Peter Rabbit and IP Protection of Fictional Characters in China

Written by Jordi Llopis and Grace Wang

Continued from page 1

Use ofrepparttar Mark. The trend is more favorable here (Article 7) becauserepparttar 119175 PRC’s Trademark Law allows a mark to be applied to an unlimited number of goods or services, independent ofrepparttar 119176 true activity ofrepparttar 119177 applicant and with no account taken ofrepparttar 119178 non-use of such a registered mark. Most legislation will contain provisions relating torepparttar 119179 effective use of a mark. It may sometimes be provided that an applicant or a holder should, by means of a statement or declaration, prove torepparttar 119180 competent authority thatrepparttar 119181 mark is being used (excluding token or ornamental use) atrepparttar 119182 time ofrepparttar 119183 application (as a condition for registration), at regular intervals after registration and atrepparttar 119184 time of renewal. Furthermore, most countries provide that any person may request, beforerepparttar 119185 court, that a given registered mark should be totally or partially invalidated and removed because of non-use.

The PRC's TM Law does provide that a use shall not cease for a period longer than three years, however unlike other legal texts (such as that ofrepparttar 119186 Community Trademark Regulation) it does not contain any provision requiring that use to be 'effective' in relation torepparttar 119187 goods and services registered under that TM, nor a requirement uponrepparttar 119188 user to submit proof – ifrepparttar 119189 applicant so requests – of use in case of opposition to a later trademark application. In short, PRC trademark law may only confer a rather limited protection, onrepparttar 119190 face of it, for so registered fictional characters.

Copyright vs. Design Patents

Cartoon characters such as those of Walt Disney or literary characters like those of Beatrix Potter are timelessly popular, such that they keep being regarded as what they indeed are: story tale characters. Drawings or cartoons (two-dimensional works) of literary works may also be protected independently of copyright protection as design patents, provided they meetrepparttar 119191 substantive requirements. According to Article 23 ofrepparttar 119192 PRC’S Patent Law, “Any design for which patent right may be granted must not be identical with and similar to any design which, beforerepparttar 119193 date of filing, has been publicly disclosed in publications inrepparttar 119194 country or abroad or has been publicly used inrepparttar 119195 country, and must not be in conflict with any prior right of any other person.” In that respect, it should be emphasized that a work which is original is not necessarily new, since a graphic adaptation of an already existing literary character (whether or not it has fallen intorepparttar 119196 public domain) may qualify for copyright protection (for example,repparttar 119197 literary characters Pinocchio or Cinderella adapted to cartoon form byrepparttar 119198 Walt Disney Company), but may fail to fulfillrepparttar 119199 novelty requirement. The same applies torepparttar 119200 drawing of a common creature (for example,repparttar 119201 cartoon character Bugs Bunny).

The Teletubbies (Tinky-Winky, Po, Dipsy, and Laa-Laa) are fictional characters whose copyright owner is Ragdoll Productions Ltd. – also a British company – from their creation in 1996. Unlikerepparttar 119202 situation with Peter Rabbit, Ragdoll Productions Ltd. is a legal entity that actually ownsrepparttar 119203 copyright, which means that after 50 years fromrepparttar 119204 first publication in 1996 those friendly characters will also enterrepparttar 119205 public domain. And again, these have also been subject to trademark registration inrepparttar 119206 European Union in 1999, and inrepparttar 119207 People’s Republic of China in 2000.

Oncerepparttar 119208 design patent elapses,repparttar 119209 industrial design will also fall inrepparttar 119210 public domain and may be used by anybody without authorization, unlessrepparttar 119211 owner ofrepparttar 119212 design can, forrepparttar 119213 same article, avail him/herself of a longer form of protection (copyright or registered mark).

Whereas in other countries copyright protection may be denied where a work is created withrepparttar 119214 intention of being exploited industrially and embodied in mass-produced articles, which is an inherent quality of works (drawings, dolls, puppets, robots, etc.) designed for merchandising,repparttar 119215 PRC’s Copyright Law does not observe this circumstance, ultimately allowing an overlap betweenrepparttar 119216 notions of artistic works and industrial designs, whererepparttar 119217 two forms of protection are generally not available cumulatively atrepparttar 119218 same time.

