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Article of Mr. Jason WANG and Ms. Yan ZHANG published on the China Trademark magazine (Issue 10, 2014): Protection for Prior Copyright in Trademark Disputes

2014-11-22

Mr. Jason WANG and Ms. Yan ZHANG, partners at Beijing East IP Law Firm, recently published the article titled “Protection for Prior Copyright in Trademark Disputes” on the China Trademark magazine (Issue 10, 2014). The China Trademark magazine is a monthly magazine supervised under the State Administration for Industry and Commerce (SAIC, who oversees Chinese Trademark Office and Trademark Review and Adjudication Board) and hosted by the China Trademark Association.

The article presents the authors’ opinions that prior copyright is considered as an important aspect in trademark disputes with various advantages to claim against the disputed trademark, such as automatic protection without registration, automatic protection for cross-jurisdiction and strong protection for cross-class. The article further presents key issues related to the prior copyright protection in trademark disputes based on systematical analysis of relevant judicial practice and cases: (1) originality standard of recognizing a sign as the copyrighted work; (2) evidence proving the ownership including prior creation date and/or publication date of the copyrighted work; (3) evidence proving the substantial similarity between the disputed trademark and the copyrighted work and access to the copyrighted work.

The article emphasizes the analysis on originality standard of recognizing a sign as the copyrighted work in accordance with the Chinese Copyright Law, substantial similarity between the disputed trademark and the copyrighted work, and the applicant/registrant of the disputed trademark has the possibility of having access to the copyrighted work. Furthermore, the authors hold the view that the originality of the work, long term use and/fame of the work, and business relationship are critical factors in determining the access to the copyrighted work.