Copyright is one of the main types of intellectual property right. It promotes creativity and innovation by providing a level of protection and compensation for the creator's investment of time, effort and creativity in their published material.

According to the provisions of the Copyright Law of the People's Republic of China, the term "works" refers to intellectual achievements in the fields of literature, art, and science that are original and can be expressed in a certain form, including:

  1. Literary works;
  2. Oral works;
  3. Music, drama, storytelling, dance, and acrobatic art works;
  4. Fine art, architectural works;
  5. Photography works;
  6. Audiovisual works;
  7. Graphic works and model works such as engineering design drawings, product design drawings, maps, and diagrams;
  8. Computer software;
  9. Other intellectual achievements that meet the characteristics of works.

However, there are also some types of textual content that are not protected by this law, such as:

  1. Laws, regulations, resolutions, decisions, orders of state organs, and other legislative, administrative, or judicial documents, and their official translations;
  2. Purely factual information;
  3. Calendars, general tables, general forms, and formulas.

So, how to fight against a trademark by citing prior copyright? What is the relationship between copyright works and trademarks? In this article, we will focus on "art works." The most common form of art works is devices with a sense of design. They must have both the originality required by China Copyright Law and the distinctiveness required by China Trademark Law.

If this device is both registered as a trademark  and recorded for copyright, in practical protection, it will bring a more convenient and quicker process of protection for the device.

According to Article 32 of the Trademark Law: the application for trademark registration shall not harm the prior rights of others and shall not register a trademark that has been used by others and has a certain influence by improper means. The prior rights mentioned here include copyright.

Without the authorization from the prior copyright owner, applying to register an art work protected by the China Copyright Law of another person as a trademark should be recognized as harming the prior copyright of others. The disputed trademark should not be approved for registration or should be declared invalid. "Works" here refers to the works protected by the China Copyright Law. The prior copyright here means that the creation of the work has been finished before the filing date of the disputed trademark.

If a third party's applied-for trademark is substantially similar to a prior copyright within the copyright protection period, the trademark applicant may have accessed to or have possible access to the previous copyright, and the trademark applicant has not obtained authorization from the prior copyright owner, the third party's trademark application or registration shall be considered as harm to the prior copyright, and such application shall not be approved for registration or shall be invalidated.

The copyright registration certificate obtained before the filing date of the disputed trademark can be used as the basis show the prior ownership of the copyright.

In a trademark vs. trademark case, third parties must first provide sufficient evidence to prove prior use of registration of the device trademark. Then further consideration should be given to whether the designated goods/services of both trademarks are similar.

In contrast, in a copyright vs. trademark case, it is not necessary to consider whether the designated goods or services are similar. Only evidence needs to be provided to prove that the copyright owner has prior ownership over the copyright and is within the copyright protection period that the disputed trademark is substantially similar to the art works, and that third parties have had or may have had access to the copyrighted art works. In other words, a prior copyrighted art work can be used to challenge a trademark in all 45 classes. From this perspective, the protection power of copyright is very strong.

Although a work is entitled to copyright from the date of its creation, the copyright registration certificate can be used as preliminary evidence of copyright ownership. As mentioned above, the copyright registration certificate obtained before the filing date of the disputed trademark can serve as preliminary evidence of prior copyright ownership. Therefore, the importance of copyright recording is self-evident.

We recommend the copyright owner applying for the copyright certificate for their art works after they finished creating it.

Nowadays, not only the copyright certificate will be deemed as the crucial evidence when protecting the prior copyright but also the new tool Time Stamp certificate can also be serve the same function. 

Timestamp is a sequence of characters or encoded information identifying when a certain event occurred, usually giving date and time of day, sometimes accurate to a small fraction of a second.

Usage of the term has now expanded to refer to digital date and time information attached to digital data, and the time stamp has been widely used for IP protection, E-commerce, E-services, etc.

According to Regulations of the Supreme People's Court on Several Issues examined by the Internet Court, "The electronic data submitted by the parties can prove the authenticity of evidence through the fixed and tamper-proof technical means or through the certification by the electronic forensic evidence platform, can be considered, such as the electronic signature, trusted time stamp, hash value verification, block chain, etc." 

Both ways are available to prior copyright owners to record the copyright to show the ownership of the copyright.

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.