Protection Against Intellectual Property Rights Infringement

China’s intellectual property legislation (including Patent Law, Trademark Law and Copyright Law) stipulates that infringement of intellectual property rights (IPRs) can be dealt with by administrative procedures or legal proceedings. In terms of civil liabilities, the infringer may be ordered to stop the infringing act, eradicate the damage done, make public apologies or compensate for damages. In terms of administrative measures and criminal liabilities, they include warnings, orders to stop the infringing act, confiscation of unlawful gains, fines, and compensation for damages.

1 Legal Proceedings

When an IPR infringement dispute arises, the infringed party may take actions against the infringer directly with the people’s court (generally an intermediate people’s court) at the place of the infringer’s domicile or where the infringing act takes place. An interested party may request the temperary order from the people’s court to stop the infringing act before legal action if he finds that due to emergency circumstances any delay to stop the infringing act may cause irreparable damages to his legitimate rights. In IPR infringement cases, if the infringer is convicted, he will be made to bear civil liabilities for the infringing act.

2 Administrative Procedures

When an IPR infringement dispute arises, the interested party may request the relevant administrative authorities at county-level and above at the place of the infringer’s domicile or where the infringing act takes place to handle the case. In making a request for the administrative authorities to handle an infringement dispute, the interested party should submit a written request, proof of his right, and evidence of the infringing act.

The administrative authorities responsible for handling copyright disputes will make a decision whether a complaint will be processed within 15 days upon receipt of the request and inform the applicant of its decision. A written explanation will be given to the applicant if the decision is negative. The administrative authorities responsible for handling patent disputes will, after examining a request, make a decision whether the complaint will be processed within seven days upon receipt of the request. If the decision is negative, the applicant will be given a written explanation within seven days.

Where an interested party is dissatisfied with the administrative punishment decision made by the administrative authorities, he may, within three months from receipt of the notification of the decision, institute administrative proceedings with the people’s court in the place where the administrative authorities are located. or he may, within 15 days from receipt of the notification of the decision, apply to the local people’s government or the administrative authorities at a higher level for reconsideration of the decision. The authorities concerned should decide within 10 days whether to handle the case. If positive, a decision on the reconsideration should be made within two months from receipt of the application for reconsideration. If the interested party is dissatisfied with the decision on the reconsideration, he may, within 15 days from receipt of the notification of the decision, institute administrative proceedings with the people’s court. If no proceedings are instituted and the decision is not performed at the expiration of the specified period, the administrative authorities may request the people’s court for compulsory execution thereof.

The competent administrative authorities may order the infringer to pay for damages based on the request of the applicant. The interested parties may resort to mediation. If mediation is not a preferred option, or mediation has failed, or one of the interested parties refuses to abide by the outcome of mediation, legal proceedings may be instituted with the people’s court.

3 Calculation of Compansation

The amount of compensation for infringing a copyright is calculated according to the direct damages caused by the infringement and reasonable fees incurred by the copyright holder in investigating and stopping the infringing act. The amount of compensation for infringing a trademark is calculated based on the proceeds derived by the infringer through the infringement during the infringement period or the damages suffered by the infringed party during the infringement period. The amount of compensation for infringing a patent is calculated according to the damages suffered by the patentee or the proceeds derived by the infringer through the infringement. Where it is difficult to determine the damages suffered by the patentee or the proceeds derived by the infringer, the amount of royalty for the patent may be used as the base for calculation.

Tags: Court, intellectual property rights, Infringement
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Trademark Law of the Peoples Republic of China (the 2nd amended edition)

(Adopted at the 24th meeting of the Standing Committee of the Fifth National People’s Congress on August 23, 1982
Amended according to the Decision on Amending the Trademark Law of the People’s Republic of China at the 34th Session of the Standing Committee of the 7th National People’s Congress on February 22, 1983 for the first time
Amended according to the Decision on Amending the Trademark Law of the People’s Republic of China at the 24th Session of the Standing Committee of the 9th National People’s Congress on October 27, 2001 for the second time)

Contents

Chapter I General Provisions
Chapter II Application for Trademark Registration
Chapter III Examination and Approval of Trademark Registration
Chapter IV Renewal, Assignment and Licensing of Registered Trademarks
Chapter V Determination of Disputes Concerning Registered Marks
Chapter VI Administration of the Use of Trademarks
Chapter VII Protection of the Right to Exclusive Use of a Registered Trademark
Chapter VIII Supplementary Provisions

Chapter I General Provisions

Article 1 This Law is formulated for the purpose of improving the administration of trademarks, protecting the right to exclusive use of trademarks and encouraging producers and operators to guarantee the quality of their goods and services and maintain the reputation of their trademarks, so as to protect the interests of consumers and of producers and operators, and to promote the development of the socialist market economy.

