Legislation
The Trademark Law is enacted to improve the administration of trademarks, protect the exclusive right to use a trademark, and encourage producers and traders to guarantee the quality of their goods and services and maintain the reputation of their trademarks, with a view to protecting the interests of consumers, producers and traders and promoting the development of the socialist market economy.
Trademark Law & Implementing Regulations
Trademark Law: Adopted by the Standing Committee of the National People's Congress on August 23, 1982 and came into effect on March 1, 1983; amended for the first time on February 22, 1993; amended for the second time on October 27, 2001; amended for the third time on August 30, 2013; amended for the fourth time on April 23, 2019 and came into effect on November 1, 2019.
Implementing Regulations: Promulgated by the State Council on August 3, 2002; amended on April 29, 2014 and came into effect on May 1, 2014.
Civil Procedure Law and Judicial Interpretations
Civil Procedure Law: Adopted and implemented on April 9, 1991, amended for the first time on October 28, 2007 and implemented on April 1, 2008; amended for the second time on August 31, 2012 and implemented on January 1, 2013; amended for the third time on June 27, 2017 and implemented on July 1, 2017; amended for the fourth time on December 24, 2021 and implemented on January 1, 2022; amended for the fifth time on September 1, 2023 and implemented on January 1, 2024.
Judicial interpretation: The Supreme People's Court adopted the Interpretation on the Application of the Civil Procedure Law of China on December 18, 2014, which came into effect on February 14, 2015, it was amended for the first time on December 23, 2020 and came into effect on January 1, 2021, and amended for the second time on March 22, 2022 and came into effect on April 10, 2022. The Interpretation on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases over Trademarks was adopted on October 12, 2002 and came into effect on October 16, 2002, it was amended on December 23, 2020 and came into effect on January 1, 2021. The Interpretation on Several Issues Concerning the Application of Law in the Trial of Civil Dispute Cases Involving the Protection of Well-known Trademarks was adopted on April 22, 2009 and came into effect on May 1, 2009; it was amended on December 23, 2020 and came into effect on January 1, 2021.
Registered Trademark & Exclusive Right
There are four types of registered trademarks in China: trademarks for goods, service marks, collective marks and certification marks.
A registered trademark can be obtained after being approved and registered by the Trademark Office through the registration application procedures.
The rights holder of the registered mark, i.e. the registrant, have the exclusive rights to use the registered trademark as approved for the goods/services approved to register, which is protected by law.
Such exclusive rights begin on the date of approval and registration, and are valid for ten years. The trademark registration can be renewed before the expiration of the ten-year term, and each renewal registration is valid for ten years.
How to Obtain a Registered Trademark
To obtain a registration of a trademark on designated goods or services and seek a protection by law, the owner of the trademark should file a registration application before the Trademark Office. After examining the application, the Trademark Office will approve the registration if it is in compliance with relevant regulations.
For the details about the filing and prosecution of and examination on the applications, please see Outline of China’s Trademark System: Registering a Trademark.
Protection of Registered Trademarks
A trademark registrant enjoys the rights to use the registered trademark exclusively, that is, the exclusive rights for the registered trademark, which is protected by the Trademark Law.
In case of infringement on the exclusive rights, the trademark registrant or interested party may institute a lawsuit with the court, seeking judicial relief, or request the administrative authority to handle it, seeking administrative relief.
This article will discuss the proceedings for judicial relief.
For seeking administrative relief, please refer to: Trademark Protection via Administrative Relief.
Scope of Exclusive Rights
The scope of exclusive rights to a registered trademark is limited to the trademark approved for registration and the goods/services designated for use.
Infringement
Any of the following acts is infringement upon the exclusive rights to a registered trademark:
(1) Without the authorization of the trademark registrant, using a trademark identical to the registered trademark on the same goods/services;
(2) Without the authorization of the trademark registrant, using a trademark similar to the registered trademark on the same goods/services or using a trademark identical or similar to the registered trademark on similar goods/services, which is likely to cause confusion;
(3) Selling goods that infringe on the exclusive rights to a registered trademark;
(4) Counterfeiting or manufacturing signs of a registered trademark of another person without authorization, or selling such counterfeited or manufactured signs of the registered trademark;
(5) Without the authorization of the trademark registrant, replacing the registered trademark of the registrant and putting the goods with the replaced trademark back on the market;
(6) Deliberately providing facilitation for infringement conduct on the exclusive rights to another person's trademark and assisting others to infringe the exclusive rights to the trademark;
(7) Other conducts causing other damages to the exclusive rights to a registered trademark of another person.
