Using Copyright in China
“How can we use copyright to help protect our brands?” asked G. Roxanne Elings, Partner at Davis Wright Tremaine LLP (USA) at yesterday’s Session CSU50 Copyright and Trademark: What They Can Learn From Each Other on the Internet Frontier of Trademark Protection. “Also, how do copyright and trademark law intersect, particularly online?”
Ms. Elings, who moderated the panel, called China an important jurisdiction for brand owners, and copyright law can help to assist in protecting brands in the country.
Zhen (Katie) Feng, Partner and Director at Hogan Lovells International LLP (China) said there are “at least four ways that copyright law can help brand owners protect their brand in China.
First, the brand owner can rely on copyright law to block or invalidate trademarks that infringe his or her copyright.
Second, the brand owner can rely on copyright law to help obtain an injunction against the infringer. It can also be used to support take down notices online and, finally, it can be used as a starting point for cease-and-desist notices, she said.
Emily Burns, Senior Trademark Counsel at Google (USA), added that Google has benefited from using copyright law to protect its brand in China.
“From the brand owners’ perspective, we have had great successes in securing copyright registrations in China and using those to supplement our trademark enforcement, especially in connection with our famous and well-known logos,” she said.
She added that copyright registrations in China can typically be secured much faster than in the United States. For example, it takes only 30 working days for the Copyright Protection Center of China to examine an application and issue a certificate. In contrast, one Google application was pending for almost a year before it was examined by the U.S. Copyright Office.
“Additionally, you can typically secure copyright registrations in China faster than you can secure a trademark registration in China,” said Ms. Burns.
The average time from filing a trademark application at China’s State Administration for Industry and Commerce to registration is 13 to 14 months, and even longer if it is filed via the Madrid Protocol.
Outside of China, Eleonara Rosati, Lecturer in IP Law at Southampton Law School (UK), discussed how copyright laws can help trademark owners in the European Union. She was followed by Dean S. Marks, Executive Director, Legal Counsel at the Coalition for Online Accountability (USA), who said that, while U.S. copyright owners have the Digital Millennium Copyright Act, trademark owners in the United States have been able to use Rule 65 of the Federal Rules of Civil Procedure: Injunctions and Restraining Orders.
This is used to tackle offshore counterfeiting sites. “Once the website has been adjudicated to be a trademark infringing site, then any other entities that are in active participation with the site that has been adjudicated to be a trademark infringer will have to stop acting,” said Mr. Marks.
