Long being popular in China, the derivative products of fashionable foreign cartoon characters, such as “Doraemon,” “Crayon Shin-chan,” and many of Disney’s characters, have been deeply rooted in China, and have profound impact on Chinese market. These products cover a wide variety, ranging from such small gadgets as toys and garments to larger commodities of furniture and home appliances which bear merchandised foreign cartoon characters.

These well-known cartoon characters have doubtless generated huge values. Where there are economic values, there are battles over these values. How, then, should the proprietors protect these well-known cartoon characters as intangible properties in commercial activities? How, indeed, can these foreign-originated cartoon characters obtain legal protection in China? And how can these cartoon character rights be shielded from infringement in the commercialization process in a huge market such as China?

Regarding these awaited problem, combining our professional experience in this area, we will analyze and share our opinions from the perspective of “dealing with preemptive trademark registration of foreign cartoon characters.”

It is not a rare phenomenon that a foreign-originated cartoon character is preemptively registered as trademarks by a non-proprietor in China. One of the most influential cases involves “Crayon Shin-Chan” character and word mark. The Japanese artist Yoshito Usui completed the cartoon work of “Crayon Shin-Chan” in 1990, which upon publication, became an immediate hit in Southeast Asia including China. Unfortunately, however, the proprietor of “Crayon Shin-Chan” failed to timely register the characters or words of “Crayon Shin-Chan” as trademarks in China. Instead, one Chinese local company preemptively filed the application on the characters of “Crayon Shin-Chan” for trademark registration in class 25 for clothing articles in January 1996, and by 1997, obtained the exclusive trademark right. From then on, the battle to recover the rights lasted more than a decade in China for the creator of “Crayon Shin-Chan,” Yoshito Usui, who first saw the light of victory only in 2012. Imagine the tremendous economic losses for the proprietor during these years.

Xu Weikang

Certainly, an effective way for the original foreign creative entities or authors is to timely obtain trademark and copyright registrations in China for their cartoon characters, but not every proprietor is in a condition to do it, or is aware of it at all. Since all trademark laws are national, protection is acquired country by country, which costs a fortune to establish global protection. For this reason, a proprietor would consider IP registration and seek protection only in any given country when he needs to enter the market in that country. For this reason, again, the merchandization project not infrequently walks before the registration of an underlying cartoon character.

That being said, how can a foreign proprietor of cartoon characters protect its legitimate interests under Chinese laws? How effectively can preemptive registration of well-known cartoon characters be curtailed under the Chinese laws? The attorney of this article suggests the following:

I. Filing opposition within opposition period For any trademark application preliminarily approved in China, the Trademark Office requires a 3 months’ publication period for public opposition. Under Chinese laws, any one can raise opposition in writing to a trademark application within 3 months from the date of publication. In the absence of opposition this period is expired. In short, as long as a foreign proprietor takes no action to file a trademark application for his cartoon character work or raise opposition within the 3 months’ opposition period, such a cartoon character work will very likely be registered by another so as to establish the exclusive right to that other. Once the exclusive trademark right is secured, the merchandise bearing such a mark becomes legitimate in the Chinese market to be lawfully protected. It will be extremely hard to delegitimize such trademark rights.

The only way to curb preemptive registration in this stage is to conduct seamless tracking and monitoring the registration situations of the cartoon characters and its word marks, both in foreign language and in Chinese equivalents, by engaging professional practitioners. As soon as any publication occurs, a written opposition is immediately raised. But to say the least, the best defense is offense, i.e., to register the cartoon characters and their word marks in relevant classes. This, economically speaking, is roughly the same as tracking and monitoring in terms of cost control.

II. Relative grounds for removing preemptive registration of cartoon characters Here, the grounds for removal refer to a claim against a trademark registration that has established the exclusive right. In accordance with the laws of China, for registered trademark, a proprietor or any interested parties may file a request, under a 5-year statute of limitation, with the Trademark Review & Adjudication Board (TRAB) to remove the registration on the following grounds: 1. That the registered mark is a reproduction, or a copy, or a translation of a well-known mark unregistered in China, for use with identical or similar goods, as to be likely to cause confusion among the public; 2. That the registered mark is a reproduction, or a copy, or a translation of a well-known mark registered in China for use with non-identical or dissimilar goods, and is deceptively misleading the public, as to be likely to cause injury to the proprietor’s interests; 3. That the registration is obtained by an agent in his own name without authorization from the entrusting proprietor; 4. That the preemptively obtained registration contains geographic indication, where the goods bearing the mark is not originated from that geographic location, and is likely to mislead the public; 5. That the mark under preemptive registration has established prior right (mainly IP rights), or the preemptive registration is obtained by inequitable conduct for a mark that has been used by another with certain reputation.