Providing storage, transportation, mailing, printing, concealment, business premises, online commodity trading platforms and others for the purpose of infringing on the exclusive rights to another person's trademark shall be deemed as providing facilitation as provided for in item (6) above.
Using a mark identical or similar to another person's registered trademark as a commodity name or commodity decoration on the same or similar goods, thereby misleading the public, shall constitute trademark infringement as provided for in item (2) above.
The following conducts shall be deemed as conducts that cause other damages to the exclusive rights to another person's registered trademark as provided for in item (7) above:
(a) Using prominently words identical or similar to another person's registered trademark as the trade name of an enterprise on the same or similar goods, which is likely to cause the relevant public to misunderstand;
(b) Using a reproduction, an imitation, or a translation of another person's registered well-known trademark or its main part, as a trademark on non-identical or dissimilar goods, which misleads the public and is likely to create prejudice to the interests of the well-known trademark registrant;
(c) Registering words identical or similar to another person's registered trademark as a domain name, and conducting e-commerce transactions of related goods through the domain name, which is likely to cause the relevant public to misunderstand.
Where using another person's registered trademark as a trade name in an enterprise name, thereby misleading the public, and then constituting unfair competition, the rights holder may seek relief under the Anti-Unfair Competition Law of the PRC.
Determination of Infringement
In preparation of litigation documents and response, rights holders or other relevant parties may refer to the following definitions of factors that the court will consider in determining trademark infringement.
Trademark Use
Trademark use refers to the act of using a trademark on goods, goods packaging or containers, and goods trading documents, or using a trademark in advertising, exhibitions, and other commercial activities to identify the source of goods.
Identical or Similar Trademarks
A trademark identical to the registered trademark as mentioned in the above items (1) and (2) of Infringement refers to the fact that the accused infringing trademark and the plaintiff's registered trademark are basically visually indistinguishable.
A trademark similar to the registered trademark as mentioned in the above item (2) of infringement refers to the fact that it can be seen from the comparison of the accused infringing trademark to the plaintiff's registered trademark that they share similar font, pronunciation, meaning, or graphic composition and color, or the entire configuration of the combination of all elements, or the three-dimensional shape and color combination, which is likely to cause the relevant public to misunderstand the source of the goods or believe that their source has a specific connection with the goods of the plaintiff's registered trademark.
The relevant public refers to consumers related to a class of goods or services identified by the trademark and other operators closely related to the marketing of the aforementioned goods or services.
The principles for courts to determine whether trademarks are identical or similar are as follows:
(a) The general attention of the relevant public shall be taken as a standard for making the judgement;
(b) The comparison shall be conducted not only on the overall of the trademarks but also on the main parts of the trademarks; and the comparison should be made in such way that the assessment for each trademark is done independently and individually;
(c) In determining whether trademarks are similar, the distinctiveness and popularity of the registered trademark claimed for protection shall be considered.
Similar Goods/Services
The similar goods as mentioned in the above item (2) of Infringement refer to goods that share commonalities in function, purpose, production department, sales channel, target consumer and the like, or goods that the relevant public generally believes have a specific connection therebetween and are likely to cause confusion.
Similar services refer to services that share commonalities in purpose, content, method, target and the like, or services that the relevant public generally believes have a specific connection therebetween and are likely to cause confusion.
The similarity between goods and services refers to that there is a specific connection between the goods and services, which is likely to cause confusion among the relevant public.
In determining whether goods or services are similar as mentioned in the above item (2) of Infringement, the court shall make a comprehensive judgment based on the general understanding of the relevant public on the goods or services; the International Classification of Goods and Services for Trademark Registration (also known as Nice Classification) and the Classification Table of Similar Goods and Services can be used as a reference for determining similar goods or services.
Fair Use
The exclusive rights holder of a registered trademark has no right to prohibit others from legitimate use of the generic names, graphics, product models, or direct description of the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods, or the geographical name contained in the registered trademark.
The exclusive rights holder of a registered trademark has no right to prohibit others from legitimate use of the shape resulted from the nature of the goods themselves, required for obtaining a technical effect, or giving substantial value to the goods, contained in the three-dimensional sign of the registered trademark.