Article 2 The Trademark Office of the administrative department for industry and commerce under the State Council shall be in charge of the trademark registration and administration throughout the country.

The administrative department for industry and commerce under the State Council shall establish a Trademark Review and Adjudication Board to be responsible for handling trademark disputes.

Article 3 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.

Collective marks used in this Law shall refer to the marks that are registered in the name of groups, associations or other organizations and that are provided to the members of the said organizations for business activity use, thus to indicate the membership of the users in the said organizations.

Certification marks used in this Law shall refer to the marks that are controlled by the organizations with supervising power over some kind of commodities or services yet are used by the units or individuals apart from the said organizations on their commodities or services, thus to certificate the origins, raw materials, manufacturing methods, quality or other specific characteristics of the said commodities or services.

The special matters concerning the registration and administration of collective marks and certification marks shall be provided for by the department for industry and commerce under the State Council.

Article 4 Any natural person, legal person or other organization that needs to acquire the right to exclusive use of a trademark for the commodities it produces, manufactures, processes, selects or markets shall file an application for commodity trademark registration with the Trademark Office.

Any natural person, legal person or other organization that needs to acquire the right to exclusive use of a trademark for the service items it provides shall file an application for service trademark registration with the Trademark Office.

The provisions of this Law relating to commodity trademarks shall be applicable to the service trademarks.

Article 5 Two or more natural persons, legal persons or other organizations may jointly apply to the Trademark Office for the registration of the same trademark, and enjoy and exercise the right to exclusive use of that trademark jointly.

Article 6 With respect to the commodities that the state has designated as requiring the use of a registered trademark, an application for trademark registration must be filed; the commodities may not be sold on the market before the registration is granted.

Article 7 The user of a trademark shall be responsible for the quality of the commodities on which the trademark is used. The administrative departments for industry and commerce at all levels shall, by means of trademark administration, stop any practices that deceive the consumers.

Article 8 An application for trademark registration may be filed for any visible mark including word, design, letter, number, 3D (three-dimension) mark or color combination, or the combination of the elements above mentioned, that can distinguish the commodities of the natural person, legal person or other organization from those of others.

Article 9 The trademark for which an application for registration is filed shall have distinctive characteristics easy to identify, and may not conflict with the legal rights acquired by others in priority.

A trademark registrant has the right to mark the words “Registered trademark” or a sign indicating that the trademark is registered.

Article 10 The following marks may not be used as trademarks:
1) those identical with or similar to the national name, national flag, national emblem, military flag or medals of the People’s Republic of China, as well as those identical with the names of the specific sites or the names and designs of the symbol buildings of the places where the central government agencies are located;
2) those identical with or similar to the national name, national flag, national emblem or military flag of any foreign country, except with the consent of the government of that country;
3) those identical with or similar to the name, flag, or emblem of any intergovernmental international organization, except with the consent of that organization and those unlikely to mislead the public;
4) those identical with or similar to the official marks, inspection marks that indicate the controlling or providing guarantee, except with authorization;
5) those identical with or similar to the name or symbol of the Red Cross or the Red Crescent;
6) those having the nature of discrimination against any nationality;
7) those constituting exaggerated advertising and are deceitful; and
those detrimental to socialist morality or customs, or having other harmful influences.

The place names of the administrative districts at the level of county or above or the foreign place names known by the public may not be used as trademarks. However, the place names that have other meanings and those used as part of a collective mark or certification mark are exceptional; the registered trademarks that use place names shall continue to be valid.

Article 11 The following marks may not be registered as trademarks:
1) those only having the generic names, designs and models of the commodities concerned;
2) those simply directly indicating the quality, main raw materials, functions, use, weight, quantity or other characteristics of the commodities concerned; and
3) those lacking distinctive characteristics.

If the marks listed in the preceding paragraph have, through usage, obtained distinctive characteristics and can be easily identified, they may be registered as trademarks.

Article 12 In case of application for trademark registration on 3D marks, the registration shall not be granted if the figures are generated simply by the nature of the commodities, the commodity figures are needed for technical effects or the figures make the commodities become substantially valuable.

Article 13 If a trademark, for which an application for registration is filed, of the same or similar commodity is the copy, imitation or translation of a well-known trademark of others which hasn’t been registered in China, and misleads the public and leads to possible damage to the interests of the registrant of that well-known trademark, it shall not be registered and shall be prohibited from use.

If a trademark, for which an application for registration is filed, of a different or dissimilar commodity is the copy, imitation or translation of a well-known trademark of others which has been registered in China, and misleads the public and leads to possible damage to the interests of the registrant of that well-known trademark, it shall not be registered and shall be prohibited from use.

Article 14 The following factors shall be taken into consideration in the determination of well-known trademarks:
1) how well is that trademark known by the relevant public;
2) the period during which that trademark has been in use;
3) the period, extent and geographic scope of any publicity of that trademark;
4) the record of protection of that trademark as a well-known trademark; and
5) other factors for which that trademark is well-known.

