Case Analysis: Invalidating a Squatted Trademark Based on Prior Copyright

When a graphic LOGO is registered as a trademark by someone else first, prior copyright is the most commonly used invalidation weapon. The following uses a typical scenario to break down the proof structure and common pitfalls of such cases.

Typical Scenario

A design company created an original graphic mark for its own brand, completed work registration, and put it into use on its products. Two years later, an unrelated enterprise registered a highly similar graphic as a trademark on identical goods. By the time the design company discovered it, the trademark had been registered for three years, so the company requested invalidation based on prior copyright.

Grounds and Element Breakdown

The petitioner claimed prior copyright under Article 32—"an application shall not harm another party's existing prior rights"—and needed to prove, item by item:

1. The work constitutes a protectable subject matter under copyright law: the graphic possesses originality and qualifies as a work of fine art. Here, the graphic was a uniquely composed animal figure combined with lettering, and its originality was undisputed;
2. Copyright belongs to the petitioner: the work registration certificate, design drafts, and a creation statement were submitted, forming a complete chain of ownership;
3. The work was created before the trademark's filing date: the registration date, the creation records of the drafts, and the product launch date all predated the other party's filing date;
4. Substantial similarity + possibility of access: the two graphics corresponded closely in composition, lines, and proportions, and the work had been sold publicly with the products, establishing the possibility of access.

Walkthrough of the Examination Points

The examining authority focuses on comparing whether the original expressive parts of the work have been appropriated. Ordinary geometric elements are unprotectable, but what was appropriated here was precisely the most original part—the main figure—and the similarity reached the threshold of substantial similarity. The other party could not explain an independent source of creation for its graphic; the invalidation request was upheld and the trademark was declared invalid.

Common Causes of Failure in Similar Cases

• The work registration date postdates the other party's filing date, with no reinforcing evidence such as drafts or publication records—the timing element collapses;
• A LOGO commissioned from a third party without an agreed copyright ownership clause in the contract—the chain of ownership breaks;
• The graphic is too simple (common letter variations, generic patterns) and its originality is not recognized;
• Only similarity is asserted, without proof of the other party's possibility of access, and the work was never published.

Replicable Lessons

1. Register the work as soon as the LOGO is finalized, and archive the creation drafts;
2. Commissioned design contracts must state that copyright belongs to the commissioning party;
3. The copyright path is not limited by class: even if the other party registered in a dissimilar class, a copyright infringement claim may still succeed—this is its unique advantage over prior trademark rights;
4. Mind the five-year limit: invalidation based on copyright is a relative ground and must be filed within five years of registration. This case was initiated in the third year, leaving comfortable margin.

If you need to handle the above matters, you may file an invalidation request on MyTMBee, with a registered agent following through on the case.