Where, before the trademark registrant applied for trademark registration, another person has already used a trademark that is identical or similar to the registered trademark and has a certain fame on the same or similar goods, the exclusive rights holder of the registered trademark has no right to prohibit the user from continuing to use the trademark within the original scope of use, but may require the user to add an appropriate distinguishing mark.
Protection of Well-Known Trademarks
Well-Known Trademarks & Recognition
A well-known trademark is a trademark that is well-known to the relevant public in China. Whether a trademark is well-known shall be determined pursuant to the related regulations.
During the processes of trademark registration examination, trademark review and adjudication, and administrative investigation and handling of trademark infringement cases, in which the relevant right holders claim their rights on well-known trademarks pursuant to the relevant regulations, the Trademark Office may determine the well-known status of a trademark based on the needs of examining and handling cases
During the trial of civil and administrative trademark cases, if the parties claim rights on well-known trademarks pursuant to the relevant regulations, the court may make a determination on the well-known status of the trademark based on the needs of trying the case.
In the following civil disputes, if the parties use the well-known status of the trademark as the factual basis, when necessary the Court shall make a determination on whether the trademark at issue is well-known based on the specific circumstances of the case:
(1) A trademark infringement lawsuit filed on the grounds of violation of the well-known trademark provisions of the Trademark Law;
(2) A trademark infringement or unfair competition lawsuit filed on the grounds that the enterprise name is identical or similar to its well-known trademark;
(3) A civil lawsuit filed by the plaintiff on the grounds that the use of the defendant's trademark infringes upon its exclusive rights to the registered trademark, and the defendant raises a defense or counterclaim on the grounds that the plaintiff's registered trademark reproduces, imitates or translates its/his/her prior unregistered well-known trademark.
Where a party claims that a trademark is well-known, it shall provide the following evidence, based on the specific circumstances of the case, to prove that its trademark was well-known when the accused infringement or unfair competition occurred:
(1) The market share, sales area, profits and taxes of the goods using the trademark;
(2) The duration of continuous use of the trademark;
(3) The approach, duration, extent, financial investment and geographical scope of the publicity or promotion activities of the trademark;
(4) The history of protection of the trademark as a well-known trademark;
(5) The market reputation enjoyed by the trademark;
(6) Other facts proving that the trademark has been well-known.
The duration, scope, approach of the use of the trademark may include the continuous use before its registration was approved.
The court shall conduct an objective and comprehensive examination on the evidence such as the duration of use of the trademark, industry ranking, market research report, market value assessment report, whether it has been recognized as a famous trademark and other evidence in determining the well-known trademark.
Unregistered well-known trademarks
Ordinary unregistered trademarks, except for those prohibited from use under the Trademark Law, can be used as long as their use is in accordance with the law and related regulations. But they do not have the exclusive rights granted to registered trademarks.
Unregistered well-known trademarks, however, may obtain the following special protections similar to the exclusive rights to use registered trademarks.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark that has not been registered in China, and the registration of the trademark on identical or similar goods is likely to cause confusion, this trademark shall not be registered.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark that has not been registered in China, and the use of the trademark on identical or similar goods is likely to cause confusion, this trademark shall be prohibited from use.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark (or the main part thereof) that has not been registered in China, and the use of the trademark on identical or similar goods is likely to cause confusion, the user of this trademark shall bear civil liability to cease the infringement.
Likely to cause confusion refers to the situation where the disputed trademark is sufficient to cause the relevant public to misunderstand the sources of the goods using the well-known trademark and the disputed trademark, or it is sufficient to cause the relevant public to believe that there is a specific connection between the operators using the well-known trademark and the disputed trademark, such as a licensed use or an affiliated enterprise relationship.
Where the use of the unregistered well-known trademark of another person as the trade name of the enterprise misleads the public and constitutes unfair competition, the rights holder may seek relief under the Anti-Unfair Competition Law of the PRC.
Registered well-known trademarks
The protection scope of an ordinary registered trademark is limited to the trademark approved for registration and the goods/services designated for use.
