Conflict Between Copyright and Trade Mark Rights: Issues of Legal Enforcement
In legal practice, situations where a single intellectual property object is simultaneously protected by both copyright and trade mark law are quite common.
Typical examples include graphic elements of logos, animated characters, titles of literary works used as brand names, or text fragments that have become slogans.
In the Republic of Belarus, the legal regulation of these two institutions is governed by different legislative acts, which frequently gives rise to conflicts between the exclusive rights of different right holders. This article analyses the causes of conflicts between copyright and trade mark rights, the methods for resolving such conflicts, and sets out possible courses of action.
1. The Legal Nature of Copyright and Trade Mark Rights: Similarities and Differences
1.1. Copyright
Copyright in Belarus is governed by the Law of the Republic of Belarus "On Copyright and Related Rights" (hereinafter – the Copyright Law) and the provisions of the Civil Code of the Republic of Belarus (hereinafter – the Civil Code). Copyright in a work arises by virtue of the fact of its creation. No formalities are required for copyright to arise or to be exercised.
The objects of copyright include literary, artistic, and audiovisual works, computer programs, design solutions, and so forth. The key feature is the protection of the form of expression (as opposed to the idea itself).
1.2. Trade Mark Rights
Matters relating to trade marks and service marks in Belarus are governed by the Law of the Republic of Belarus "On Trade Marks and Service Marks" (hereinafter – the Trade Marks Law) and the Civil Code. Unlike copyright, the exclusive right to a trade mark arises only upon its state registration with the national patent authority (the National Centre of Intellectual Property – NCIP) or through an international procedure (via the International Bureau of the World Intellectual Property Organization – WIPO), and is effective in respect of specific classes of goods and services (pursuant to the International Classification of Goods and Services – the Nice Classification).
The protected subject matter is a designation capable of individualising the goods or services of one person and distinguishing them from the goods of other persons. The term of protection is 10 years, renewable for successive ten-year periods.
1.3. Differences That Give Rise to Conflicts
The principal differences leading to conflicts are as follows:
- Point at which protection arises: copyright — from the moment of creation; a trade mark — from the date of registration (the grant of protection in a given territory) or priority.
- Criteria for protection: for copyright — originality and creative character; for a trade mark — among other things — distinctiveness and the absence of any capacity to mislead.
- Scope: copyright protects the work as a whole as the result of creative activity; a trade mark protects only the registered designation in relation to specific goods/services and territory.
- Duration: the economic (proprietary) copyright subsists for the life of the author and 70 years after his or her death; a trade mark right may subsist indefinitely, provided it is renewed in a timely manner.
It is precisely these differences that create fertile ground for conflicts — for example, where a third party registers as a trade mark a work created previously by another person, or where an author uses his or her own work as a brand, which may clash with the priority of a third party's earlier trade mark.
2. The Principal Scenarios of Conflict Between Rights
2.1. Registration of a Trade Mark That Reproduces a Copyright-Protected Work
The most common scenario: a person registers a trade mark that wholly or substantially copies a protected work — for example, an artistic design (logo) or a character. If the work was created prior to the priority date of the trade mark and the copyright holder did not consent to the trade mark registration, such registration is unlawful.
The difficulty is compounded by the fact that the patent authority, in the course of examining a trade mark application, is not always able to identify that the designation constitutes the subject matter of another person's copyright, since copyright is not registered (apart from the optional state registration of certain computer programs and databases). Accordingly, an applicant may obtain trade mark registration whilst infringing another person's copyright.
|
Such situations are resolved by filing an opposition with the Board of Appeals at the patent authority, in which the opposing party (the author) must demonstrate that the copyright belongs to him or her and that the work was created prior to the filing of the trade mark application. |
2.2. Use of a Work as a Trade Mark Without Its Registration
An author or other right holder may use a work (for example, a logo) to mark goods. However, if another party has previously registered a confusingly similar designation with the patent authority for goods of the same kind, the author faces a risk of liability for infringement of trade mark rights.
Notwithstanding that the copyright arose earlier, the priority of trade mark rights may be held to have been infringed if the author began to use the work after the priority date of the trade mark and cannot demonstrate that the copyright work came into existence prior to that priority date. This situation gives rise to a conflict of priorities.
As is the case in many intellectual property disputes, the decisive factor will be the totality of evidence available to the parties to the conflict.
2.3. Conflict Between Different Parties Deriving Rights From Different Sources
| Example: an artist creates a character (copyright). A company registers the image of that character as a trade mark for children's toys, but without the artist's consent. Once the copyright term expires (70 years after the author's death), the trade mark may remain in force. The question arises: can the trade mark prevent the free use of a work that has entered the public domain? |
This conflict is not expressly addressed in Belarusian law. Under the logic of the Civil Code, upon expiry of the copyright term a work may be freely used by any person; however, the trade mark remains a private right. Courts resolve such cases having regard to the principle of good faith and the prohibition on abuse of rights.
To avoid such situations and to preserve the exclusive right to use a particular object, well-known film studios — including Disney — register their most famous characters as trade marks.
3. Statutory Regulation of Conflicts in Belarus
3.1. The Civil Code of the Republic of Belarus
The Civil Code provisions establish general principles in broad terms: each type of intellectual property is protected independently. It is important to bear in mind that copyright does not extend to ideas, methods, processes, concepts, and the like — it protects only the form of expression.
