirmation cases does not have a high standard for determining whether a trademark with a certain degree of originality can constitute a work in the sense of Copyright Law. The Copyright Law may protect trademarks with certain originality, such as designed word trademarks, handwritten font word trademarks, combination trademarks with original background devices, and device trademarks. To better and fully protect the rights and interests, it is suggested that trademark owners register the copyright of their trademarks with certain original designs as soon as possible and actively claim the prior copyright of their trademarks as works in trademark right affirmation cases.