In addition to such protection scope of an ordinary registered trademark, a registered well-known trademark can also enjoy the following special protection on non-identical or non-similar goods or services under certain conditions.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark that has been registered in China, and the registration of the trademark on non-identical or dissimilar goods misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, this trademark shall not be registered.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark, which has been registered in China, or the main part thereof, and the use of the trademark on non-identical or dissimilar goods misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, this trademark shall be prohibited from use.
Where a trademark is a reproduction, an imitation, or a translation of another person's well-known mark, which has been registered in China, or the main part thereof, and the use of the trademark on non-identical or dissimilar goods misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, the use of this trademark constitutes infringement upon the exclusive rights to the registered trademark.
Misleading the public and being likely to create prejudice to the interests of the registrant of the well-known trademark, refers to the situation where the disputed trademark is sufficient to make the relevant public believe that it has a considerable degree of connection with the well-known trademark, thereby weakening the distinctiveness of the well-known trademark, derogating the market reputation of the well-known trademark, or unfairly taking advantage of the market reputation of the well-known trademark.
Where the plaintiff requests to prohibit the use of a trademark or an enterprise name that is identical or similar to their registered well-known trademark on goods dissimilar to their goods, the court will make the judgment based on the specific circumstances of the case after comprehensively considering of the following factors:
(a) the distinctiveness of the well-known trademark;
(b) the recognition of the well-known trademark in the relevant public that uses goods bearing the disputed trademark or enterprise name;
(c) the correlation relationship between the goods bearing the well-known trademark and those using the disputed trademark or enterprise name.
(d) other relevant factors.
Seeking Judicial Relief
Where any dispute arises from infringement of the exclusive rights to a registered trademark, the parties concerned may resolve the dispute through negotiation. Where the parties are unwilling to negotiate or fail to reach an agreement through negotiation, the trademark registrant or interested party may institute a lawsuit before the court.
Plaintiff
The plaintiff may be the trademark registrant or an interested party.
An interested party includes the licensee of a registered trademark license contract, the lawful successors of the registered trademark and the like.
Where infringement upon the exclusive rights to a registered trademark occurs,
- the licensee of an exclusive license may institute a lawsuit with the court;
- the licensee of a sole license may institute a lawsuit jointly with the trademark registrant, or may institute a lawsuit on its own if the trademark registrant does not institute a lawsuit;
- the licensee of a general license (also known as non-exclusive license) may institute a lawsuit with the explicit authorization of the trademark registrant.
The circumstance that the trademark registrant does not institute a lawsuit includes that the trademark registrant expressly waives the right to sue, and also that the licensee of a sole license of a registered trademark has evidence to prove that the licensee has informed the trademark registrant or the trademark registrant has known that a trademark infringement has occurred but the registrant still does not institute a lawsuit.
Exclusive license: the trademark registrant grants a licensee the exclusive right to use the registered trademark in the contracted period, regions, and ways, and accordingly the trademark registrant shall not use the registered trademark.
Sole license: the trademark registrant grants a licensee the right to use the registered trademark in the contracted period, regions, and ways, and accordingly the trademark registrant also has the right to use the registered trademark but shall not grant any third party the right to use it.
General license (Non-exclusive license): the trademark registrant grants licensees the right to use the registered trademark in the contracted period, regions, and ways, and the licensor can still use the registered trademark and retains the right to grant multiple licenses.
Where the trademark registrant or interested party submits a renewal application during the grace period of the registered trademark renewal and subsequently files a lawsuit alleging infringement of its exclusive right to the registered trademark before the renewal application is approved, the people's court shall accept the lawsuit for infringement.
Jurisdiction
Civil lawsuits instituted for infringement on the exclusive rights to a registered trademark shall be under the jurisdiction of the people's court at the place where the infringement on the exclusive rights to a registered trademark or infringement on a well-known trademark is committed, where the infringing goods are stored or seized, or the defendant's residence.
The place where the infringing goods are stored refers to the place where the infringing goods are stored or concealed in large quantities or regularly. The place where the infringing goods are seized refers to the place where the customs and other administrative authorities seal and detain the infringing goods in accordance with the law.
For a joint lawsuit involving multiple defendants and various places where infringement occurred, the plaintiff may choose a people's court at the place where the act of infringement by any one of the defendants was committed. For a lawsuit filed against only one of the defendants, the people's court at the place where the act of infringement of this defendant was committed shall have jurisdiction.
