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How to Protect Registered
Trademark Right in
China
How to Protect Registered
Trademark Right in
China-Brief
Introduction
In China,
registered trademarks are those that have been approved and
registered by the Trademark Office, including commodity trademarks,
service trademarks, collective marks and certification marks;
trademark registrants shall be entitled to the right to exclusive
use of their trademarks and shall be protected by law.
Any of the following acts shall be an infringement upon the
right to exclusive use of a registered trademark:
1) using a trademark which is
identical with or similar to the registered trademark on the same
kind of commodities or similar commodities without a license from
the registrant of that trademark;
2)
selling the commodities that infringe upon the right to exclusive
use of a registered trademark;
3)
forging, manufacturing without authorization the marks of a
registered trademark of others, or selling the marks of a registered
trademark forged or manufactured without authorization;
4)
changing a registered trademark and putting the commodities with the
changed trademark into the market without the consent of the
registrant of that trademark; and
5)
causing other damage to the right to exclusive use of a registered
trademark of another person.
In the event of any of the acts, listed above, infringing
upon the right to exclusive use of a registered trademark, and a
dispute arises accordingly, the parties shall negotiate to settle
it; if any party refuses to negotiate or the negotiation has failed,
the registrant of that trademark or the interested persons may bring
a suit before a people’s court (judicial trademark enforcement),
either may they request the administrative department for industry
and commerce to handle the matter (administrative trademark
enforcement). This is a Chinese style IP protection of
“double-track”.
The
"double-track " IP protection is in line with Chinese
characteristics, and effective,
China
will still strengthen the administrative protection of trademark in
the future. Below is an introduction of the two protections.
How to Protect Registered
Trademark Right in
China-Administrative Trademark
Enforcement
In the event of any of the acts, listed above, infringing
upon the right to exclusive use of a registered trademark, and a
dispute arises accordingly, the parties shall negotiate to settle
it; if any party refuses to negotiate or the negotiation has failed,
the registrant of that trademark or the interested persons may bring
a suit before a people's court, either may they request the
administrative department for industry and commerce to handle the
matter. If the administrative department for industry and commerce
concluded that an infringement is constituted, it may order
immediate stop of the infringement, and may confiscate or destroy
the infringing commodities and the tools especially used for the
manufacturing of infringing commodities and the forging of marks of
the registered trademark, and may impose a fine in addition. If a
party disagrees with this handling decision, it may bring a suit
before a people's court within 15 days from the day of receiving the
notification of handlings according to the Administrative Procedure
Law of the People's Republic of China; if, at the expiration of such
a period, the infringer has neither brought a lawsuit nor performed
the decision after the period expires, the administrative department
may apply to the people's court for compulsory enforcement of its
order. The administrative department for industry and commerce
handling the case may, upon the request of a party, conduct
mediation over the amount of compensation for the infringement of
the right to exclusive use of the trademark; if the mediation has
failed, the party may bring a suit before a people's court according
to the Civil Procedure Law of the People's Republic of China.
The administrative department for industry and commerce shall
have the right to investigate into and punish the acts infringing
upon the right to exclusive use of a registered trademark; if a
crime is suspected to be constituted, the case shall be promptly
transferred to the judicial departments for handling according to
law.
The administrative departments for industry and commerce at
the level of county or above may exercise the following powers when
investigating into and punishing the acts that are suspected to
infringe upon the right to exclusive use of a registered trademark
of others based on the evidence for suspicion of illegal acts or the
report made by other people:
1)
inquiring the parties concerned, investigating the information
relating to the infringement of the right to exclusive use of a
registered trademark of others;
2) consulting and copying the contracts, vouchers, account books and
other relevant materials relating to the infringing activities of
the party;
3) conducting on-spot examination of the places where the party is
suspected to have committed the acts infringing upon the right to
exclusive use of a registered trademark of others; and
4) examining the articles relating to the infringing activities; and
may seal up or seize the articles proved by evidence to have
infringed upon the right to exclusive use of a registered trademark
of others.
