Foreign companies often face challenges of attacking the malicious trademark registrations by third parties when entering the China market. However, when a malicious trademark consists of a logo and a word component, a highly effective strategy is to rely on the client's prior copyright to attack the malicious trademark in opposition and invalidation actions. The copyright claim applies regardless of the goods or services covered by the malicious trademark.

Legal Basis of Copyright Claim

Article 32 of the China Trademark Law stipulates that "No applications for trademark registration may infringe upon the existing prior rights of others, and bad faith registration by illicit means of a trademark with a certain reputation already used by another party shall be prohibited." "Existing prior rights of others" here refer to the company's trade name right, design right, copyright, and individual's name right, etc.

To adapt to the prior copyright under Article 32, the client must present evidence that satisfies the following requirements:

1. Prior to the filing date of the malicious trademark, the client has already enjoyed the valid copyright for the art work.

2. The malicious trademark is identical or substantially similar to the client's prior art work that enjoys copyright.

3. The malicious party had access or could have accessed to such art work prior to the filing date of the malicious trademark;

4. The malicious party did not obtain the client's authorization to apply for the art work as a trademark.

To fulfill the above requirements 2 and 4, the arguments are straightforward, but for requirements 1 and 3, the client needs to provide the following evidence to prove it.

1. The client has already enjoyed the copyright for the art work

First, it is crucial for the client to assess whether their logo possesses originality, as this is the fundamental basis for claiming copyright protection. The art work must be created independently, rather than imitated others, and possess a sense of beauty. Simple graphics, letters, etc. are generally not considered as an art work and should not be protected as a copyright.

Second, the client can provide evidence to prove its ownership of the art work. Such evidence includes prior publication of the art work, materials of prior creation and completion of the art work, materials of prior ownership obtained through inheritance, transfer，etc., advertising materials on newspapers and magazines, online media, sales materials, exhibition materials etc.. Copyright certificate that predates the malicious trademark could be a prima facie evidence to prove the client enjoyed the prior copyright for the art work.

From our experience, in the absence of sufficient evidence to the contrary, the CNIPA generally determines that the client enjoys prior copyright for the art work. If such evidence is gathered from overseas sources, it should be notarized.

2. The malicious party had accessed or may have accessed to such art work prior to the filing date of the malicious trademark

Usually, evidence proving the malicious party had accessed to such art work is rare, but mostly, the client prior used the art work as trademark in business activities in China, and thus the use evidence, such as contracts, invoices, delivery notes, customs declaration, pictures, reflects the sales and advertisement of the goods or services bearing the art work in China would be sufficient to prove the malicious party may have accessed to such art work prior to the filing date of the malicious trademark.

Conclusion

Claiming prior copyright in the opposition and invalidation action is a widely used and effective strategy to attack a malicious trademark. It is advisable to assert prior copyright when the trademark includes a logo. In addition, it is crucial to promptly apply for copyright registration and gather and preserve evidence relating to the creation, usage, publication, and etc. This will significantly strengthen the enforcement of copyright in the opposition and invalidation proceedings.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.