First-instance cases of trademark civil disputes shall be under the jurisdiction of intermediate people's courts or above, and primary people's courts designated by the Supreme People's Court.
Civil cases involving the protection of well-known trademarks shall be under the jurisdiction of intermediate people's courts in cities where the provincial and autonomous regional people's governments are located, municipalities with independent planning status, and municipalities directly under the Central Government, and other intermediate people's courts designated by the Supreme People's Court
Statute of limitations
The statute of limitations for infringement on the exclusive rights to a registered trademark is three years, calculated from the date when the trademark registrant or interested party knows or should have known that the rights have been infringed.
Where the trademark registrant or interested party institutes a lawsuit after the three years, if the infringement continues at the time of instituting the lawsuit and the registered trademark is within the valid term, the people's court shall order the defendant to cease the infringement, and the damages for infringement shall be calculated for three years backward from the date when the rights holder institutes the lawsuit with the people's court.
Evidence collection
Evidence is the key to winning a case. The plaintiffs bear the burden of proof and need to collect sufficient evidence before filing lawsuits to prove their grounds and support their claims. Evidence collection is very important, and the plaintiff cannot attach too much importance to it.
Preliminary Injunction, Preservation Measures
Preliminary injunction & property preservation order:
If a trademark registrant or an interested party has evidence to prove that another person is carrying out or is about to carry out an act that infringes upon the exclusive rights to its registered trademark, and if such act is not stopped in time, its legitimate rights and interests will suffer irreparable damage, it may apply to the court for an order to stop the relevant act and property preservation measures before filing a lawsuit.
Evidence preservation order:
In order to stop the infringement, if the evidence may be lost or difficult to obtain in the future, the trademark registrant or interested party may apply to the court for evidence preservation before filing a lawsuit.
If the evidence may be lost or difficult to obtain in the future, the parties may apply to the people's court for evidence preservation during the litigation process, and the court may also take preservation measures on its own initiative.
Act preservation order:
The parties may apply to the court with jurisdiction over the corresponding intellectual property disputes at the place of residence of the respondent (suspected infringer) or the court with jurisdiction over the case for pre-litigation act preservation. If the parties agree to arbitration, they may apply to the aforementioned court for act preservation.
Before the judgment, ruling or arbitration award takes effect, the parties to the intellectual property dispute may apply for act preservation in accordance with the relevant provisions of the Civil Procedure Law.
Suspension in Trademark Office:
When the court takes property preservation measures, if it needs to preserve the registered trademark right, it shall issue a notice of assistance in execution to the Trademark Office of the CNIPA, stating the name, registrant, registration certificate number, preservation period and content of the preservation assistance for the registered trademark for which the Trademark Office is requested to assist in preservation, including prohibition of transfer, cancellation of registered trademarks, change of registration matters and registration of trademark pledge.
The preservation period for registered trademark rights shall not exceed one year at a time, calculated from the date on which the Trademark Office receives the notice of assistance in execution. If it is still necessary to continue to take preservation measures for the registered trademark rights, the people's court shall reissue a notice of assistance in execution to the Trademark Office before the expiration of the preservation period, requesting continued preservation. Otherwise, the property preservation of the registered trademark rights shall be deemed to be automatically lifted.
The court shall not impose repeated preservation measures on a registered trademark rights that has already been preserved.
Instituting a lawsuit
The plaintiff (trademark registrant or interested party) submits a complaint to the people's court with jurisdiction. The complaint should state the basic information of the plaintiff and the defendant, the cause of action, the litigation request, the facts and grounds. The plaintiff’s identity certifications and the relevant evidence materials that can prove the validity of its trademark rights and the existence of the defendant's infringement must be also submitted with the power of attorney and the attorney's identity certification documents.
Where the plaintiff is a natural person, the identity certification can be an ID card or passport. If the plaintiff is a legal person, the identity certifications includes copies, stamped with the official seal, of the business license and a legal representative certificate. Where the plaintiff is a foreign legal person or a legal person in Hong Kong, Macao or Taiwan region, the identity certifications include its Certificate of Good Standing/Existence and the Certificate of Legal/Authorized Representative for the person who executes the power of attorney.
Where the plaintiff is a foreign legal or natural person, the plaintiff's identity certifications and power of attorney must be notarized and apostilled in the plaintiff's residence country/region. These notarized and apostilled documents must also be submitted with a Chinese translation translated by a translation agency designated by the court.