Article 15 If an agent or a representative registers the trademark of the principal or the represented in his/her own name without authorization, the trademark shall not be registered and shall be prohibited from use upon the opposition raised by the principal or the represented.

Article 16 If a trademark contains the geographic mark of the commodities while the commodities don’t come from the region indicated by that mark, and thus misleads the public, the trademark shall not be registered and shall be prohibited from use; however, those that have been registered in good faith shall continue to be valid.

The geographic mark mentioned in the preceding paragraph refers to the mark that indicates the region the commodities come from. And the specific quality, reputation or other characteristics of the said commodities are determined mainly by the natural factors or human cultural factors of that region.

Article 17 Where a foreigner or a foreign enterprise applies for trademark registration in China, the matter shall be handled in accordance with any agreement concluded between the country to which the applicant belongs and the People’s Republic of China, or any international treaty to which both countries are parties, or on the basis of the principle of reciprocity.

Article 18 Where a foreigner or a foreign enterprise applies for trademark registration or deals with other trademark matters in China, it shall entrust an organization certified by the Chinese Government as having the qualification for trademark agency to act on its behalf.

Chapter II Application for Trademark Registration

Article 19 An applicant for trademark registration shall report, in accordance with the prescribed classification of commodities, the class of the commodities and the designation of the commodities on which the trademark is to be used.

Article 20 If an applicant intends to apply for the registration of the same trademark on the commodities in different classes, it shall submit separate applications for registration in accordance with the classification of commodities.

Article 21 If a registered trademark needs to be used on other commodities of the same class, a new application for registration shall be filed.

Article 22 If the mark of a registered trademark needs to be changed, a new application for registration shall be filed.

Article 23 If a change needs to be made in the name, address or any other registered matter concerning the registrant of a registered trademark, an application to make the change shall be filed.

Article 24 If an applicant applies for the trademark registration of the same trademark for the commodities of the same class within 6 months from the day on which it filed the application for trademark registration of its trademark in a foreign country, it may enjoy the right of priority in accordance with the agreement concluded between that foreign country and China or the international treaty to which both countries are parties, or according to the principle of mutual acknowledgement of the right of priority.

The applicant that requests the right of priority in accordance with the preceding paragraph shall file a written declaration when filing the application for trademark registration, and shall submit a copy of the documents of application for trademark registration it firstly filed within 3 months; those failing to file the written declaration or failing to submit the copy of the documents of application for trademark registration within the prescribed time limit shall be regarded as having not requested for the right of priority.

Article 25 If a trademark is used for the first time on the commodities displayed at any international exhibition sponsored or acknowledged by the Chinese Government, the applicant for registration of that trademark may enjoy the right of priority for 6 months from the day on which the said commodities are displayed.

The applicant requesting for the right of priority in accordance with the preceding paragraph shall file a written declaration when filing the application for trademark registration, and shall submit the name of the exhibition in which its commodities are displayed, the evidence proving that the said trademark is used on the displayed commodities, the date of exhibition and other certification documents; those failing to file the written declaration or those failing to submit the certification documents within the prescribed time limit shall be regarded as having not requested for the right of priority.

Article 26 The matters reported and the materials provided for the application for trademark registration shall be authentic, accurate and complete.

Chapter III Examination and Approval of Trademark Registration

Article 27 When an application has been made to register a trademark that is in conformity with the relevant provisions of this Law, the Trademark Office shall make a preliminary examination and approval of that trademark and shall publicly announce it.

Article 28 If an application has been made to register a trademark that is not in conformity with the relevant provisions of this Law or that is identical with or similar to another person’s trademark which has already been registered or given preliminary examination and approval for use on the same kind of commodities or similar commodities, the Trademark Office shall reject the current application and shall not publicly announce that trademark.

Article 29 If two or more trademark registration applicants apply for registration of identical or similar trademarks for the same kind of commodities or similar commodities, the trademark whose registration was first applied for shall be given preliminary examination and approval and shall be publicly announced; if the applications are filed on the same day, the trademark which was first used shall be given preliminary examination and approval and shall be publicly announced, and the applications of the others shall be rejected and shall not be publicly announced.

Article 30 Any person may file an opposition to a trademark which has been given preliminary examination and approval within three months from the day it was publicly announced. If no opposition is filed after the period of public announcement expires, registration shall be granted, a trademark registration certificate shall be issued and the trademark shall be publicly announced.

Article 31 Anyone applying for trademark registration may not damage the existing rights of others obtained by priority, neither may it register, in advance, the trademark that has been used by others and has become influential.

