Can copyright refute trademark rights?

1. The conflict between trademark right and copyright refers to the legal disputes arising from different civil subjects enjoying trademark right and copyright respectively for the same object. The conflict between trademark right and copyright is one of the most typical intellectual property conflicts, and it is also one of the problems that often appear in judicial practice and cause heated discussion in academic circles. At present, China lacks specific and clear legal norms to adjust it. How to identify and deal with the conflict between trademark right and copyright is worthy of our in-depth discussion in theory and practice.

Generally speaking, the objects of copyright and trademark right are different in legal nature. The protection of copyright is based on the originality (or originality) of the work, and its object belongs to the fruits of intellectual labor; The protection of trademark right is based on the distinctiveness (or identifiability) of trademark, which is used to distinguish the providers of goods or services, and its object belongs to industrial and commercial trademarks. But the boundary between the two is not clear. Sometimes, the process of designing a trademark is also a process of creative intellectual labor. When a trademark reaches a certain creative level, it can become a work in the sense of copyright law. If the trademark registrant and the trademark designer are the same subject or authorized by the trademark designer, there will be no conflict of rights; If one party applies for a registered trademark or uses it as a trademark without permission, it will cause conflicts with the copyright of others.

Second, the conflict between trademark right and copyright.

1, text marks and text works

Word mark refers to a trademark with words as its constituent elements. The characters here include Chinese and foreign languages. There are many forms of expression of Chinese characters, which can be ordinary fonts, calligraphy fonts, and graphic art fonts.

Generally speaking, because written works have a certain length, they often do not meet the requirements of trademark distinctiveness stipulated in the Trademark Law. Once, an enterprise applied for the registered trademark of the great man's poems on cigarette products, which not only involved copyright protection, but also caused adverse social impact, and the trademark was finally rejected.

In practice, there are a large number of cases in which the parties apply for registered trademarks for some short sentences. The short sentences here are usually advertising terms used and publicized by enterprises for a long time, some of which are original and can constitute works protected by copyright law. For example, "stringing up every moment of life" used in a movie advertisement, and "giving a computer a Pentium" used in a processor advertisement belong to this category. Applying for a registered trademark for a phrase originally created by others without permission will cause a conflict between trademark right and copyright, and then the trademark will be revoked because of infringement of others' copyright.

2 graphic trademarks, three-dimensional trademarks and works of art, photography and architecture.

Three-dimensional trademark (or three-dimensional symbol) is a newly added trademark category in China's Trademark Law in 200 1 year. Three-dimensional trademarks can be divided into two types, one is a decorative shape unrelated to goods, such as Kong Yiji of Xianheng Hotel, Colonel Sanders of KFC and Xiao Fei of Rolls-Royce. The other is the appearance of goods or the packaging of goods (such as Coca-Cola and bottled alcoholic liquor). ) and trade dress. Decorative modeling unrelated to goods can constitute sculpture; Commercial appearance mainly refers to the appearance of some restaurants or gas stations with unique styles, which can constitute architectural works. If a party applies for a registered trademark for a sculpture or architectural work that others enjoy copyright, it will cause a conflict of rights between the three-dimensional trademark and the sculpture or architectural work.

Three, the legal provisions of the conflict between trademark rights and copyright

International conventions and national laws have relevant provisions on the protection of prior rights, including copyright.

Article 9 of China's Trademark Law, revised by 200 1, stipulates: "A trademark applied for registration shall have distinctive features and be easy to identify, and shall not conflict with the legal rights previously obtained by others; Middle earth. " Article 3 1 repeatedly stipulates that "the application for trademark registration shall not damage the prior rights of others". At present, the consistent view is that copyright belongs to one of the prior rights stipulated in China's trademark law.

