By Kenneth Choy, Partner, King & Wood – Hong Kong

At times, an international company may find that their application for registration of a trademark is rejected by the Chinese Trademark Office. When this happens and all administrative appeals are exhausted, are there alternative means of brand protection available in China?

One alternative may be found in the Chinese Copyright Law. Article 3 of the Copyright Law of the People’s Republic of China (Revised in 2010) provides copyright protection to written works, photographic works, sketches and other graphic works. The purpose of copyright law is intended to protect expressions of ideas and concepts for promotion and development of literary, artistic and scientific works.

On the other hand, trademark laws are commercial devices intended to provide trademark holders with the exclusive right to use a trademark to distinguish his goods and services from other traders to prevent public confusion. Although copyright law is intended to enhance art, culture and the sciences, and not protect brand owners, the law is sufficiently broad to offer a brand owner limited protection in some situations.

A word or simple phrase may be protected as a trademark but it may not be adequately expressed to obtain copyright protection. Unless a word phrase is comprehensive enough to express a thought, idea or concept, chances are it may not be protected by copyright. On the other hand, copyright does recognize photographic work, sketches and other graphic works as protectable works. Use of artistic designs, patterns, logos, devices, photographs or other artistic works alone or in conjunction with word marks as trademarks may allow a brand owner to be protected by the copyright law in China.

There are differences between the two types of intellectual property laws. Trademark protection may be of indefinite duration so long as the trademark holder continues to use the trademark to identify itself as the source of the covered goods and services and pays the necessary maintenance fees. On the other hand, where the copyright is held by the individual author, protection generally lasts the author’s life plus 50 years following his death. If the right is held by a legal entity, protection is for 50 years after its first publication. Trademark protection is tied to the specific mark for the class of goods and services for which the trademark is registered. Copyright protection is not so limited but covers usage of the protected work in different mediums and for different purposes. Copyright protection extends to translations and modifications of the protected work while trademark protection is tied to the registered mark itself.

The differences in protection reflect the differences in the purposes of the two sets of laws. Yet, the overlap between these laws may give brand owners limited protection in situations where protection of trademark law is unavailable. To be protected, brand owners must understand the intentions and purposes of copyright law and create works that fall within its protection.