Where the plaintiff is a legal person or natural person in Hong Kong special administrative region, the plaintiff's identity certifications and power of attorney must first be notarized by a Hong Kong firms designated by the Ministry of Justice of China, and then reviewed and stamped with a special transfer seal by China Legal Service (H.K.) LTD. established in Hong Kong.
Where the plaintiff is a legal person or natural person in Macau special administrative region, the plaintiff's identity certifications and power of attorney must be notarized by a Chinese notary public stationed in Macau by the Ministry of Justice of China, and must be stamped with a special transfer seal by China Legal Service (Macau) Limited.
Where the plaintiff is a legal person or natural person in Taiwan regions, the plaintiff's identity certifications and power of attorney must be notarized by a notary agency in Taiwan, and a copy of the notarized documents will be sent by the Straits Exchange Foundation, and the Beijing Notary Association will issue a verification certificate of consistency between the original and the copy.
Docketing and acceptance
The court examines the complaint, the plaintiff’s identity certifications, evidence and other necessary documents submitted by the plaintiff. If the documents filed meet the relevant requirements for instituting a lawsuit, the court will docket the case and issue a notice of acceptance.
If the documents filed do not meet the requirements, the court will make a ruling not to accept the case. If the plaintiff is dissatisfied with the ruling, he may appeal.
Transmitting the complaint
After the court formally dockets the case, it will send a copy of the complaint to the defendant, and the defendant should submit a response within the specified time limit. If the defendant does not submit a response, it will not affect the trial of the People's Court.
Evidence exchange
The plaintiff and the defendant exchange evidence and conduct cross-examination.
Evidence shall be presented in court and cross-examined by the parties. Evidence involving state secrets, commercial secrets and personal privacy shall be kept confidential. If it needs to be presented in court, it shall not be presented in an open court session.
Trial in court
The court organizes the parties to conduct a trial in court, to state facts and grounds, conduct cross-examination, debate, and final presentation.
Mediation
During the trial, the court will actively guide the two parties to mediate, promote reconciliation, and resolve contradictions and disputes.
Decision
First-instance cases tried by the people's court under ordinary procedures shall be concluded within six months from the date of filing.
If mediation fails, the court will try the case and make a judgment based on facts and laws. The court will serve the judgment to the plaintiff and the defendant, and the judgment will state the court's judgment, such as whether it constitutes infringement, the infringer’s liability, etc.
If the parties are dissatisfied with the first-instance judgment, they can appeal within the prescribed time limit.
If no party appeals within the statutory time limit, the first-instance judgment will take effect.
Civil liability
In the trial of civil cases involving infringement on registered trademark rights, the court may, in accordance with the relevant provisions of the Civil Code and the Trademark Law and upon the specific circumstances of the case, order the infringer to bear civil liabilities such as stopping the infringement, removing obstacles, eliminating dangers, compensating for damages, and eliminating influences. It may also impose fines and confiscate infringing goods, counterfeited trademarks, and materials, tools, equipment and other property mainly used to produce infringing goods.
The amount of the fine may be determined by reference to the following amounts:
If the illegal business turnover is more than 50,000 RMB yuan, a fine of up to five times the illegal business turnover may be imposed;
If there is no illegal business turnover or the illegal business turnover is less than 50,000 RMB yuan, a fine of up to 250,000 RMB yuan may be imposed;
Severe penalties shall be imposed for trademark infringements committed twice or more within five years or for other serious circumstances.
If the administrative authority has already imposed administrative penalties on the same infringement on registered trademark rights, the people's court shall no longer impose civil sanctions.
Destruction and prohibition from entering commercial channels
In the trial of trademark dispute cases, the people's court shall, at the request of the rights holder, order the destruction of goods with counterfeit registered trademarks, except in special circumstances; order the destruction of materials and tools mainly used to manufacture goods with counterfeit registered trademarks, and no compensation shall be given [to infringers]; or in special circumstances, order the prohibition of the aforementioned materials and tools from entering commercial channels, and no compensation shall be given [to infringers].
Goods with counterfeit registered trademarks shall not enter commercial channels after the counterfeit registered trademarks are merely removed.