The parties
shall assist and cooperate with the administrative departments for
industry and commerce in exercising the powers prescribed in the
preceding paragraph, and may not refuse or impede them.
The
amount of compensation for infringing upon the right to exclusive
use of a trademark shall be the proceeds obtained from the
infringement during the period of infringement, or the losses
suffered by the infringed due to the infringement during the period
of being infringed, including the reasonable expenses paid by the
infringed to stop the infringing acts.
If
it is difficult to determine the proceeds obtained from the
infringement referred to in the preceding paragraph, or it is
difficult to determine the losses suffered by the infringed due to
the infringement, the people’s court shall determine a compensation
of 500,000 Yuan or below according to the circumstances of the
infringing acts.
The
Administrative Department for Industry and Commerce can investigate
trademark infringement and counterfeiting based on
request, and can also handle the cases based on their own
initiative.
The
administrative protection process is simple and efficient. The
administrative department for Industry and Commerce requires the
owner of a registered trademark or the interested party only to
provide basic evidence, the burden of proof reduces, so as to
quickly stop trademark violations.
The
administrative protection is powerful.
For
cross-regional cases, the industrial and commercial administrative
organs can collaborate to solve.
How to Protect Registered
Trademark Right in
China-Judicial Trademark
Enforcement
Judicial enforcement is the final for solve the trademark dispute.
In
the event of any of the acts, infringing upon the right to exclusive
use of a registered trademark, and a dispute arises accordingly, the
parties shall negotiate to settle it; if any party refuses to
negotiate or the negotiation has failed, the registrant of that
trademark or the interested persons may bring a suit before a
people’s court, either may they request the administrative
department for industry and commerce to handle the matter. If a
party disagrees with this administrative department decision, it may
bring a suit before a people’s court within 15 days from the day of
receiving the notification of handlings according to the
Administrative Procedure Law of the People’s Republic of China; if,
at the expiration of such a period, the infringer has neither
brought a lawsuit nor performed the decision after the period
expires, the administrative department may apply to the people’s
court for compulsory enforcement of its order. The administrative
department for industry and commerce handling the case may, upon the
request of a party, conduct mediation over the amount of
compensation for the infringement of the right to exclusive use of
the trademark; if the mediation has failed, the party may bring a
suit before a people's court according to the Civil Procedure Law of
the People's Republic of China.
If
the registrant of a trademark or an interested person has the
evidence to prove that another person is conducting or is going to
conduct the acts infringing upon its right to the exclusive use of a
registered trademark, and if the acts are not stopped promptly,
irreparable damages will occur to its legal rights and interests, it
may apply to a people's court for a order of measures for stopping
relevant acts and for attachment.
In
order to stop the infringing acts, the registrant of a trademark or
the interested person may apply to a people’s court for preservation
of evidence before filing the suit under the circumstances that the
evidence may get lost or will be hard to acquire afterwards.
How to Protect Registered
Trademark Right in
China-Update of Trademark
Protection
The
Trademark Law is now under revision, which has the following three
points in the general idea: one is consistent with the international
treaties. The second is to strengthen the pertinence, perfect the
relevant systems, focusing on the main problems existed in the
practice. The third is to take the form of an amendment, so as to
maintain the stability of the existing trademark style structure.
Abstract: How to Protect Registered
Trademark Right in China. In the event of any of the acts, listed above, infringing
upon the right to exclusive use of a registered trademark, and a
dispute arises accordingly, the parties shall negotiate to settle
it; if any party refuses to negotiate or the negotiation has failed,
the registrant of that trademark or the interested persons may bring
a suit before a people’s court (judicial trademark enforcement),
either may they request the administrative department for industry
and commerce to handle the matter (administrative trademark
enforcement). This is a Chinese style IP protection of
“double-track”.
Key words: How
to Protect Registered Trademark Right in China_judicial
trademark enforcement_administrative
trademark enforcement_double-track
China
Resources:
[1] China’s
Intellectual Property Protection in 2011:
[2]
How to Protect Registered Trademark Right in China
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