Sometimes, a trademark dispute is not really about the trademark.
Recently, We had the opportunity to succeed in two trademark invalidation proceedings in China concerning two trademarks. What makes these cases particularly interesting is how the trademarks were ultimately invalidated.
Not because the earlier trademark right was still valid.
Not because we were able to establish well-known trademark status in China.
Not because the goods bear the marks were considered confusingly similar.
Then came copyright.
The device element of our client’s mark had been independently created and was recognized by the China National Intellectual Property Administration (CNIPA)as a copyright-protected fine art work. CNIPA found that the disputed trademarks were almost identical to the artwork in their composition, design details and overall visual effect. There was also evidence that products bearing the artwork had been sold in China before the disputed trademark applications.
Consequently, the CNIPA concluded that the trademark registrant had access to the work and that the unauthorized registration infringed upon the prior copyright. The CNIPA held the view that a prior copyright constitutes a "prior right" under Article 32 of the Trademark Law of China. Yet the trademarks were ultimately declared invalid on the basis of the prior copyright in the artwork.
The point worth reflecting on here is not merely the outcome of the two cases, but also the way intellectual property (IP) rights can complement one another. A trademark can be viewed in terms of rights over a sign used to distinguish goods/services. However, if that same sign also embodies a creative work, copyright can serve as a distinct and highly significant layer of protection. In instances where trademark rights alone no longer provide a sufficiently robust foundation, this additional layer of protection can sometimes prove decisive. When the path to trademark protection becomes difficult—for example, if trademark rights have lapsed, evidence of renown is insufficient, or the goods are not deemed similar—an alternative form of IP protection can open up a different legal avenue. This scenario underscores, once again, that a brand should not rely on a single intellectual property right for protection.
In practical terms, when building and safeguarding a brand, one should perhaps ask not only: “Have I registered the trademark?”
But also:
“Beyond the trademark, what other intellectual property assets contribute to this brand’s value — and have they been adequately protected?”
Duong Thi Van Anh - Patent & Trademark Attorney
#IntellectualProperty #Trademark #Copyright #China #Vietnam #IPLaw #TrademarkProtection #ASEAN