IV. Ex officio removal Besides removal by the real right owner personally, they can also draw support from the authority of the Trademark Office to remove the preemptive registration once it complies with following situations, including: (i). Registered trademark is altered without authorization especially in using; or (ii). The name, address or other registered information of registered trademark are altered without authorization especially in using; or (iii). The registered trademark is sold without authorization; or (iv). The registered trademark has not been used in the appointed commodity category for three consecutive years. Especially, high percentage of individuals or companies preemptive register the foreign cartoon characters always intends to make illegal profits, so they rarely use the registered trademark in business which results in the trademark being suspended for a long time. In view of this situation, the real right owner had better to submit these relevant clues to the Trademark Office and require them to revoke the registered trademark by administrative power.
V. Injunctive relief from trademark litigation based on conflict of IP rights In China, regarding any formally registered trademarks, even they have above problems, they shall be protected by law before being revoked by the TRAB. What’s more, only TRAB is authorized to revoke the registered trademarks in China, and courts in China are not authorized to directly revoke the registered trademarks in commercial litigations. For a long time, even IP cases such as copyright and trademark disputes on the same cartoon characters, probably could not be heard by courts. But this kind of phenomenon has been changing gradually. Though the court has not been authorized to directly revoke the registered trademark in commercial litigation, the IP cases can be heard by court. This development in juridical practice of China will add a new and effective legal measure against foreign cartoon characters preemptively registered as trademarks.
As we mentioned above, cartoon character basically belongs to works defined in the Copyright Law. In accordance with the Copyright Law of China and the Berne Convention, most foreign cartoon characters will be authorized copyright in China. Therefore, if the copyright of the images are formed before they are applied for trademark registration by preemptive registrants, the real right owner of the foreign cartoon characters would be more likely protected by laws. Because in our opinion, the copyright has absolute validity, the exclusive control of the cartoon images without the license of the copyright owner can probably be thought to have fault and it is not the obligation of the copyright owner to provide evidence against the preemptive registrant.
Subject to the purpose of this article, in case that the preemptive registrant registers the foreign cartoon images as trademark, then he/she uses the registered trademark in business personally or licenses it to any third party, such as use the images on related commodities by means of manufacturing, selling, and packaging. Whether these uses of registered trademarks infringe the copyright of the cartoon images owned by real right owner, especially the above said licensing act?
The author holds the view that these uses of registered trademark shall constitute infringement. Even those images or similar images have been registered as trademarks through legal registration procedure by preemptive registrants, their use of the images still could not cover up the nature of copyright infringement on the images.
In contrast, someone will doubt by the first reason that the trademark through legal procedure shall be completely protected by law and the registrant shall enjoy the rights according to the Trademark Law unless TRAB revokes the registration trademark. Secondly, they thought that power of registered trademark revocation is solely authorized to TRAB but not the court in commercial litigations. So the commercial litigations cannot restrict the use of trademark.
But we think that above view is too one-sided. From the practice in many cases, we will find the application of trademark registration by preemptive registrants and especially being in bad faith apparently. In detail, the preemptive registrants always focus on others’ potential foreign cartoon images, and then covet huge money that will derives from the real right owner who has not registered the trademarks in China yet. By means of registration, the preemptive registrants can benefit a lot through licensing or re-sell. Basically, this kind of registration usurps the legal profits owed to creative works by others and it even takes advantage of the favorable influence and reputation accumulated by the foreign cartoon images for long time among a large group of people. It is typical example of getting something for nothing. What’s more, as it is known, both copyright and registered trademark right have their own boundary. According to this, the utilization of preemptively registered trademark definitely strides into the space of the copyright for foreign cartoon images and is contrary to the legislative purpose of the Trademark Law.
Meanwhile, as if such preemptive registration or utilization were indulged or omitted by law or justice system, there shall be no beneficial to IP protection in China. As we said, the preemptively registered trademark could not be revoked directly in commercial litigations in court, but the court can support the real right owner in the verdict as follows: (1). confirm preemptive registrant’s infringement against copyright of foreign cartoon images during the utilization of registered trademark; (2). confirm the invalidity or impropriety of preemptive trademark registration; (3). confirm the restrictions to the utilization of the registered trademark. In summary, during the utilization of the registered trademark, once the design, manufacture, selling, packaging etc. involves the use of foreign cartoon images owned by others, the court has the reason to confirm infringement against copyright and judge compensation for infringement, which provides another approach for foreign cartoon images protection in China.
In conclusion, with the high development of licensing industry in China and especially the foreign cartoon images are keeping entering into the Chinese market, it is inseparable for local judicial practices and legal services to escort. We also hold that only keep being familiar with the current situation of the judicial practice in China, can the related business develop more smoothly.
