Case 17
The Case of Conflict Between Trademark Application and Prior Copyright
Trial Docket: (2017) Su0509MinChu No. 4625
[Headnotes] Applying for trademark registration is a market act in essence. The applicant should follow the principle of honesty and credibility, and avoid possible conflict with others’ prior right. Otherwise, others’ legal rights and interests may be harmed.
According to Article 32 of China’s Trademark Law, no applicant for trademark registration application may i nf r inge upon anothe r person’s existing prior rights. If the application for trademark registration infringes upon others’ copyright, the application may not be approved and may be cancelled or even be ordered to compensation for infringement even after the application is approved.
[Synopsis]
Plaintiff: A
Chen Defendant: A company in Wujiang City
A Chen is a designer specializing in graphic design work with a certain reputation for his works. The defendant is a textile enterprise in Shengze Town of Jiangsu Province. The dispute between both parties arose from a fine art work designed by the plaintiff. The work is abstractly combined by two elements of swan and lotus, which was filed by the plaintiff with Shenzhen Digital Works Filing Center for record and published in publicly published magazines. The defendant used the design when applying for trademark registration. After his discovery, the plaintiff brought an action on the ground that the defendant infringed upon his right to authorship, reproduction, distribution and information network dissemination, etc., claiming for an immediate stop of using the trademark and a compensation of 40,000 Yuan as economic losses. The defendant admitted in the trial that the trademark its used for registration was produced by a color printing company that commissioned the printing of brochures when the company was incorporated, that it was very likely downloaded by color printing company on the Internet and infringed upon the author’s copyright because it did not examine its originality.
The court ruled that, according to Article 32 of China’s Trademark Law, no applicant for trademark application may infringe upon another person’s existing prior rights, nor may he, by illegitimate means, rush to register a trademark that is already in use by another person and has certain influence, that the plaintiff in the case has existing prior right to the design works created by himself, and that the defendant’s use of such works without authorization constitutes infringement upon the plaintiff’s copyright. Through mediation, the defendant agreed to pay 18,000 Yuan to the plaintiff’s as the fee for using the design in the end, and the plaintiff agreed that the defendant continues to use the registered trademark during its validity period.
[Judge’s Comment] This case involves the conflict between the trademark application and other rights, namely, the copyright protection of the existing prior right. Both parties voluntarily reached a settlement agreement through conciliation in which the copyright owner authorizes the trademark to be continually used by the defendant for record and the trademark right owner paid a reasonable consideration to the copyright owner. By doing so, the interests of the copyright owner and trademark right owner are effectively balanced and a win-win effect is achieved after a game and balance of different rights.
（Translated by Zheng Xiaojun, Yuan Renhui)
（Translated by Zheng Xiaojun, Yuan Renhui)
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