Once an artistic work such as a fictional character is incorporated into any industrial or handicraft item including packaging, graphic symbols, etc, it becomesrepparttar 119219 outward appearance of that product and becomes and industrial design with limited protection. And ifrepparttar 119220 copyrighted fictional character has been used for these purposes and has been made public as a result,repparttar 119221 Chinese patent law in its Article 24 concedes a small grace period of 6 months to claim priority, and after that period has elapsed it will become estate ofrepparttar 119222 art and will breakrepparttar 119223 novelty of that design, which ultimately makes it impossible forrepparttar 119224 copyright owner to wait untilrepparttar 119225 expiration of its copyright to then obtain a design patent.


All in all,repparttar 119226 legislation on copyright, trademarks and industrial designs may be relevant inrepparttar 119227 context ofrepparttar 119228 merchandising of fictional characters (asrepparttar 119229 Peter Rabbit case illustrates), in a desperate race to exclude competitors from using anything that may make goods look more attractive for consumers to purchase.

As discussed, design patents are likelyrepparttar 119230 best option available to seek longer protection for a fictional character, and although trademark protection may be renewed without limit, its scope is 1) just as limited or narrow as that ofrepparttar 119231 one conferred by design patents, and 2) even if respectively registered or granted, it may be left to a Judge to determine ifrepparttar 119232 trademark is distinctive enough to what all consumers simply regard as a fictional character. However, IP rights do have their own different purpose, and shall be protected according to whatrepparttar 119233 law says but not beyond it. Established in 1992 as one ofrepparttar 119234 first private law firms in China, Lehman, Lee & Xu employs a highly-experienced team of over 110 lawyers, patent and trademark agents representing both foreign and Chinese clients throughout China in a variety of enterprises. With branches in various Chinese cities including Beijing, Shanghai, Shenzhen and Hong Kong, Lehman, Lee & Xu is considered a leader ofrepparttar 119235 re-established Chinese legal profession. The firm has been recognized byrepparttar 119236 media andrepparttar 119237 Chinese Ministry of Justice as one ofrepparttar 119238 best law firms in China. For more information, please visitrepparttar 119239 firm’s website at

Jordi Llopis and Grace Wang are attorneys in the Beijing office of Lehman, Lee & Xu.

Registration of Personal Names in the PRC

Written by Jordi Llopis

Continued from page 1

Although not explicitly included in China’s Trademark law when defining what may constitute a trademark, portraits of individuals are also registered as trademarks withrepparttar consent ofrepparttar 119174 given person.

What rights then, if any, exist underrepparttar 119175 trademark law in terms of protection of personal names?

When defining what a trademark is, most legal texts will apply to “any word, name, symbol, or device, or any combination used or intended to be used, in commerce to identify and distinguishrepparttar 119176 goods of one manufacturer or seller from goods manufactured or sold by others, and to indicaterepparttar 119177 source ofrepparttar 119178 goods”.

As discussed, in foreign countries, it is common for big celebrities to commercialize their portraits or names, or for companies to use famous names to brand products, such as Napoleon wine andrepparttar 119179 Churchill cigar, but this is not a common practice in China, especially when it comes torepparttar 119180 names of politicians – these names cannot be registered as trademarks.

A harmful effect for social morality? Article 10.8 establishes that ‘any sign which infringes uponrepparttar 119181 socialist morality or practice or of other harmful effects may not be used nor registered as a trademark’.

Making a connection between Lu Xun and alcohol can definitively be claimed as a negative social influence. However, it can be argued that grape-based wine isrepparttar 119182 only alcohol with proven health benefits and might be considered a health-conscience activity in China, as well as a fashionable trend and a more upper-class activity. The Chinese government is promoting grape-based wines as an alternative to grain-based alcohol, grain that could be used to feed China’s massive population.

Beatrix Potter, also a deceased famous writer, was registered as a Community Trademark in February 2004 byrepparttar 119183 publishing company which ownedrepparttar 119184 already expired copyrights for her works. But contrary torepparttar 119185 Lu Xun case,repparttar 119186 goods to be marketed do keep a relationship withrepparttar 119187 author’s reputation.

