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The Judicial Judgment of Prior Copyright in the Case of Trademark Approval and Affirmatio

2020-03-26 root in (Translated by Yuan Renhui) Zhang Lingling
In accordance with Article 32 of Trademark Law of the People's Republic of China, No applicant for trademark application may infringe upon another person's existing prior rights.

In accordance with Article 32 of Trademark Law of the People's Republic of China, No applicant for trademark application may infringe upon another person's existing prior rights. Its Article 33 provides that a holder of prior rights or an interested party may, within three months from the date of the preliminary examination announcement of a trademark, raise objections to the Trademark Office if it is of the opinion that the trademark is in violation of Article 32 of this Law. Article 45 provides that where a registered trademark is in violation of Article 32 of this Law, the holder of prior rights or an interested party may request the Trademark Review and Adjudication Board to declare the registered trademark invalid within five years upon the registration of the trademark. Therefore, whether the prior right is infringed or not is an important cause for the application of trademark registration, objection and invalid declaration. According to the provisions of Chapter 5 of China's General Principles of the Civil Law, copyright is a kind of civil rights protected by law. China's Supreme Court also made it clear in a judgment (2016) Zui Gao Fa Xing Shen No. 2270 that copyright is a kind of prior rights according to the attributes and characteristics of copyright. It has been a common type of case in judicial practice to prevent goods or service trademark from being registered or applied for invalidation declaration. The copyright to graphic trademark and artistic trademark as an artwork has often been invoked to prevent it from being registered by others for use, and it is particularly true where the prior trademark right is difficult to be registered because there is no similarity between the applied trademark and the prior trademark. In addition, trademark owners outside China may usually apply for an invalidation declaration of prior trademark at first where the registration for such prior trademark is approved when filing the trademark registration application in China. There have been different standards in terms of cognition and judgment in long judicial practice because whether there is a prejudice on other's prior copyright in cases involving trademark authorisation and affirmation touches upon two fields: copyright and trademark. This essay is planned to make some explorations in the application of the interpretation for the judgment of prior copyright by combination of typical cases according to the Regulations of the Supreme People's Court on Several Issues Concerning the Hearing of Administrative Cases Involving the Authorisation and Affirmation of Trademark Rights (the Regulations).

I. Basic ways for the ascertainment of prejudice on prior copyright
Because the "works" to which prior copyright is claimed is usually expressed in the form of trademark, whether the trademark constitutes a work and whether there is similarity between two "trademarks" have been issues for argumentation all the time. The argumentation have been centered around that whether the standards for such determination should follow the principles for the work under Copyright Law or those under the context of Trademark Law in order to play the role of prior right clause in its stopping trademark squatting. Article 19 of the Regulations provides that where a party claims that the disputed trademark would negatively impact its copyright, the people's court should examine the claim based on relevant provisions in the Copyright Law, which includes a determination of the work, rights ownership and infringement. There is no clear provision on whether a logic order should be followed to make such determination from the foresaid three aspects. There have been practices in the case of copyright infringement of civil rights that the order for the three aspects is that the ascertainment of work at first, then the rights ownership ascertainment and the determination of infringement at last. Such basic practice should also be followed in the case of trademark authorisation and affirmation, and the latter aspect is not excluded from being applied in advance. For example, in judgment (2016) Zui Gao Fa Xing Shen No. 2270, China's Supreme People's Court (SPC) made only a judgment on whether the trademark involved in the case was substantially similar to the objected trademark and made no judgment on whether it constituted work and its right ownership attribution after it concluded that no similarity existed. However, there may be a risk of failure to hear some issues if the court of first or second instance follow such practice. Therefore, the author holds that the general ways for the determination of whether there is prejudice on prior copyright should be judged as fol lows: whether the trademark involved in the case constitutes a work under Copyright Law; whether the claimant for objection or invalidation is the copyright owner or interested person; whether the completion time of the work is earlier than the date the trademark is registered; whether the trademark applicant or registrant has the possibility to contact the work; whether the two trademarks are identical with or similar to each other in essence. When it comes to the judgment of works, ownership attribution and substantive similarity, the provisions under the Copyright Law should be applied, meanwhile, with consideration of the principle of good faith under China's Trademark Law as the basic principle for such determination.

II. The judicial determination of whether trademark label involved constitutes a work under Copyright Law

According to Article 2 of the Regulations for the Implementation of Copyright Law of the People's Republic of China, work (s) shall mean original intellectual achievements in the literary, artistic, and scientific domains that can be reproduced in a tangible form. Originality and reproducibility are two core elements of a work. China's law makes no clear provisions on the originality level of the work. In judicial practice, whether there is originality and the height of originality have been the focuses and difficulties in the determination of work. There are also views that it is impossible to determine the existence of originality and to distinguish different originality levels. It is therefore the extent of originality that is the key for its constitution of work.

Although both the copyright acts of the Anglo-American law countries and the copyright laws of the civil law countries stipulate that the works must be original, their requirements for such originality are not the same and the latter imposes higher requirements than the former. China's legal system as a whole is close to the civil law system, but its Copyright Law also draws on the copyright laws from Anglo-American law system and the civil law system. A certain degree of originality is required in China's judicial practice for the ascertainment of work(s). However, there have been no unified standards for the specific originality, namely, the originality under the law. In China's Judicial practice and in the context of its Copyright Law, where the existence of some originality is required to be determined, on the one hand, there should be a comparison between the work and common expressions in order to determine whether there is existence of such originality or not; on the other hand, there should also be a consideration of different requirements for different types of "work(s)" in terms of originality and the motivation, thoughts, connotation, and other factors. In addition, the determination of originality, scope of protection and essential similarity is mutually influenced and dialectically unified, and the originality can not be determined without consideration of any other factors. When it comes to the trademark authorisation and affirmation case, the "work(s)" to which prior copyright is claimed is usually also trademark. It is more confused and complex to determine whether such label constitutes the work under Copyright Law because trademark is, in general, featured by brief text, simple lines, forceful effect, logo-fication and other features, due to which it seems simple and lacks of aesthetic perception. It has been shown from the cases of judicial practice in China that the "work(s)" to which prior copyright is claimed in trademark cases involving authorisation and affirmation is usually graphic trademark or text trademark as an artwork, namely, fine art work under Copyright Law. Regulations for the Implementation of Copyright Law of the People's Republic of China provides that fine art works refer to paintings, calligraphy, sculptures, and other two-or- three-dimensional aesthetic works of formative arts that are formed by lines, colors, and/or other patterns. Although the Copyright Law Regulations requires that fine art work shall be two-or- three-dimensional aesthetic works of formative arts, there should also be a differentiation between the legal determination and artistic determination on whether the work is original. According to the principle of aesthetic nondiscrimination, originality is a requirement of artistic value without lowest extent. In fact, originality stresses more on the prohibition of reproduction in practice,  and as a result, it will be sufficient if the work is created by the right owner himself. That is to say, there is only a requirement of some original elements. If such judgment standard is applied in China, it will be very easy for most works to satisfy the requirement of originality, which will be conducive to a better play of the role of prior right clause in its prohibition of trademark squatting as the legislative purpose under Trademark Law.

There is also another question for the determination of originality: whether the originality can be directly ascertained if both parties agree? Both judgments on GANGHENG case and GREGORY mounta in-shape graph case mentioned that the courts shall not examine and determine whether the work(s) involved in respective case has originality because both parties have no objection to the originality. From the point of view of the Procedural Law, the scope of trial for the court of appeal should be limited to the facts and reason which are appealed. However, just as mentioned above that the determination of originality is a legal determination instead of a fact ascertainment, the question needs to be discussed is whether such determination can be made on the fact recognizance by both parties instead of judicial review by the court.

III. Judicial determination of ownership and interested person of the work(s)

Article 11 of China's Copyright Law provides that the citizen, legal entity or other organization whose name is mentioned in connection with a work shall, in the absence of proof to the contrary, be deemed to be the author of the work. Article 7 of Interpretation of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Civil Cases Involving Copyright Disputes provides that a manuscript, original copy, lawful publication, copyright registration certificate, a certificate issued by an authentication authority, or a contract under which a right is entitled, etc. provided by a party may be used as evidence insofar as it is copyright-related; and that a natural person, legal person, or other organization whose name is affixed to a work or product shall be deemed as the owner of the copyright or the copyrightrelated rights and interests, unless there is evidence to the contrary. Article 19.2 and Article 19.3 of the Regulation make clear provisions in this regard by a combination of the features of trademark on basis of the ownership determination provided for in the foresaid articles under Copyright Law and judicial interpretation. However, attention should be paid to the trademark announcement and the validity of certificate of trademark registration. There has been record of negating such announcement and certificate in judicial practice. In recent judicial cases, such announcement and certificate has still been rejected as evidence for copyright ownership attribution. For example, SPC ruled in its judgment (2016) Zui Gao Fa Xing Shen No. 2144 that trademark is of a territorial nature, and that holding a U.S. certificate of trademark registration can only proves that the trademark registrant has obtained the right to apply for the registration of the graphic mark in the United States which can not prove that the registrant certainly has the right to exercise such copyright in China. Article 19.3 of the Regulation provides that such announcement and certificate are the preliminary evidences in favor of the interested person of the copyright, which has, to some extent, broken through the precedent cases. Therefore, it is a negation of negation in terms of understanding the question and an affirmation of a kind of evidence in favor of the interested person of the copyright. Does this mean that the invalidation declaration or objection raised by the copyright owner with the certificate of trademark registration will not be sustained, but the same claims wil l be sustained in the name of interested person of the copyright? Should aufklarungsreeht or interpretation be given to the shift between the two identities, or should ascertainment be made on basis of the judgment of evidence? The author believes that there should be a prudent attitude toward the validation of trademark announcement and trademark registration certificate, which should go through further test in judicial practice.

IV. Judicial determination on the constitution of infringement upon copyright

In civil case of copyright infringement, contact plus substantial similarity is the basic method of judgment. In terms of contact, the date for fact judgment is usually made by whether the date for the completion of the work is earlier than the date when the objection was raised or invalidation declaration was applied, and whether the work has been published or not. In judicial practice, the forms for the publication of prior copyright include trademark application, the use of trademark in goods and service or for the purpose of advertisement or publicity, etc., all of which needs evidences to prove. In particular, evidence in support of the claim that the prior copyright is first used or published outside China needs not only a translation, but also a notarization, in order to complete the formal requirement, and then for the determination whether it should be admitted as evidence. For example, SPC ruled in its judgment (2016) Zui Gao Fa Xing Shen No. 2144 that no evidence shall be admitted if it has no legal form. Substantial similarity is relatively complex to determine. According to the judgment criteria for civi l infringement upon copyright, substantive similarity is a comparison of the part with originality after an abstract filter. However, in the case of trademark authorisation and affirmation, the comparison between the disputed trademark and the prior work usually focuses on the similarity between them, whereas there is an overlooking of the differentiation between the original part of the prior work and the part from habitual design or outside the protection of copyright law, which is a comparison between the prior work as a whole with disputed trademark. As a result of such comparison, many contents outside the protection of copyright law exert influence on the determination of similarity. This results in a protection for the work with prior copyright beyond the scope under Copyright Law, which runs contrary to the criteria for the foresaid determination of originality. Therefore, the author believes that the determination of such similarity should be regressed to the context of Copyright Law, that the comparison should be focused on the original part, and that, the appropriate extent for the similarity should be basically the same as the determination of similarity for the work without high originality.

(Translated by Yuan Renhui) 

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