China: Protecting of Works of Applied Art under Chinese Judicial Practice (Part II)

Last Updated: 21 November 2012
Article by Ding Xianjie and Steven Yao Tang Lei
This article is part of a series: Click Protecting of Works of Applied Art under Chinese Judicial Practice (Part I) for the previous article.

(1) Chaozhou Ge Lan Te Clothes Ltd. vs. Haochang Ltd. (Jiangxi High Court, No.19, 2007)

In this case, the Plaintiff not only brought a claim for protection of copyright, but also sought protection under the Anti-Unfair Competition Law. The Court of first instance held that generally a 'well-known commodity', should be identified based on the following elements: Familiarity of the disputed commodity to the relevant public, the timing, sales amount and percentage of market coverage of that commodity sold in the market, the extent of advertisement promotion, the scale of capital investment, the scope of geographical distribution, and authoritative awards received by the commodity, etc. The 'unique decoration of a commodity' generally refers to the specific designs on the package of the commodity such as the additional words, patterns, colors and formatting. These design elements are added for identifying commodities and increasing aesthetic attributes. The Plaintiff's chinaware commodity shows an obvious difference in terms of decoration from the other relevant chinaware. The main elements which have drawn attention from the public and differentiated the Plaintiff's products from other chinaware are the figure, color, and style, which carry obvious characterized attributes. The decoration of this commodity has been used by the plaintiff in China for many years and has generated distinctiveness. The main attributes of the decoration were the pattern, color and style which constituted an obvious distinctiveness in differentiating the origin of commodity. The relevant public, when looking that type of commodity, will associate it with a specific producer, the plaintiff, and the commodity has achieved a "distinctive" attribute to differentiate itself from other same type of commodities. The pattern, color and style of Plaintiff's commodity have constituted an important label for the relevant public to identify the Plaintiff's product. Therefore, it should be upheld that the "Fa Lan Ci" chinaware, through use, has generated distinctiveness, and constituted the unique decoration of a well-known commodity.

The Court of second instance was of the opinion that: "[e]ven if the unique decoration was faked and there constituted unfair competition, it should be taken as a merger of law if the plaintiff also claimed copyright protection." Therefore, the Court did not deny "works applied art" could be protected as unique decoration.

(2) Shantou City Chenhai District Huada Toy Ltd. vs. Pinhu Bei Si Da Children's Car Ltd. (Jiaxin Intermediate Court, No.7, 2008)

The Plaintiff Shantou City Chenhai District Huada Toy Ltd., a battery-drive toy car maker and seller, sued the Defendant for infringing the unique decoration of their battery-drive toy car product HD-6410 (Pic.14). The Court held that the Model HD-6410 "phantom space car" produced by the Plaintiff Huada Company was a "well-known commodity". The Court also recognized that the "Red Phoenix Eye" front-lights, streamlined body, handle, shimmering color lighting and the tail-wing, looking as a whole, carried obvious unique attributes which differed from other products of the same type. These attributes were not adopted by other products of the same category and were only specially used by this model series. At the same time, they also had a decorative function, to beautify the external appearance of the battery-drive toy car. So, these attributes are ascribed to be the unique decoration of a well-known commodity.

As illustrated by the picture (Pic.14), the external appearance of this battery-drive toy car also has satisfied the required artistic attribute for "works of applied art", but the Plaintiff did not seek protection under the Copyright Law and instead sought protection under the Anti-unfair Competition Law. In the end, the Plaintiff successfully defended their interests.

III. An evaluation and contrast of the three forms of protection listed above

A consolidated analysis of the above forms of protection for "works of applied art" denotes that each of them carries special characteristics:

(1) Protection through the Copyright Law — The merit of this form lies in its automatic protection, as there is no need for registration or approval for the creation of copyright. At the same time, the period of protection is relatively long. Article 6 of the Regulation to Implement International Copyright Conventionsiexplicitly provided that the protection period for foreign "works of applied art" shall be 25 years commencing from the date of creation of the work, even though on the protection of domestic "works of applied art", it was not mentioned in any stipulation of law and regulation, nor in court cases. But in Article 28 of the Amendment Draft to the Copyright Law (the 2nd draft), it was provided that the protection period for works of applied art shall be 25 years and, for the property right within a copyright, 25 years after the date of first publication. Based on this, we may foresee that after the passing of the Second Draft Amendment, protection of foreign and domestic "works of applied art" in China will be made specific. The drawback of protection via copyright is that it requires a relatively high level of artistic attribute and the Courts must recognize the artistic attribute on a case-by-case manner, which rely heavily on the judges' discretion.

(2) Protection through the Patent Law — The merit of this form lies in the simplicity in recognizing the protection scope under Article 59 of the Patent Law- " [t]he extent of protection for the patent right of a design shall be determined by the product incorporating the patented design as shown in the drawings or photographs in patent specifications". As such, judges could ascertain the scope of protection based simply on the approved patent document and without resort to additional discretion. Meanwhile, the volume of authorized design patents in China is very high, as design patents demand no proof of artistic attribute, and the patent application procedures are relatively simple. Therefore, it could be said that it is not too difficult for "works of applied art" to obtain patent authorization. In addition, a higher compensation could be won by going through this form. As to the drawbacks, the protection period for a design patent is only 10 years, and the patent owners have to pay a patent fee annually.

(3) Protection through the Anti-Unfair Competition Law — It is comparatively harder to obtain protection through this form. According to Article 5(1) (b) of the Anti-Unfair Competition Law:

"[The act] of those, without consent, making use of the unique name, package and decoration, or by use of a similar name, package and decoration, of well-known commodity, and which caused confusion with other's well-known commodity and caused the purchaser to mistakenly take it as the well-commodity, will be an act of unfair competition."

To be protected under this form, the property owner must prove that the commodity is "well-known commodity" and prove confusion was in fact caused amongst the relevant public. Therefore this form would likely be a last resort after all other forms of remedy have been exhausted.

As more works of applied art are produced, it is foreseeable that infringement cases may also rise. For manufacturers in this category, the likely first step is to apply for a design patent before marketing their products to the world. In this way, manufacturers can obtain a relatively strong 10-year patent protection, after which they can continue to get protection through the Copyright Law. Meanwhile, with the aforementioned exclusive first 10-year patent, it would also be highly advantageous to get the recognition of a "well-known commodity" and a commodity with "unique decoration". Through the above measures, the manufacturer will be better positioned to gain protection under the Anti-unfair Competition Law.

Footnotes

i Promulgated on September 25, 1992 by the State Council.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

This article is part of a series: Click Protecting of Works of Applied Art under Chinese Judicial Practice (Part I) for the previous article.
Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions