According to Article 32 of China's Trademark Law, applying for trademark registration shall not infringe upon the existing prior rights of others, nor shall it use improper means to preemptively register a trademark that has already been used by others and has a certain impact.

The "prior rights" here refer to other prior legal rights besides trademark rights, generally including trade name rights, design patent rights, copyright, name rights, portrait rights, etc. Among them, copyright, as a statutory prior right, plays an important and crucial role in trademark opposition, invalidation, and revocation cases.

1、 Case of prior copyright infringement against registered trademark

China National Intellectual Property Administration v. Senke Products Co., Ltd. for invalidation (trademark in dispute: No. 18889849, Class 35 "")

Basic information of disputed trademark

Registered by: Beihai Haijiang Food Co., Ltd

Application date: January 14, 2016

Registration date: February 21, 2017

Quoting trademark information

Registered by: Senko Products Co., Ltd. (Senko Corporation)

Registration number: 10709661

Application date: March 31, 2012

Registration date: July 21, 2013

（1） Case Summary

During the trademark review stage, Senke Company claimed that the registration of the disputed trademark violated Article 30, Article 32, and Article 10 (1) (8) of the 2013 Trademark Law. In addition to submitting information and evidence of prior trademark registration, Senke Company also submitted a copyright registration certificate and related promotional and media evidence. After trial, the State Intellectual Property Office determined that the disputed trademark and the cited trademark have differences in overall composition, calling, composition elements, and visual effects. Even if they are used together in similar services, ordinary consumers can distinguish them with general attention. The trademarks of both parties do not constitute similar trademarks used in the same or similar services as referred to in Article 30. The design techniques, composition elements, and visual effects of the disputed trademark differ from the works claimed by Senke Company, and do not constitute substantial similarity. The registration of the disputed trademark does not constitute "infringement of existing prior rights (copyrights) of others" as referred to in Article 32 of the 2013 Trademark Law. Maintain the registration of the disputed trademark.

During the administrative litigation stage, both the first and second instance courts determined that: (1) the disputed trademark was approved for use in "displaying goods on communication media for retail purposes; providing commercial information through websites; providing online markets for buyers and sellers of goods and services; franchising commercial management; and promoting on behalf of others" services, which constituted a similar trademark used in the same or similar services as the cited trademark. The registration of the disputed trademark violated Article 30 of the 2013 Trademark Law. (2) In this case, Senko Corporation claims that its prior copyright works are composed of the duck pattern, which incorporates the designer's certain aesthetic concepts and has a certain artistic beauty. The overall appearance has a certain degree of originality, which meets the requirements of copyright for originality of works and constitutes an art work protected by copyright law. The graphic part of the disputed trademark logo consists of the head of a duckling wearing a crown and a broken eggshell. Compared with the duckling work claimed by Senke Company for prior copyright, although the disputed trademark only includes the head of the duckling, the two have significant similarities in the constituent elements of the head, eye expressions, mouth lines, and other aspects. In addition, according to the copyright registration certificate submitted by Senke Company, the registration date of the work is April 24, 2014, and it was created before the application date of the disputed trademark. Combined with the promotional evidence submitted by Senke Company, the work has been publicly used before the application date of the disputed trademark, and there is a possibility for Haijiang Company to have access to the work. Moreover, Haijiang Company has not provided evidence to prove the creative source and process of the disputed trademark graphic part, and cannot confirm that the similarity between the two is a coincidence in creation. Therefore, based on the existing evidence, the original judgment determined that the disputed trademark and the art works involved constituted substantial similarity, and further determined that the registration of the disputed trademark infringed upon the prior copyright enjoyed by Senke Company, violated Article 32 of the 2013 Trademark Law, and was not inappropriate. This court confirms it.

1. Copyright has the characteristic of automatic protection, which means that the copyright is generated and protected from the date of completion of the work. In addition, copyright has a wide scope of protection, a long protection period, and is not limited by trademark categories, making it a powerful weapon in combating malicious trademark registration applications. The copyright registration certificate is an important part of this weapon. In addition, the commissioned creation contract, creative process draft and original documents, as well as the evidence of use and publication during the initial stage of the work creation, also need to be properly preserved and used together with the registration certificate to enhance its evidential power.

2. In order for copyright to play an important role in trademark protection cases, in addition to registering as early as possible and retaining evidence files of creation, the following points should also be noted:

(1) For creative graphic logos, special fonts, or promotional slogans, it is recommended that applicants apply for copyright registration of the logo or font at the same time as applying for trademark registration, achieving dual protection of trademark and copyright.

(2) Simple line combinations or known common text and letter fonts cannot be protected by copyright. The court believes that the overall expression of the symbol is relatively ordinary and cannot be distinguished from the expression in the public domain, and cannot meet the creative height required for the originality of an artwork. Therefore, the original court considers that the symbol does not constitute an artwork.

(3) It is not recommended to register copyright for text names that contain country names or phrases with negative effects. Although the voluntary registration system is implemented for copyright registration without substantive examination, the current national copyright registration authorities tend to be strict in their review of registration. Applications for works containing the name of a country or words with negative impact are generally not approved for registration. In addition, even if one is fortunate enough to pass the examination and obtain a copyright registration certificate, it does not necessarily extend to the approval of the same trademark registration. For example, in the case of the rejection of the trademark "Pei Weng Feng Shui and Tu" in Class 41, No. 57497869, the applicant argued that "the disputed trademark was originally created by Pei Weisheng and already owns its copyright. The application for registration of the graphic trademark was purely for the legitimate protection of its copyright." After the second instance court's trial, the disputed trademark was composed of the Chinese characters "Pei Weng Feng Shui" and Tu, and "Feng Shui" was designated for use in services such as "schools (education); book publishing; religious education". Registering and commercially using it as a trademark could easily have adverse social effects. Therefore, the registration application for the disputed trademark violated the provisions of Article 10, Paragraph 1, Item 8 of the Trademark Law The registration of copyright for a disputed trademark is not a basis for determining its trademark registration. In addition, whether the disputed trademark was originally created by Pei Weisheng does not affect the court's judgment on whether the disputed trademark should be preliminarily approved.