1. The conflict between trademark rights and copyrights refers to legal disputes arising from the enjoyment of trademark rights and copyrights by different civil subjects on the same object. The conflict between trademark rights and copyright is one of the most typical conflicts of intellectual property rights. It is also one of the issues that often occurs in judicial practice and arouses heated discussions in academia. Our country currently lacks specific and clear legal norms to adjust. How to identify and deal with conflicts between trademark rights and copyrights is worthy of our in-depth discussion in theory and practice.
Generally speaking, the objects of copyright and trademark rights are not the same in legal nature. The protection of copyright is based on the originality (or originality) of the work, and its object is the result of intellectual labor; while the protection of trademark rights is based on the distinctiveness (or identification) of the trademark, which is used to distinguish the providers of goods or services. Its object belongs to industrial and commercial marks. But the boundary between the two is not clear-cut. Sometimes, the process of designing a trademark is also a process of creative intellectual labor. When a certain level of creation is reached, the trademark can become a work within the meaning of the Copyright Law. If the trademark registrant and the trademark designer are the same entity or have been authorized by the trademark designer, there will be no conflict of rights; if the party concerned applies for a registered trademark or uses the copyrighted work of another person as a trademark without permission , it will cause a conflict with the copyright of others.
2. Situations in which trademark rights conflict with copyrights
1. Word trademarks and literary works
Word trademarks refer to trademarks with words as their constituent elements. The text here includes Chinese and foreign languages. Word trademarks can be expressed in various forms, including ordinary fonts, calligraphy fonts or graphic art fonts.
Generally speaking, since written works have a certain length, they often do not meet the requirements for trademark distinctiveness stipulated in the Trademark Law. A company once applied to register a trademark on cigarette products for the poems and lyrics of great men. This not only involved copyright protection issues, but also involved issues of adverse social impact. The trademark was eventually rejected.
In practice, it often happens that parties apply for registered trademarks for some short sentences. The short phrases here are usually advertising phrases used and promoted by enterprises for a long time. Some of the advertising phrases have a certain degree of originality and can constitute works protected by copyright law. For example, "connecting every moment of life" used in a certain film advertisement, and "giving the computer a Pentium "core" used in a certain processor advertisement fall into this category. Phrases created by others without permission Applying for a registered trademark will cause a conflict between trademark rights and copyright, and the trademark will be revoked later due to infringement of other people's copyrights.
2. Graphic trademarks, three-dimensional trademarks and works of art, photography, and architectural works<. /p>
Three-dimensional trademarks (or three-dimensional marks) are a newly added trademark type in my country’s 2001 Trademark Law. Three-dimensional trademarks can be divided into two types. One is a decorative shape that has nothing to do with the product, such as Xianheng Hotel. Kong Yiji, KFC Colonel Sanders, Rolls-Royce Flyer, etc.; the other is the appearance of the product or product packaging (such as bottles of Coca-Cola, Jiugui Liquor, etc.) and trade dress that have nothing to do with the product. Sexual appearance can constitute a sculpture; commercial appearance, mainly refers to the appearance of some business premises such as restaurants or gas stations with a unique style, can constitute an architectural work. If the party applies for a registered trademark for sculptures and architectural works that are copyrighted by others. , will cause a conflict of rights between three-dimensional trademarks and sculptures and architectural works.
3. Legal provisions on conflicts between trademark rights and copyrights
Regarding copyrights, including copyrights. Regarding the protection of prior rights, there are relevant provisions in international conventions and national laws.
Article 9 of my country’s Trademark Law revised in 2001 stipulates: “The trademark applied for registration shall have distinctive features and facilitate the convenience of registration. Identification shall not conflict with the previously acquired legal rights of others;
"Article 31 repeatedly stipulates that "application for trademark registration shall not damage the existing prior rights of others." The current consensus is that copyright is one of the prior rights stipulated in my country's Trademark Law.
Before the revision of the Trademark Law in 2001, the issue of prior rights was included in Article 25 of the original Implementing Rules of the Trademark Law as a category of “obtaining registration by deception or other unfair means.” The current Trademark Law has raised the provisions on prior rights to the legal level, which is a big improvement compared with the past. However, there are still no specific provisions to resolve the conflict between trademark rights and copyrights. , causing certain difficulties in practical operations. When revising the Trademark Law, clear and specific provisions on the protection of prior rights, including copyrights, should be considered.
