Conflicts between copyright and trademark right
Definitions of copyright and trademark right
According to the Chinese Copyright Law, copyright refers to the civil right enjoyed by the creators of literature, art and science works or other citizens, legal persons or entities without legal personality who are enjoying copyright, so as to dominate their works. Specifically, it includes copyright-related personal rights and property rights in the works. The copyright-related personal rights belong to author himself, including the rights of publication, authorship, amendment and integrity; the property rights in the works refers to the copyright owner’s rights to use his works and to get payment.
As for the trademark right, it is the right enjoyed by trademark registrants with regard to their trademarks, its core lies in the exclusive right to use trademark. As we all know, trademark is a kind of identifier used in the industrial activities, so the role of trademark right is to maintain order in industrial activities.
Co-opetition and cross-protection of copyright and trademark right
Protecting works by copyright -- theft prevention
Case: Shanghai Animation Film Studio (SAFS) sues Hongyu Cosmetics Co,. Ltd for infringement of their property rights in the work “Hulu Brothers”.
In general, protecting rights in original works by copyright is common in trademark field. In the case mentioned above, the court eventually affirmed that the involved trademark and packaging constitute copy of plaintiff’s work, SAFS succeeded in defending their rights.
Protecting trademarks by copyright -- rush registration prevention
Case: Trademark opposition lawsuit between Shanghai Foxtown and Silvio Tarchini.
Rush registration can also be prevented by copyright. In the above case, owning to the copyright registration in National Copyright Administration Of China, Mr. Tarchini succeeded in the appeal, managed to prevent his trademark, which has not been registered in China, from mala fide registration.
Conflicts between copyright and trademark right -- a dilemma
Case: Lawsuit concerning the drawing of Wu Song 's Fighting Tigers.
Adjudication of conflicts between copyright and trademark right is also a dilemma. Just like the above case, in practice, relevant authorities will usually protect trademarks which has gained popularity. But when copyright and trademark right coexist, it puts judges in a dilemma. This is also a new conundrum in intellectual property protection.
Cross-protection of copyright and trademark right -- especially recommended for device mark
Case: Trademark opposition lawsuit between K2 Corporation and Shenzhen Lafuma
In the above case, due to the insufficient evidence of trademark similarity and copyright, and the plaintiff lacks proof of copyright, the lawsuit was very tough and almost came into a deadlock. This case shows the importance of copyright protection for trademark (especially the device mark).
Suggestions about the protection of trademark right and copyright
Taking copyright factors into consideration in trademark design, so as to avoid infringement of others’ legal copyrights;
Licensing of more popular or distinctive design elements can be obtained by negotiation, thus giving trademarks more reputation and advantages in the market;
During the application of trademark registration, it is advisable to consider seeking for copyright protection, especially for the device mark, so as to extend the protection. Copyright is not restricted by class; its registration takes less time and doesn’t need to undergo a substantive examination. So if you are cautious about the protection of your design, in addition to the trademark application designating specific goods or services, you can also consider applying for copyright registration in order to get more comprehensive protection;
Please note, copyright is acquired at the birth of work, but if it is registered by third parties as trademark, but you cannot provide evidence of your copyright, then there is no way to protect your work; in other word, even if copyright registration is not in your consideration, valid relevant evidence should be preserved;
When trademark in logo cannot be registered, but you are really concerned about the trademark design and in order to prevent your creative ideas from being pirated by others, you can consider copyright registration.
At present, intellectual property owners’ sense and understanding of copyright is still insufficient, but copyright-related infringements are frequent. We hope this article can do some help in your trademark and copyright protection.