How to File an Invalidation Based on Prior Copyright Infringement?

Where another's registered trademark copies your artwork, graphic LOGO, typeface design, or the like, you may request that the trademark be declared invalid on the basis of prior copyright, pursuant to Article 32 of the Trademark Law: "an application for trademark registration shall not harm another party's existing prior rights."

Three Core Elements

1. You hold a prior copyright: the work must constitute a "work" in the sense of the Copyright Law (i.e., possess originality), and you must be the copyright owner. Graphic LOGOs, stylized lettering, and cartoon characters can generally constitute works of fine art;
2. The work was created before the trademark's filing date: copyright arises automatically, but you need evidence to prove that the completion and publication dates predate the other party's filing date;
3. Substantial similarity + possibility of access: the trademark is substantially similar to the work, and the other party had the possibility of accessing the work (where the work has been published and put into use, access can usually be presumed).

Evidence Checklist

• Evidence of ownership: work registration certificate, creation drafts, commissioned design contracts (pay attention to stipulating copyright ownership), and publication records;
• Evidence of timing: the work's publication date, earliest use date, and registration date—all must predate the trademark's filing date. If the work registration date postdates the filing date, reinforce it with drafts and publication records;
• Similarity comparison: prepare a side-by-side comparison of the work and the trademark, pointing out the correspondence in the original parts;
• Evidence of use: records of the work's actual use on goods, packaging, and promotion.

Procedure and Time Limit

Invalidation based on prior copyright is a relative ground: under Article 45, it must be filed within five years of the trademark's registration, by the copyright owner or its interested party (such as an exclusive licensee). If the trademark is still in the announcement period, the same grounds may be raised directly in an opposition.

Common Pitfalls Leading to Failure

• Having only a work registration certificate without evidence of formation earlier than the filing date—the probative value is weak when the registration date postdates the filing date;
• Insufficient originality of the work (simple letter combinations, common graphics), which is not protected by copyright;
• A commissioned LOGO design in which copyright ownership was not agreed upon, leaving ownership in doubt.

Registering the work in advance and retaining creation drafts is the most cost-effective preventive measure for this type of case.

If you are facing a similar situation, it is advisable to first consult a registered agent on MyTMBee to assess whether you need to handle an invalidation before deciding on the next step.