200 1 before the revision of the trademark law, the issue of prior rights was defined as "obtaining registration by deception or other improper means" in Article 25 of the original Detailed Rules for the Implementation of the Trademark Law. The current trademark law has raised the provisions of prior rights to the legal level, which is a great progress compared with the past. However, the current trademark law still has no specific provisions to solve the conflict between trademark rights and copyright, which has caused certain difficulties in practical operation. When amending the Trademark Law, we should consider making clear and specific provisions on the protection of prior rights, including copyright.

Four, the identification and handling of the conflict between trademark rights and copyright

The conflict between trademark right and copyright is usually manifested in two types of cases: first, trademark confirmation cases, including cases in which the copyright owner raised objections to the Trademark Office within the initial announcement period (that is, within three months), and cases in which the copyright owner filed disputes with the Trademark Review and Adjudication Board within five years from the date of registration of a registered trademark (referred to as trademark dispute cases). If a trademark registrant applies for registration of another person's copyright work without the permission of the copyright owner, it is an act of infringing the prior copyright of another person, and the trademark will not be registered or revoked in the future. The other kind is the copyright infringement dispute case that the copyright owner brings a lawsuit to the people's court on the grounds that the trademark registrant (or trademark user, the same below) infringes his copyright.

Generally speaking, there is no essential difference between the determination of copyright infringement and the determination of copyright infringement in the general sense, and the standard of "connection plus similarity" is adopted. Specific circumstances, should be reviewed from the following aspects.

First, the subject matter of the litigant's claim belongs to the work protected by the copyright law, or the part of the work that enjoys copyright.

Works are the premise and foundation of copyright and the legal fact that the legal relationship of copyright can occur. Without works, there is no copyright, and there is no conflict between copyright and trademark rights. The so-called copyrighted part of a work refers to the part of the work that can reflect the author's creative thinking and is original, and should be protected by copyright law as the result of intellectual labor.

Second, the work was created before the date of trademark application for registration.

This is the requirement of priority of rights. If the creation of a work is completed later than the date of trademark application and registration, not only can the prior copyright not be generated, but also the legitimacy of the copyright itself becomes a problem. Where a party claims prior copyright, it shall submit evidence of prior creation, prior publication and prior registration of copyright.

Third, the claimant is the copyright owner or interested party.

The copyright owner refers to the author himself, or the person who obtains the copyright through inheritance or transfer. Interested parties generally refer to the licensed users of copyright.

Fourth, the post-trademark is the same as or substantially similar to the works that others enjoy copyright.

If the post-trademark is exactly the same as the original work of others, in principle, it can be recognized that the post-trademark is a copy of the previous work of others. The "substantial similarity" between the post-trademark and other people's works means that the post-trademark is similar to other people's works to the extent that there can be no other reasonable explanation except plagiarism. Whether it constitutes substantial similarity, judges should follow the standards of ordinary consumers; We should proceed and judge according to the situation of each case.

Fifth, the trademark registrant has contacted or may have contacted other people's copyright works.

Contact or possible contact with other people's works involves the subjective state of the trademark registrant when applying for trademark registration. Contact is "knowing", and "possibility of contact" is similar to "should know", but the standard of proof is slightly lower than "should know". If the copyright owner claims that the trademark registrant has the "possibility of contact", he shall submit evidence of the time, manner and scope of the dissemination of his work.

In view of the fact that the copyright law does not exclude different subjects from independently creating the same or similar works, the trademark registrant can prove that the latter trademark was independently designed and completed, which does not constitute an infringement of the prior copyright of others.

Sixth, the trademark registrant does not have the permission of the copyright owner.

Article 24 of China's Copyright Law stipulates that "a licensing contract shall be concluded with the copyright owner for the use of other people's works, except for those that can be used without permission as stipulated in this Law." Article 23 of the Regulations for the Implementation of the Copyright Law stipulates that "a licensing contract shall be concluded with the copyright owner for the use of other people's works, and the right to license the use shall be in written form, except for works published in newspapers and periodicals." According to the above provisions, the use of another person's work to apply for a registered trademark should obtain the explicit permission of the copyright owner. If a trademark registrant claims permission from the copyright owner, it shall provide evidence for the following situations: the copyright licensing contract signed between the trademark registrant and the copyright owner; Or the copyright owner has directly and clearly expressed his intention to allow him to use the work to apply for a registered trademark. In principle, the intention of licensed works should be expressed in writing.

