Beyond Trademarks: Using Article 32 to Protect Prior Copyrights and Personal Names

China’s trade mark system is built on the first-to-file principle, which means priority goes to the first applicant, not the first user. This creates a vulnerability: a squatter can rush to register another party’s brand name, logo, or character before the legitimate owner files. Article 32 of the Trademark Law provides a critical safety net by prohibiting trade mark applications that damage the existing prior rights of others or that register, by improper means, a mark that another party has been using and that has achieved a certain influence.

The Legal Basis: Article 32

Article 32 states: “An application for trademark registration shall not damage the existing prior rights of others, nor shall registration be sought, by improper means, for a trademark that another person has already been using and has achieved a certain influence.”

This provision operates as a catch-all that extends protection beyond registered trade marks to encompass a range of pre-existing rights, including copyrights, personal names, trade names, and other legitimate interests.

What Counts as a “Prior Right”?

The Supreme People’s Court’s judicial interpretation defines “prior rights” under Article 32 as “civil rights or other protectable legitimate rights and interests that the right holder enjoys before the application date of the disputed trademark.” Recognised prior rights include:

Copyright

This is the most commonly invoked prior right in Article 32 proceedings. If a trade mark application reproduces or incorporates a copyrighted work — such as a logo design, illustration, or character — without the copyright owner’s authorisation, the application can be opposed or invalidated.

To successfully invoke copyright, the claimant must prove: ownership of the copyright, that the work existed before the trade mark application date, and that the applied-for mark substantially reproduces the copyrighted work.

Personal Names (Including Stage Names and Pseudonyms)

Article 32 protects the names, surnames, nicknames, and pseudonyms of individuals — particularly those of public figures. Where a trade mark application uses the name of a well-known person without authorisation, and consumers are likely to believe the person endorsed or is connected to the products, the application can be challenged.

Trade Names and Business Names

An established trade name (“shangbiao” as distinct from “shangpiao”) used in Chinese commerce can constitute a prior right. To qualify, the trade name must have been used in China prior to the trade mark filing date and have sufficient recognition in the relevant business community.

Work Titles and Character Names

Where a work title or fictional character name has high popularity, it may be protected under Article 32. The Supreme People’s Court’s provisions specify that if a character name or work title has high recognition, the use of that name as a trade mark is likely to make the relevant public believe the use was authorised or associated with the work’s owner, and this constitutes damage to a prior right.

The Strategic Importance of Copyright Registration with the CPCC

China follows the Berne Convention principle that copyright arises automatically upon creation. However, in practice, proving copyright ownership in trade mark proceedings requires documentary evidence — and a registration certificate from the Copyright Protection Center of China (CPCC) is the strongest proof available.

CPCC registration provides:

• A presumption of ownership: The certificate is treated as prima facie evidence of copyright ownership and the creation date.
• Ease of enforcement: In Article 32 proceedings, a CPCC certificate significantly simplifies the evidentiary burden compared to trying to prove ownership through original design files and contracts.
• Speed: CPCC registration typically takes a few weeks to a few months — far faster than trade mark registration.
• Cost-effectiveness: The filing fees are modest, making it a practical investment for any brand with a distinctive logo or design.

For foreign brand owners, registering their logo design with the CPCC before or simultaneously with trade mark filing provides a secondary line of defence against trade mark pirates. If a squatter files the logo as a trade mark, the copyright registration gives the legitimate owner a basis for opposition or invalidation under Article 32.

Prior Use with “Certain Influence”

The second limb of Article 32 protects unregistered trade marks that the applicant has been using prior to the filing date and that have achieved “a certain influence” in China. To invoke this protection, the prior user must show:

• Use of the mark in Mainland China before the disputed filing date.
• That the mark had achieved a degree of recognition (“certain influence”) — a lower threshold than well-known mark status, but still requiring evidence of use, advertising, and public awareness in China.
• That the applicant registered the mark by “improper means” — typically meaning the applicant knew of the prior use and filed deliberately to misappropriate the mark.

Strategic Recommendations

• Register logos with the CPCC: Every brand entering China should register its logo design with the CPCC. This is a low-cost, high-value step that creates a powerful secondary defence.
• Preserve creation evidence: Maintain records of when and how the logo was created — original design files, contracts with designers, and internal approvals. These support both copyright claims and CPCC registration.
• Document prior use in China: If you have been using a mark in China without registration, collect and preserve evidence of use, advertising, and consumer recognition to support an Article 32 claim.
• Act quickly on squatter filings: Article 32 can be invoked in opposition (within three months of publication) or invalidation (within five years of registration, or without time limit for well-known marks registered in bad faith).

Common Mistakes

• Not registering copyright in China: Relying solely on trade mark registration leaves brands without a fallback when squatters act first. CPCC registration fills this gap.
• Failing to prove ownership: Without a CPCC certificate or clear chain of title, proving copyright ownership in Chinese proceedings can be difficult and expensive.
• Confusing “certain influence” with minimal use: Invoking prior use under Article 32 requires evidence of genuine commercial activity and recognition in Mainland China, not just a handful of sales or a website.
• Missing the opposition window: The three-month opposition period after publication is the most efficient time to challenge a squatter filing. Missing it means pursuing the more costly invalidation route.

Key Takeaway

Article 32 is one of the most versatile tools in China’s trade mark law, extending protection to copyrights, personal names, trade names, and unregistered marks with established influence. For foreign brands, the single most impactful step is to register logo designs with the CPCC — a fast, inexpensive process that creates a powerful secondary defence against trade mark pirates. Combined with proactive trade mark filing and active monitoring of the Chinese register, Article 32 provides a robust safety net in a first-to-file system where speed and preparation are everything.