Author: Liu Wenjuan, Partner at BEIJING MINGDUN LAW FIRM

Article 32 of the Trademark Law of the People’s Republic of China (hereunder refers to “PRC Trademark Law”) stipulates that an application for trademark registration shall not infringe the prior rights of others. According to the Guidelines for Trademark Examination and Adjudication issued by the China National IP Administration (“CNIPA”), the above-mentioned 'prior rights' include other’s legitimate prior rights and interests except prior trademark rights that should be protected, including but not limited to prior trade name rights, copyrights, and design.

Regarding the protection of prior copyrights, the Guidelines for Trademark Examination and Adjudication further stipulate that the applicable requirements are as follows: 1) before the application for registration of the disputed trademark, others already enjoyed the copyright earlier, and the copyright is still valid; 2) the disputed trademark is identical or substantively similar to the prior copyrighted work; 3) the applicant for the registration of the disputed trademark has access to or has the chance to get access to the prior copyrighted work; 4) the application for registration of the disputed trademark is unauthorized..

In the author's view, 1, 3, and 4 of the above applicable requirements are undoubtedly essential, while the applicable requirement 2 does not seem to be necessary to protect the prior copyrighted work. Strictly applicating all the above requirements may result in insufficient protection of prior copyrights.

The author has handled a number of cases in which the trademark registration application infringed other’s prior copyrighted works. In such cases, if the disputed trademark is 'identical or substantively similar' to the prior copyrighted work, the probability of the claim that the trademark application infringes the prior copyrighted work was supported by the CNIPA is very high, provided that other applicable requirements are met. However, if a trademark applicant recreates a prior copyrighted work to a certain extent before proceeding with a trademark application without the authorization of the prior copyright owner, CNIPA might intend to hold that the disputed trademark has acquired originality different from the prior copyrighted work. In this situation, it is difficult for CNIPA to determine that the disputed trademark is identical or substantively similar to the prior copyrighted work, and thus does not support the claim of the prior copyright owner. Therefore, the practitioner has gradually formed the impression that, all other things being equal, the requirement for the similarity between an earlier copyright and a disputed trademark ('identical or substantively similar') is higher than that of a prior trademark right and a disputed trademark ('identical or similar').

The author holds the opinion that the above conclusion is not accurate. According to the PRC Copyright Law, “identical or substantively similar” to the prior copyrighted work is not a legal requisite for the copyright infringement claim. Unlike the exclusive right to use a registered trademark, the copyright of a work has many rights and is open. Article 10 of the PRC Copyright Law stipulates that a copyrighted work enjoys 16 rights, including the right of publication, the right of authorship, the right of modification, the right to protect the integrity of the work, the right of reproduction, the right of distribution, the right of rental, the right of exhibition, the right of performance, the right of screening, the right of broadcasting, the right of information network dissemination, the right of filming, the right of adaptation, the right of translation and the right of compilation, as well as a fallback 'other rights that shall be enjoyed by the copyright owner'. In addition, the definition, scope of protection and form of infringement of different rights are also different. Thus, the diversity of copyright seems to make it difficult to identify all copyright infringements with one or two applicable requirements.

The applicable requirement 2 of the above-mentioned Guidelines for the Examination and Adjudication of Trademarks, namely 'the disputed trademark is identical or substantively similar to the prior copyrighted work' seems the requisite to protect the 'right of reproduction' in the copyright of a work but cannot protect all the rights of different kinds of work. Taking the 'right of adaptation' of a work as an example, Article 10.1.14 of the PRC Copyright Law stipulates that 'the right of adaptation is the right to change a work and create a new work with originality'. It can be seen that the altered work is a new work of originality compared with the original work, and it is obviously unlikely that it is 'identical or substantively similar' to the original work. Therefore, it seems that the right of adaptation of an earlier work is difficult to be protected under Article 32 of the Trademark Law. As a result, such a provision of the legal requirements of Article 32 of the PRC Trademark Law may lead to the grant of the trademark rights which infringes the adaptation rights or other rights of the prior copyrighted work.

The author believes that the provisions of Article 32 of the Trademark Law focus on protecting legitimate prior rights and interests from preemptive registration by others. Clearly, all corresponding copyrights in prior works, including adaptations, should be protected. Article 52 of the PRC Copyright Law stipulates the provisions of identifying the infringements of copyright. This rule should be able to be used as a criterion for determining whether the disputed trademark infringes the copyright of other’s prior work. Therefore, 'the disputed trademark is identical or substantively similar to the prior copyrighted work' as stipulated in the Guidelines for Trademark Examination and Adjudication should not be deemed as the essential requisite when determining whether the trademark infringes the prior copyright.