Guidance on attacking the bad faith filing that has infringed your prior copyright

Based on our experiences, many clients with highly distinctive logos/combination brands have not filed trademark registration applications in China or have refused registration by the China IP Office for a variety of reasons. However, the same or similar trademarks filed by a third party were later approved for registration in China. It is so infuriating! How to attack third-party bad faith filings? We would like to share an effective approach.

Normally, if the logos/combination brands were created by the client itself, the client is automatically entitled to own its copyrights. Thus, the client may attack the bad faith filings based on its prior copyrights. The main points to make in claiming that the client owns the copyright are usually the following:

1.Before the application date of the bad faith filing, the client already owned the copyright

The copyright registration certificate is an important document proving that the client owns the prior copyright. However, as we know, many clients do not have such a document. The client could file a copyright registration in China. In addition, the client should also provide other documents, such as sketches, to prove the client had the copyright earlier than the application date of the copycat.  

2.The copycat is identical or substantially similar to the client’s work

If the main part of the copycat and the client’s work are similar in design, representation, color claimed, etc., then the copycat and the client’s work would probably be deemed as having “substantial similarity.” 

3.The applicant of the copycat touched or had the possibility to touch the client’s work

Using the work of the client could usually be deemed if the applicant knew the work beforehand. Thus, we always highly recommend keeping the evidence of use. Evidence of use is very helpful in many types of cases.

4.The client did not authorize the applicant to register the copycat

The applicant for the copyright should provide documentation proving that it has the client’s authorization to register the work as the trademark. Otherwise, trademark filings are not allowed.

In short, we recommend that the clients should attack the bad faith filings from different angles. We also recommend that the client obtain the trademark registration certificate and/or copyright registration certificate for their highly distinctive brands as early as possible.