Sep 17, 2026 | Registered Trademark Design Infringed? Copyright Infringement Litigation — The “Third Shortcut” for SMEs to Defend Their Rights

Registered Trademark Design Infringed? Copyright Infringement Litigation — The “Third Shortcut” for SMEs to Defend Their Rights

1. When an infringer uses your registered trademark without authorization, and the trademark itself features a distinctive design (such as a logo or graphic design), in addition to the traditional “trademark infringement” and “common law passing off” actions, you also have an often-overlooked yet highly formidable legal weapon — a “copyright infringement” action (Copyright Ordinance, Cap. 528). Copyright protection covers original graphic works, requires no registration, is automatically enjoyed upon creation, and is not limited to trademark classes, providing SMEs with a more flexible basis for defending their rights.

Three Overwhelming Advantages of Copyright Infringement

2. Compared with traditional trademark litigation, copyright infringement is particularly advantageous for SMEs and trademark agents:

(a) No Fear of Revocation Counterattacks — The Strongest Defence If an infringer attempts to apply to the Intellectual Property Department or the court to revoke your trademark registration on the ground that “a prior word mark exists,” the validity of your trademark rights may fall into dispute. However, copyright protection is independent of trademark registration and is unaffected by such challenges. As long as you can produce original design sketches, authorship identity, and creation date (for example, email records or design software timestamps), and the defendant cannot adduce earlier evidence of substantially similar original work, you can bypass the trademark validity issue and establish victory directly on the basis of copyright infringement.

(b) Summary Procedure Saves Time and Cost Where the conditions are met in a copyright infringement case, the plaintiff may apply for “Summary Judgment,” avoiding a full trial that can drag on for years. This procedure substantially shortens the litigation cycle and significantly reduces legal costs, enabling SMEs to obtain injunctions and damages awards at lower cost within a short period, avoiding the depletion of resources caused by lengthy litigation.

(c) Longer Protection Period — No Renewal Worries The copyright protection period is generally the author’s lifetime plus 50 years, far exceeding the requirement to renew a trademark every 10 years. Even if a trademark lapses due to a forgotten renewal, copyright remains secure and can continue to serve as a backstop for defending rights, safeguarding long-term exclusive use of the brand design.

Key Evidence for Winning Under Summary Procedure

3. To successfully obtain summary judgment, the plaintiff must establish to the court:

(a) The existence of an original work (by providing original drawings or electronic files);

(b) Clear ownership of copyright (author’s name and creation date);

(c) The defendant knew or ought to have known — this is the core of the evidence. The court will infer “knowledge” based on objective circumstances, for example: both parties are in the same industry, the plaintiff’s trademark has market recognition, the defendant purchased the plaintiff’s products and must therefore have come into contact with the trademark, or the defendant continued to use the infringing design after receiving a lawyer’s letter — such conduct sufficiently proves “knowing infringement.”

4. Once the evidence is successfully established, the court may order the infringer to stop using the infringing design, which in substance is equivalent to enjoining the entire commercial operation of the infringing trademark. Therefore, when your design trademark is misappropriated, do not limit yourself to a trademark infringement claim. Immediately gather evidence of copyright creation (sketches, dates, authorship records) and imultaneously use copyright infringement as the primary cause of action. This can effectively resist revocation threats and achieve a “fast, fierce, and precise” defence of your rights. If you have any questions, consult your trademark agent or lawyer immediately to seize the best opportunity to act.