The toys made from the characters of the TV series are derivative products from the original audiovisual work made by the European film studio. They are protected by copyright as they are original works and no further registration is necessary for the studio to be the owner of such copyright. The trademark registration does not protect the original work and toys. The national trademark registration does not have any effect in the Chinese territory and cannot prevent one person using similar trademark in China. The only way to prevent any unauthorised use of the trademark in China would be to register it either through the extension process, related to international trademark registration, or directly in China.
Prior to launching and manufacturing the toys in China, it is advisable to register the characters before the Chinese Copyright Office. Such registration will not prevent counterfeiting but does enable the European film studio to prove its copyright very easily in the event of a copy or counterfeit.
Disclosing the image of the characters would not challenge the film studio’s copyright. The studio retains copyright ownership even if the characters are disclosed and manufactured by another Chinese company. However, the fact that the images, drawings and other documents linked to the characters would be disclosed could present the practical risk of a Chinese company using the images without due authorization. To prevent such a risk, it is advised to enter into a confidentiality agreement and/or a manufacturing agreement with the Chinese company, prior to disclosure.
Registration of the trademark before the Trademark Office would enable the owner to prove his rights over the characters before a Chinese court or arbitrators. In practice the registration of a trademark before the Chinese Trademark Office takes about 36 months before the issuance of a certificate of a trademark ownership.
Considering the specific one‐off nature of this case, the registration of a trademark would not present a great asset for the time of the broadcast and the retailing of the small animals. The registration should have been nonetheless considered if the European film studio were to develop a long term sale strategy in China.