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Use of Mark. The trend is more favorable here (Article 7) because PRC’s Trademark Law allows a mark to be applied to an unlimited number of goods or services, independent of true activity of applicant and with no account taken of non-use of such a registered mark. Most legislation will contain provisions relating to 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 to competent authority that mark is being used (excluding token or ornamental use) at time of application (as a condition for registration), at regular intervals after registration and at time of renewal. Furthermore, most countries provide that any person may request, before 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 of Community Trademark Regulation) it does not contain any provision requiring that use to be 'effective' in relation to goods and services registered under that TM, nor a requirement upon user to submit proof – if 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, on 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 meet substantive requirements. According to Article 23 of PRC’S Patent Law, “Any design for which patent right may be granted must not be identical with and similar to any design which, before date of filing, has been publicly disclosed in publications in country or abroad or has been publicly used in 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 into public domain) may qualify for copyright protection (for example, literary characters Pinocchio or Cinderella adapted to cartoon form by Walt Disney Company), but may fail to fulfill novelty requirement. The same applies to drawing of a common creature (for example, 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. Unlike situation with Peter Rabbit, Ragdoll Productions Ltd. is a legal entity that actually owns copyright, which means that after 50 years from first publication in 1996 those friendly characters will also enter public domain. And again, these have also been subject to trademark registration in European Union in 1999, and in People’s Republic of China in 2000.
Once design patent elapses, industrial design will also fall in public domain and may be used by anybody without authorization, unless owner of design can, for 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 with 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, PRC’s Copyright Law does not observe this circumstance, ultimately allowing an overlap between notions of artistic works and industrial designs, where two forms of protection are generally not available cumulatively at 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 becomes outward appearance of that product and becomes and industrial design with limited protection. And if copyrighted fictional character has been used for these purposes and has been made public as a result, 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 of art and will break novelty of that design, which ultimately makes it impossible for copyright owner to wait until expiration of its copyright to then obtain a design patent.
All in all, legislation on copyright, trademarks and industrial designs may be relevant in context of merchandising of fictional characters (as 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 likely 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 of one conferred by design patents, and 2) even if respectively registered or granted, it may be left to a Judge to determine if 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 what law says but not beyond it. Established in 1992 as one of 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 of re-established Chinese legal profession. The firm has been recognized by media and Chinese Ministry of Justice as one of best law firms in China. For more information, please visit firm’s website at www.lehmanlaw.com.
Jordi Llopis and Grace Wang are attorneys in the Beijing office of Lehman, Lee & Xu.