A possibility for Acquired Distinctiveness? Another discussion about personal names withinrepparttar 119188 context of this case is whether or not consumers could come to associaterepparttar 119189 deceased writer’s name withrepparttar 119190 said goods, and not really about registering personal names at all sincerepparttar 119191 product (wine) is not attached to any actual person seeking to use his or her personal name.

Article 11.3 providesrepparttar 119192 grounds to refuse registration, as opposed to Article 10.8 which prohibits both use and registration, thus leaving room forrepparttar 119193 use ofrepparttar 119194 mark in question. Specifically, Article 11.3 prohibitsrepparttar 119195 registration of ‘any sign which is devoid of any distinctive character’. Therefore,repparttar 119196 sign listed inrepparttar 119197 paragraph above may be registered as a trademark if it has acquired a distinctive character followingrepparttar 119198 use and is easy to distinguish.

This option would surely leave Lu Xun’s reputation vulnerable to tarnish, for ifrepparttar 119199 goods bearingrepparttar 119200 Lu Xun trademark were of a poor quality, consumers would say “Lu Xun wine” is so bad, eventually harmingrepparttar 119201 reputation of a name of such a great influence inrepparttar 119202 PRC. But ifrepparttar 119203 wine so branded started to be successful among consumers, it might –in practice- acquire distinctiveness through use. On this basis, it can be concluded that if if Lu Xun’s descendants were to operaterepparttar 119204 wine company and grow its reputation, a trademark registration might be successful.

An example of this isrepparttar 119205 Lu Xun Art School, founded in 1938 and enjoying an excellent reputation inrepparttar 119206 educational field. The registration of the鲁迅艺术学院 trademark can only serve as a way to honorrepparttar 119207 deceased author. Of course, that school is conducting a commercial activity on its own, like that of selling goods bearingrepparttar 119208 name, but contrary to Lu Xun’s descendants, Lu Xun is only part ofrepparttar 119209 overall trademark. Perhaps, a trademark like鲁迅孙子的酒公司 (Lu Xun’s Descendants’ Wine Co.) could be an alternative.

Thus, while personal names may be registered as trademarks in China, 1.There must be consent fromrepparttar 119210 person. 2.There must be a clear connection betweenrepparttar 119211 name applied andrepparttar 119212 company or product. 3.It must not infringerepparttar 119213 social morality or practice or of other harmful effects. 4.It must be distinctive.

3. Conclusion

If Lu Xun were alive today, he would have probably tried to benefit fromrepparttar 119214 protection conferred by a trademark registration. Could we still see today a famous writer being denied registration of his name because people have come to associate it with moral values? The Amended Trademark Law ofrepparttar 119215 PRC lacks any reference torepparttar 119216 registration of personal names or portraits, but if harm torepparttar 119217 social morality is not an issue, thenrepparttar 119218 law may not be that different from other legal systems.

From this study case, we can conclude that,

1.Presumably, as long asrepparttar 119219 personal name is not held in such moral, historical, cultural esteem in China to be considered owned by all of society, one should be able to register that name; 2.As suggested above, ifrepparttar 119220 descendant’s wine company were to gain a reputation over time, an eventual trademark registration might be successful; and 3.If as forrepparttar 119221 Lu Xun Art School,repparttar 119222 trademark application was changed to Lu Xun’s Descendants’ Wine Company,repparttar 119223 application might be successful.

Established in 1992 as one ofrepparttar 119224 first private law firms in China, Lehman, Lee & Xu employs a highly-experienced team of over 110 lawyers, patent and trademark agents representing both foreign and Chinese clients throughout China in a variety of enterprises. With branches in various Chinese cities including Beijing, Shanghai, Shenzhen and Hong Kong, Lehman, Lee & Xu is considered a leader ofrepparttar 119225 re-established Chinese legal profession. The firm has been recognized byrepparttar 119226 media andrepparttar 119227 Chinese Ministry of Justice as one ofrepparttar 119228 best law firms in China. For more information, please visitrepparttar 119229 firm’s website at

Jordi Llopis hails from Spain and works in the Beijing office of Lehman, Lee & Xu.

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