4. Trademark rights and copyrights. Identification and handling of conflicts
Conflicts between trademark rights and copyrights usually manifest themselves in two types of cases: One type is trademark confirmation cases, which include copyright owners’ trademarks that have been initially reviewed and announced by the Trademark Office. Cases in which objections are filed with the Trademark Office within the period (that is, within 3 months) (referred to as trademark opposition cases), and cases in which the copyright owner files a dispute with the Trademark Review and Adjudication Board within 5 years from the date of registration of the trademark (referred to as trademark opposition cases) Trademark dispute cases). If a trademark registrant applies to register a trademark for another person's copyrighted work without the permission of the copyright owner, it is an infringement of the other person's prior copyright, and the subsequent trademark will not be registered or revoked. The other type is copyright. A copyright infringement dispute case in which a person files a lawsuit in the People's Court on the grounds that the trademark registrant (or trademark user, the same below) has infringed his copyright.
Generally speaking, whether the subsequent trademark infringes the copyright infringement case. The issue of copyright is not essentially different from the determination of copyright infringement in general. The judgment standard of "contact plus similarity" should be used in specific cases.
First, the subject matter of the claim is a work protected by the Copyright Law, or a copyrighted part of the work.
The work is the premise and basis for the creation of copyright. The legal relationship between copyright and copyright is based on the legal facts. Without a work, there is no copyright, and there will be no conflict between copyright and trademark rights. The so-called copyrighted part of the work refers to the part of the work that can reflect the author's creative ideas and possess the copyright. Originality, as the result of intellectual work, should be protected by the Copyright Law.
Second, the work was created earlier than the date of trademark application.
This is a violation of the rights. Priority requirement. If the creation of the work is later than the date of trademark application, not only will no prior copyright be generated, but the legality of the copyright itself will become an issue. If the party claims prior copyright, the work must be submitted. Evidence, evidence of prior public publication of the work, prior copyright registration, etc.
Third, the claimant is the copyright owner or interested party.
The copyright owner refers to the author himself, or the person who obtained the copyright through inheritance, transfer, etc. Interested parties generally refer to copyright licensees.
Fourth, the subsequent trademark is identical or substantially similar to another person’s copyrighted work.
If the later trademark is exactly the same as someone else’s more original work, in principle, it can be determined that the later trademark is a plagiarism or copying of someone else’s earlier work. The "substantial similarity" between the subsequent trademark and the work of others means that the subsequent trademark is similar to the work of others to such an extent that there is no other reasonable explanation except that it is deemed as copying. Whether there is substantial similarity, the case reviewer should start from the standard of ordinary consumers and make a determination based on the circumstances of the individual case.
Fifth, the trademark registrant has come into contact or is likely to come into contact with other people’s copyrighted works.
Having come into contact or having the possibility of coming into contact with other people’s works involves the subjective state of the trademark registrant when applying for trademark registration. Having come into contact is “knowingly aware”, “possibility of contact” and “should have known” Approximately, but slightly lower than "ought to know" in terms of standard of proof. If the copyright owner claims that the trademark registrant has "possibility of contact", he should submit evidence regarding the time, method, and scope of the dissemination of his work.
In view of the fact that copyright law does not exclude different entities from independently creating identical or similar works, if the trademark registrant can prove that the subsequent trademark was independently designed, it does not constitute an infringement of the prior copyright of others. Violate.
Sixth, the trademark registrant does not have the permission of the copyright owner.
Article 24 of my country’s Copyright Law stipulates that “the use of other people’s works shall be subject to a licensing contract with the copyright owner, except where permission is not required as provided in this law.” Article 2 of the Implementing Regulations of the Copyright Law Article 23 stipulates, “To use other people’s works, a license contract must be concluded with the copyright owner. If the right to license is an exclusive right of use, it must be in writing, except for newspapers and periodicals that publish works.” According to the above provisions, use To apply for a registered trademark for someone else's work, you must obtain the explicit permission of the copyright owner. If the trademark registrant claims that it has obtained the copyright owner's permission, it should provide evidence to prove the following circumstances: the copyright license contract signed between the trademark registrant and the copyright owner; or the copyright owner has given direct and clear permission to use the work to apply for a registered trademark meaning. In principle, the expression of intention to license the use of the work should be made in writing.
