[Richard Gao]

4. The degree of originality influences copyright protection of device trademark

The device elements in a trademark can be divided into decorative device, device as the background of words, prominent device, pure device trademark, etc. according to their position and function in the trademark. For different device elements, the difficulty of being able to be protected by the Copyright Law varies depending on the degree of originality, which is analyzed as follows.

1. Decorative device

Decorative devices generally have a small proportion in the combination trademark, and the device part only plays the role of decorating the text elements which is the man part performing the function of distinguishing. Therefore, in general, decorative devices are not highly original and can hardly meet the minimum level of originality required by the Copyright Law, for example

2. Device being B\background in the trademark

Ordinary background devices in the trademarks, like decorative devices, are generally not highly original. However, a background device in the trademark with a high degree of originality may still constitute a work in the sense of Copyright Law and be protected; for instance, the background devices were found to constitute art works and were protected in the following cases.

However, background devices composed of simple device, lines and stripes are still difficult to be determined as works in the sense of Copyright Law or even if it constitutes a work, it is difficult to be considered as substantially similar because of the differences thereof, for example:

3. The prominent device part of the trademark and the pure device trademark

Such devices are generally the most prominent or the only identifying part of the trademark, which normally possess the required distinctiveness to obtain trademark registration, thus these device works often also have a certain degree of originality.

When determining whether works of high originality constitute substantial similarity, the judging criteria do not require that the device elements have to be identical; even if the constituent elements differ slightly, they can still be judged to constitute substantial similarity, for example:

In the above case, the disputed trademark and the applicant's work being a trademark were not identical, and the center of the device is respectively a human figure (the disputed trademark) and a five-petal flower figure (the applied-for work). The applicant's work, however, is highly original, and many other device elements contained in the two devices are identical, which is obviously difficult to be explained as coincidence, so the court found that the two devices constitute substantial similarity.

The design elements in the device part of the disputed trademark and the "U" pattern of the applicant's works are of certain difference in the above case, and the word "Unicode" in the disputed trademark and "Unilever" in the applicant's works are not identical. But in view of the high level of originality of the applicant's works, the competent authority determined that the two had substantial similarities.

Thus, it can be seen that in cases involving trademarks and highly original graphic works, the criteria for determining whether the disputed trademarks and the works constitute substantial similarity are not significantly different from the criteria for determining confusing similarity in the trademark similarity judgment.

However, for works with less originality, the threshold of constituting substantial similarity may raise. If there are few differences between the trademark at issue and the graphic work, substantial similarity may not be found, for example:

Although the bull devices in the disputed trademark and the applicant's trademark work were relatively similar in composition and visual effect, and they would generally be judged as similar trademarks, however, in determining whether the disputed trademark and the work constituted substantial similarity, the court apparently raised the standard of judgment, thus finding that the two did not reach the level of substantial similarity in the sense of copyright law based on the differences in details between the two devices.

1. Summary

In summary, despite the difference between trademark right and copyright, a trademark with a certain degree of originality can be protected as a work by the Copyright Law in trademark right affirmation cases. In view of the Copyright Law's legislative goal of encouraging the creation and dissemination of intellectual achievements, works only need to satisfy the minimum "originality" requirement to be protected by the Copyright Law. The current judicial practice of trademark right affirmation cases does not have a high standard for determining whether a trademark with a certain degree of originality can constitute a work in the sense of Copyright Law. The Copyright Law may protect trademarks with certain originality, such as designed word trademarks, handwritten font word trademarks, combination trademarks with original background devices, and device trademarks. To better and fully protect the rights and interests, it is suggested that trademark owners register the copyright of their trademarks with certain original designs as soon as possible and actively claim the prior copyright of their trademarks as works in trademark right affirmation cases.