Whether the trademark registrant has obtained the permission of the copyright owner is controversial in judicial practice. Some people think that the licensing of copyright does not need to sign a written contract or the express authorization of the copyright owner, and the implied behavior of the copyright owner can also constitute a copyright licensing contract. This view lacks legal basis.

Judging from the relevant provisions of the Copyright Law and its implementing regulations, the law sets special requirements for the formal elements of the copyright licensing contract, and its legislative intention is to give full and effective protection to the copyright owner and ensure that the licensing of copyright is the true expression of the copyright owner's will. Compared with the general provisions on the establishment of contracts in the contract law, the provisions on "copyright licensing contracts" in the copyright law are special laws. Compared with the earlier contract law, the later revised copyright law belongs to the new law. According to the principle that the special law is superior to the general law and the new law is superior to the old law, the special provisions made by the newly revised copyright law should be applied to determine whether the copyright licensing contract is established. In view of the effectiveness of the exclusive right to use a trademark enjoyed by a trademark registrant, anyone including the copyright owner may be excluded from using the registered trademark on the same or similar goods. Therefore, allowing others to use their own works to apply for a registered trademark has a great impact on the interests of the copyright owner, and should be treated with caution, instead of breaking through the clear provisions of the law and inferring that the copyright owner "permits others to use the registered trademark of his works by his actions" in a certain case.

Regarding whether the parties enjoy prior copyright, at present, in the trial of trademark confirmation cases, the trademark examination organ examines and determines according to the written statements and cross-examination of both parties as the facts of the case. Some scholars believe that because the trademark examination organ does not have special experience in handling copyright disputes, the judicial organ should first judge whether the parties enjoy copyright, and then the trademark examination organ will handle trademark disputes. Item 17, Paragraph 1, Article 23 of the Trademark Law of Taiwan Province Province stipulates that "a trademark that infringes upon the copyright, patent right or other rights of others shall not be registered".

Generally speaking, if the work enjoys a high reputation among the public, it is less difficult for the trademark examination organ to determine the ownership of the prior copyright. However, the problems are as follows: First, the trademark examination organ mainly conducts written trial and written cross-examination on trademark confirmation cases, which makes it difficult to ascertain the facts of complex cases. Second, the professional level and accumulated experience of the trademark examination organ are mainly reflected in the judgment of trademark registrability, and its determination of copyright lacks authority. Third, the legal protection of trademarks varies with their popularity. Some parties (especially foreign companies) may have some influence on their trademarks. In the case that it is difficult to obtain protection because it is not used in China, it claims prior rights on the grounds that its trademark is an original design and enjoys copyright. If all the so-called original trademarks are protected as "works", it will not only destroy the connection between the provisions of the trademark law, but also cause obviously unfair results. Therefore, when revising the Trademark Law, we should consider handing over the determination of prior copyright to the people's court or arbitration institution, which can not only set a reasonable threshold for the parties claiming prior copyright, but also reduce the pressure faced by the trademark examination organ in determining prior copyright.

Verb (abbreviation of verb) conclusion

In the field of intellectual property, the contradiction between trademark right and copyright is typical and universal. In the five years since the revision of Trademark Law 200 1, the number of registered trademark applications has increased by an average of 654.38 million, and the number of applications has reached 600,000 at present. Due to the relatively limited trademark resources, weak awareness of independent innovation, driven by economic interests, legislative omissions and other reasons, conflicts between trademark rights and copyrights frequently occur. Correctly identifying and handling trademark rights and copyrights is of great significance for protecting legal prior rights, balancing the interests of trademark owners, copyright owners and the public, encouraging independent innovation and maintaining a fair market economic order. For coordinating and solving other types of intellectual property rights, China and Turkey also have certain reference.