If a trade mark, loosely speaking, consists of an idea (in that the designer was inspired by something belonging to another but created an independent object) or a part thereof — some functional element — it cannot infringe copyright. However, if the designation constitutes an original graphic work (for example, where a designer has created a figurative or composite trade mark), copyright protection of such an object is also possible.
3.2. The Copyright Law
Article 16 of the Copyright Law provides that the author holds the exclusive right to use the work at his or her own discretion in any form and by any means.
One such means is the embodiment of a work in a trade mark. Accordingly, a third party wishing to use another's work as a trade mark is required to obtain the permission of the author or other right holder. Absent such permission, such use constitutes an infringement.
However, the burden of proving authorship and the date of creation rests with the author.
3.3. The Trade Marks Law
Article 5 of the Trade Marks Law sets out the grounds for refusing registration of a trade mark. In particular, designations that are identical or confusingly similar to the title of a work of science, literature, or art well known in the Republic of Belarus, to a character or quotation from such a work, or to a work of art or a part thereof, may not be registered without the consent of the right holder, where the right to the relevant work arose prior to the priority date of the trade mark applied for.
This constitutes an express prohibition.
Furthermore, Article 25 of the Trade Marks Law provides that trade mark registration may be declared invalid in whole or in part if it was effected in breach of the rights of the authors of works.
|
Accordingly, an interested party has the option of challenging, before the NCIP Board of Appeals or before a court, the registration of a trade mark that infringes copyright. |
3.4. NCIP and Court Practice
The National Centre of Intellectual Property, in the course of examination, verifies the applied-for designation against the requirements of the law, including the possibility of infringing copyright. However, it is impossible to eliminate entirely the risk of "blind" registration, since experts do not conduct wide-ranging searches for copyright works — particularly in the case of less widely known works.
Judicial practice in Belarus in cases involving conflicts between copyright and trade mark rights is not yet particularly extensive; however, precedents do exist. These include cases concerning the invalidation of trade mark registrations reproducing a logo developed by a designer, where the rights thereto had not been assigned to the trade mark owner, who had filed the trade mark application without the author's knowledge.
4. Issues of Legal Enforcement and Possible Solutions
4.1. Absence of a Clear Rule on "Conflict of Rights"
The legislation does not establish a hierarchy between different types of intellectual property. Unlike in countries where the "priority of the earlier right" principle applies, there is no single provision in Belarus stating that a copyright arising earlier automatically prevails over a subsequently registered trade mark.
Each case is resolved through the process of proving the fact of infringement or the fact of priority, which generates litigation costs.
4.2. Difficulty in Proving the Earlier Creation of a Work
Since copyright is not registered, it is more difficult for an author to prove the precise date of creation. Notarised copies, deposits, publications, correspondence, business documentation, and even witness testimony — all of these may be challenged by the opposing party.
For a trade mark, the priority date is precisely recorded in the state register — that is, broadly speaking, it is secured at the state level.
It is essential to retain all correspondence — for example, with designers — as well as written instructions, briefs, and directions; contracts for the creation of works; acceptance certificates and annexes; specifications; and developed mock-ups (depending on the object in question). All of this may be of assistance in proving priority before a court or the Board of Appeals.
4.3. Conflict of Interests Upon Renewal of a Trade Mark After the Expiry of the Copyright Term
As noted above, once a work has entered the public domain, a trade mark may remain in force. Formally, a trade mark does not protect the work as such, but only the designation in relation to specific goods or services. In practice, however, it may effectively block the free use of a particular image in connection with certain goods, which can give rise to conflicts.
If a copyright-protected object (for example, a character or logo design) is of value and it is desired to preserve exclusivity, it is recommended to make use of all available means of protection, including registration as a trade mark.
In order to minimise the risk of conflict, the following measures are recommended:
- Strengthen pre-registration searches of trade marks for potential copyright infringement, and not merely for conflicts with already-registered trade marks. Such a search must be conducted by the applicant itself, which should assess the risks involved.
In this context, it is also important to give appropriate instructions — for example, to designers — not to incorporate in a logo design any third-party copyright-protected object, in particular a well-known animated character. However attractive such an idea may be, its implementation may subsequently give rise to a conflict with the author. The key principle here is this: drawing inspiration is permissible — and sometimes necessary — that is, it is not prohibited; however, mindlessly copying or openly using another's work is a bad idea.
- Develop a system of voluntary copyright registration to facilitate proof of, at a minimum, the existence and date of priority rights. This mechanism, whilst it does exist in Belarus, is not particularly popular amongst right holders, as applicants often lack confidence in its effectiveness as a means of proof.
- Retain all possible documents and evidence, particularly everything relating to the creation of copyright works (contracts and technical specifications provided to designers, correspondence, internal company orders, notarised copies, mock-ups, drafts, sketch variants, work-completion certificates with annexes, and other evidence of the creation of the copyright object, depending on its type).
The implementation of these measures will help reduce the number of disputes, ensure a balance of interests between authors, brand owners, and consumers, and significantly simplify the process of asserting one's rights in the event of a dispute.
The REVERA team provides comprehensive legal support on matters relating to the protection, registration, assignment, and commercialisation of intellectual property objects, including trade marks, copyright works, licence agreements, IP due diligence, dispute management, and challenges to the registration of intellectual property objects.
Author: Pavel Klementsov, Svetlana Gordey.
Contact a lawyer for further information
Contact a lawyer
