Trademarks

Basic Information  |  Enforcement  |  Documents Needed to File Trademark Application

Enforcement

What Constitutes Trademark Infringement
According to the Trade Mark Law and its Implementing Regulations, the followings acts constitute trademark infringement:

1. to use a trademark that is identical with or similar to a registered trademark in respect of the same or similar goods without the authorization of the proprietor of the registered trademark;
2. to sell goods infringing the rights of a registered trademark;
3. to counterfeit, or to make without authorization, labels of another person's registered trademark, or to sell such labels;
4. to replace a registered trademark of the commodity with another trademark and sell the commodity in the market without authorization;
5. to use a symbol identical with or similar to another person's registered trademark in respect of the same or similar goods as the commodity name or trade dress and mislead the public;
6. to provide storage, transportation, mailing, hiding, or other conveniences for acts of trademark infringement;
7. to cause, in other respects, prejudice to the exclusive right of another person to use a registered trademark.

Civil Remedies
The statutory civil remedies for trademark infringement include:

• cessation of infringement
• compensation for damages
• elimination of ill effects
• reimbursement of reasonable costs incurred to stop the infringement

The Amount of Compensation
The profit of the infringer from the infringement, or the loss the infringed party suffers because of the infringement, including reasonable costs to stop the infringement.

In case it is difficult to determine the loss suffered by the infringed party or the profit of the infringer, the Court may, according to the actual scenario of the case, determine an amount of up to 500,000 Yuan (US$60,000) as compensation for the damage.

Criminal Liability
Unauthorized use of another person's registered trademark, counterfeiting or unauthorized making of labels of another person's registered trademark, selling such counterfeiting or unauthorized labels, or knowingly selling goods using a counterfeiting trademark, is, when the circumstances are serious, a criminal offense and the offender could be subject to a maximum of seven years' imprisonment.

Enforcement Procedures

Administrative Action
Administrative action is to complain before the Administration for Industry and Commerce (AIC)
AIC at and above the county level is the governmental body established to, among others, administer market activities and trademark enforcement. It has the power to investigate and make decisions on trademark infringement cases. If the AIC believes that an undertaking or individual has committed trademark infringement, it can order him to stop the acts of infringement, confiscate and destroy the infringing goods and the tools for producing the infringing goods or labels. The AIC also has the power to impose a fine on the infringer. AIC action has proved to be an effective way to stop clear-cut trademark infringement.

Court Action
Court System: China's judicial system is composed of courts at four levels, i.e. the basic court at county level, the intermediate court at city and prefecture level, the higher court at provincial level and the Supreme Court - the highest court of the country.

Jurisdiction and Choice of Forum: trademark infringement cases are dealt with at the level of Intermediate court. The court in the place where the infringing act takes place or where the defendant has domicile has jurisdiction.

Since selling infringing goods also constitutes trademark infringement, the court in the place where the distributor or retailer of the infringing goods can be chosen as the court of jurisdiction.
Statutory Limitation: the statutory limitation for instituting legal proceedings against trademark infringement is two years from the date on which the trademark owner or any interested party has or should have knowledge of the infringing act.

Preliminary Injunction
Where the trademark owner or interested party has evidence to prove that someone is infringing or will soon infringe its or his trademark right and that if such infringing act is not timely prevented it is likely to cause irreparable harm, it or he may, before any legal proceedings are instituted, request the Court to order the alleged infringer to suspend relevant (infringing) acts and to take measures for the preservation of property.

Appeal
The court of the second instance is the final instance. The judgment or decision of the court of first instance can be appealed to the court at one lever higher. The statutory time limit for an appeal is 30 days from the date on which the written judgment or decision is served if both or one party is foreign-related.