Criminal liability
Where a person uses a trademark identical to a registered trademark on the same goods or services without the authorization of the trademark registrant, and the conduct constitutes a crime, the person shall be held criminally liable in accordance with the law in addition to compensating for damages of the infringed party.
Where a person counterfeits or manufactures the signs of another person's registered trademark without authorization, or sells counterfeited or unauthorized signs of the registered trademark, and the conduct commits a crime, the person shall be held criminally liable in accordance with the law in addition to compensating for damages of the infringed party.
Where a person sells the goods with knowing that the goods counterfeit a registered trademark, and the conduct constitutes a crime, the person shall be held criminally liable in accordance with the law in addition to compensating damages of the infringed party.
Compensation for Damage
Determination of Compensation
Basic rules
According to the provisions of the Trademark Law, the compensation for damages in infringement on trademark exclusive rights shall be determined according to the actual losses suffered by the rights holder due to infringement. If the actual losses are difficult to determine, it may be determined according to the profits earned by the infringer due to infringement. If the losses of the rights holder or the profits earned by the infringer are difficult to determine, it shall be reasonably determined by referring to the multiples of the trademark license fee (or the royalties).
The compensation for damages shall include the reasonable expenses paid by the rights holder to stop the infringement.
Malicious infringement
For malicious infringement on trademark exclusive rights, if the circumstances are serious, the compensation for damages may be determined by one to five times the amount determined in accordance with the above rules.
Calculation approach
When determining the infringer's liability for compensation in accordance with the above rules, the compensation for damages can be calculated based on the calculation method chosen by the rights holder.
The profits earned by the infringer due to infringement as mentioned in the above rules may be calculated based on the product of the sales volume of the infringing goods and the unit profit of the goods. If the unit profit of the goods cannot be ascertained, it shall be calculated based on the unit profit of the goods of the registered trademark.
The losses suffered by the rights holder due to infringement as mentioned in the above rules may be calculated based on the reduction in the sales volume of the goods caused by the infringement or the product of the sales volume of the infringing goods and the unit profit of the goods of the registered trademark.
Statutory damage
If it is difficult to determine the actual losses suffered by the rights holder due to the infringement, the profits earned by the infringer due to the infringement, and the license fee for the use of the registered trademark, the people's court shall award compensation of 5 million or less RMB yuan based on the circumstances of the infringement.
The court may determine the statutory damages based on the request of the parties or on its own authority.
When determining the statutory damages, the court shall consider the nature, duration, consequences of the infringement, the subjective fault degree of the infringer, the reputation of the trademark, and the reasonable expenses of stopping the infringement.
Where the parties reach an agreement on the compensation for damages, such agreement shall be permitted.
Reasonable expenses
Reasonable expenses paid to stop the infringement include reasonable expenses incurred by the rights holder or the entrusted attorney to investigate and collect evidence of the infringement. The court may calculate the attorney fees that meet the regulations of the relevant state departments into the scope of compensation based on the litigation requests of the parties and the specific circumstances of the case.
Defendant's burden of proof
In order to determine the compensation for damages, where the rights holder has tried his best to provide evidence but the books and materials related to the infringement are mainly under the control of the infringer, the court may order the infringer to provide the books and materials related to the infringement.
If the infringer does not provide the books and materials or provides false books and materials, the people's court may determine the compensation for damages with reference to the rights holder's claims and the evidence provided.
When determining the compensation liability of the infringer in accordance with the above provisions, the amount of compensation may be calculated according to the calculation method selected by the rights holder.
No compensation for non-use
Where the exclusive rights holder of a registered trademark requests compensation for damages and the accused infringer raises the defense that the rights holder has not used the registered trademark, the people's court may require the rights holder to provide evidence of actual use of the registered trademark within the previous three years. If the exclusive rights holder of the registered trademark cannot prove that the registered trademark has been actually used within the previous three years, and cannot prove that it has suffered other losses due to the infringement, the accused infringer shall not bear the liability for compensation.
No compensation for legitimate source
Where a person sells goods without knowing that they infringe the exclusive rights to a registered trademark, and can prove that the goods were obtained legitimately and indicate the provider, he shall not bear compensation liability.
Appeal
If the parties are dissatisfied with the judgment of the first instance, they may appeal to the people's court at the higher level within the prescribed time limit.