There has been considerable controversy in judicial practice regarding the issue of determining whether a trademark registrant has obtained permission from the copyright owner. Some people believe that the licensing of copyright does not require the signing of a written contract or the copyright owner’s express authorization. The copyright owner’s tacit behavior can also establish a copyright licensing contract. This view lacks legal basis.
Judging from the relevant provisions of the "Copyright Law" and its "Implementing Regulations", the law stipulates special requirements for the formal requirements of copyright licensing contracts, and its legislative intention is to provide copyright owners with sufficient and effective rights. Protection and ensuring that the permitted use of copyright is the true expression of the copyright owner's intention. Compared with the general provisions on the formation of contracts in the Contract Law, the provisions on "copyright licensing contracts" in the Copyright Law are special laws; compared with the Contract Law that was formulated earlier, it is later revised. The Copyright Law is a new law. According to the principle of legal application that special laws are superior to general laws and new laws are superior to old laws, when determining whether a copyright licensing contract is established, the special provisions in the newly revised Copyright Law should be applied. In view of the effectiveness of the exclusive right of trademark (which can be regarded as an exclusive use right) enjoyed by the trademark registrant, anyone, including the copyright owner, can be excluded from using the registered trademark on the same or similar goods. Therefore, it is necessary to license others to use the registered trademark. The use of his works to apply for a registered trademark has a significant impact on the interests of the copyright owner, and we should treat it with caution. It is not appropriate to go beyond the clear provisions of the law and presume in individual cases that the copyright owner has allowed others to use his works' registered trademarks "by his actions."
Regarding the issue of whether the parties enjoy prior copyright, currently in trademark confirmation cases, the trademark examination authorities review and determine the facts of the case based on the written statements and cross-examinations of both parties. Some scholars believe that since the trademark examination authority does not have specialized experience in handling copyright disputes, the judicial authorities should first determine whether the parties enjoy copyright, and then the trademark examination authority should handle the relevant trademark disputes. Article 23, Paragraph 1, Paragraph 17 of the Trademark Law of Taiwan stipulates that "trademarks that infringe upon the copyright, patent or other rights of others and are determined by judgment" shall not be registered.
Generally speaking, if the work has a high reputation among the public, it will be less difficult for the trademark examination authority to determine the ownership of the prior copyright. But the problem is that, first, the trademark examination authority mainly conducts written trials and written cross-examination in trademark confirmation cases. This kind of trial and cross-examination method has certain difficulties in determining the facts of more complex cases. Second, the professional level and accumulated experience of the trademark examination authority are mainly reflected in the judgment of trademark registrability, and its determination of copyright lacks authority. Third, different trademarks have different degrees of legal protection. Some parties (especially foreign companies) may have a certain influence on their trademarks. When the trademark has not been used in China and is therefore difficult to obtain protection, the company claims prior rights on the grounds that its trademark is an original design and enjoys copyright. If all so-called original trademarks are treated as "works" for protection, it will not only destroy the connection between the provisions of the Trademark Law, but also may lead to unfair results. Therefore, when amending the Trademark Law, consideration should be given to handing over the determination of prior copyright to the people's courts or arbitration institutions. This can not only set a reasonable threshold for parties claiming prior copyright, but also ease trademark review. The pressure faced by agencies in determining prior copyright issues.
5. Conclusion
In the field of intellectual property, the relationship between trademark rights and copyrights is somewhat typical and universal. In the five years since my country revised the Trademark Law in 2001, the number of applications for registered trademarks has accelerated by 100,000 per year, and the current annual number of applications has reached 600,000. Due to relatively limited trademark resources, weak awareness of independent innovation, driven by economic interests, and legislative omissions, conflicts between trademark rights and copyrights occur frequently. The correct identification and handling of trademark rights and copyrights is important for protecting legitimate prior rights, balancing the interest relationships between trademark owners, copyright owners and the public, encouraging independent innovation, and maintaining the market economic order of fair competition. Significance; it also has a certain reference role in coordinating and resolving other types of intellectual property rights: China and Tunisia.