The appeal shall be instituted through the people's court of the first instance. The appellate brief shall include the name of the party, the name of its legal or authorized representative; the name of the people's court of the first instance, the case number and the cause of action; the request, factual basis and grounds for the appeal.
Upon receipt of the appeal, the people's court of the first instance shall serve a copy of the appeal to the other party, and the other party shall file a response within the prescribed time limit.
Upon receipt of the appeal and response, the people's court of the first instance shall submit them to the people's court of the second instance together with all the case files and evidence.
The court of the second instance shall review the relevant facts and applicable laws of the appeal request.
The court of the second instance shall try the appellate case in court. After reading the case files, investigating and questioning the parties, if no new facts, evidence or reasons are raised and the people's court believes that there is no need to hold a trial, it may not hold a trial.
The court of second instance shall, based on the ascertained facts and legal provisions, make a judgment or ruling to affirm the original judgment or ruling, modify or revoke the original judgment or ruling, remand the case to the original people's court for a new trial, or make a judgment or ruling in accordance with the law or after ascertaining the facts.
The judgment or ruling of the court of second instance is the final judgment or ruling which will take effect immediately after being served on the parties and has legal effect.
Retrial
Although the second-instance judgment is the final judgment, if the parties believe that the second-instance judgment is erroneous, they may consult a lawyer on whether to request a retrial.
If the following circumstances exist, the parties may request a retrial, but the second-instance judgment or ruling will not be suspended or stayed.
For a judgment or ruling that has already taken effect, if one of the following circumstances is met, the party shall apply to the higher level people's court for a retrial within six months after the judgment or ruling takes effect or within six months from the date on which they know or should have known the circumstances listed in items (1), (3), (12) and (13) below.
(1) There is new evidence that is sufficient to overturn the original judgment or ruling;
(2) The basic facts determined in the original judgment or ruling lack evidence to prove them;
(3) The main evidence for the facts determined in the original judgment or ruling is forged;
(4) The main evidence for the facts determined in the original judgment or ruling has not been cross-examined;
(5) The parties are unable to collect the main evidence required for the trial of the case due to objective reasons, and had applied in writing to the court for investigation and collection, but the court has not done so;
(6) The original judgment or ruling has indeed made errors in the application of law;
(7) The composition of the trial panel is unlawful or the judges who should have recused themselves according to law did not recuse themselves;
(8) A person without litigation capacity did not have a legal representative to represent him or her in the litigation or a party who should have participated in the litigation did not participate in the litigation due to reasons that cannot be attributed to the party himself or his litigation representative;
(9) The parties’ rights to debate were deprived in violation of the law;
(10) The judgment was made in absentia without the issuance of a summons;
(11) The original judgment or ruling omitted or exceeded the litigation requests;
(12) The legal documents on which the original judgment or ruling was based have been revoked or amended;
(13) The judges have committed acts of corruption, bribery, favoritism, fraud, or miscarriage of justice when trying the case.
When applying for a retrial, a party shall submit the following documents to the Court:
(1) An application for retrial, which shall state: basic information of the applicant for retrial, the respondent and other parties in the original trial; the cause of action; the name of the original court, the case number of the original judgment at issue; the statutory circumstances for applying for a retrial and the specific facts and grounds; and the specific request for retrial.
(2) Identity certifications of the party applying for retrial;
(3) Power of Attorney;
(4) The original judgment at issue;
(5) The main evidence and other materials reflecting the basic facts of the case.
The people’s court shall review the application for retrial within three months from the date of receipt. If it meets the requirements, it shall rule to grant retrial; if it does not meet the requirements, it shall rule to dismiss the application.
Other civil lawsuits
In addition to cases of trademark infringement disputes, applications for pre-litigation cessation of infringement on the exclusive rights to a registered trademark, applications for cessation of damages for the trademark infringement, applications for pre-litigation property preservation, and applications for pre-litigation evidence preservation, the people's courts can also accept other civil trademark cases, such as cases of trademark ownership disputes, action for a declaratory judgment of non-infringement on trademark rights, trademark transfer contract disputes and trademark license contract disputes
The procedures for these cases are similar to those of infringement disputes and will not be repeated here.
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/litigation/legal matters, please send to info@bhtdlaw.com.
Jurisdiction, filing an administrative lawsuit, appeal, retrial, coexistence agreement, subjective malice, prior rights, certain fame, malicious preemptive registration, litigation