Article 32 When an application for trademark registration has been rejected and the trademark is not to be publicly announced, the Trademark Office shall notify the trademark registration applicant in writing. If the trademark registration applicant refuses to accept the rejection, it may apply to the Trademark Review and Adjudication Board for a re-examination within 15 days from the day on which the notification is received, and the Trademark Review and Adjudication Board shall make a decision and notify the applicant in writing.

If the a party doesn’t agree with the decision of the Trademark Review and Adjudication Board, it may file an action to the people’s court within 30 days from the day on which the notification is received.

Article 33 If an opposition is filed against a trademark which has been given preliminary examination and approval and has been publicly announced, the Trademark Office shall hear the statements of the facts and reasons made by the opponent and the person against whom the opposition is filed and shall, after investigation and verification, make a ruling. If a party disagrees with the decision, it may apply to the Trademark Review and Adjudication Board for a re-examination within 15 days from the day on which the notification of decision is received, and the Trademark Review and Adjudication Board shall make a ruling and notify, in writing, the opponent and the person against whom the opposition is filed.

If a party doesn’t agree with the ruling of the Trademark Review and Adjudication Board, it may bring a suit before a people’s court within 30 days from the day on which the notification is received. The people’s court shall notify the opposite party to the trademark re-examination proceedings to join in the case as the third party.

Article 34 If neither party has filed an application for re-examination of the ruling made by the Trademark Office or if neither party has brought a suit before the people’s court against the ruling made by the Trademark Review and Adjudication Board within the prescribed period, the ruling shall take effect.

If it is ruled that the opposition can’t stand, the registration shall be granted, a certificate of trademark registration shall be issued and the trademark shall be announced publicly; if it is ruled that the opposition is upheld, no registration shall be granted.

If the registration is granted because it is ruled that the opposition can’t stand, the time that the trademark registration applicant obtains the right to exclusive use of the trademark shall be counted from the day on which the three-month period of preliminary examination and approval announcement expires.

Article 35 The application for trademark registration and the application for trademark re-examination shall be examined promptly.

Article 36 If the trademark registration applicant or the registrant has found that there are obvious mistakes in the trademark application documents or registration documents, it may apply for corrections. The Trademark Office shall, according to law, make corrections within the limits of its powers and shall notify the parties.

The corrections of mistakes referred to in the preceding paragraph shall not involve the substantial contents of the trademark application documents or registration documents.

Chapter IV Renewal, Assignment and Licensing of Registered Trademarks

Article 37 The period of validity of a registered trademark shall be ten years, counted from the day the registration is approved.

Article 38 If a registrant needs to continue to use the registered trademark after the period of validity expires, an application for renewal of registration shall be made within six months before the expiration. If the registrant fails to make such an application within that period, an extension period of six months may be granted. If no application has been filed before the extension period expires, the registered trademark shall be cancelled.

The period of validity for each renewal of registration shall be ten years.

After a renewal of registration has been approved, it shall be publicly announced.

Article 39 When a registered trademark is to be assigned, the assignor and the assignee shall sign the agreement of assignment, and shall jointly file an application with the Trademark Office. The assignee shall guarantee the quality of the commodities on which the registered trademark is to be used.

After the assignment of a registered trademark has been approved, it shall be publicly announced. The assignee shall be entitled to the right of exclusive use of the trademark from the day of public announcement.

Article 40 A trademark registrant may, by concluding a trademark licensing contract, authorize another person to use its registered trademark. The licensor shall supervise the quality of the commodities on which the licensee uses the licensor’s registered trademark, and the licensee shall guarantee the quality of the commodities on which the registered trademark is to be used.

The one licensed to use the registered trademark of another person must indicate the name of the licensee and the origin of the commodities on the commodities on which that registered trademark is used.

The trademark licensing contract shall be submitted to the Trademark Office for the archivist purpose.

Chapter V Determination of Disputes Concerning Registered Marks

Article 41 If a trademark that has been registered violates the provisions of Article 10, Article 11, and Article 12 of this Law, or the registration of the trademark is obtained by deceitful means or other illicit means, the Trademark Office shall cancel that registered trademark; and other units or individuals may request the Trademark Review and Adjudication Board to cancel that registered trademark.

If a trademark that has been registered violates the provisions of Article 13, Article 15, Article 16 and Article 31 of this Law, the owner or the interested persons of the trademark may, within 5 years from the day on which the trademark is registered, request the Trademark Review and Adjudication Board to revoke that registered trademark. And the owner of a well-known trademark shall not be subject to the limit of 5 years to request the revocation of bad-faith registration.

Apart from the circumstances prescribed in the two preceding paragraphs, if there is any dispute over a registered trademark, an application may be filed with the Trademark Review and Adjudication Board for a ruling within 5 years from the day on which that trademark was registered upon approval.

The Trademark Review and Adjudication Board shall notify the parties concerned after receiving the application for ruling and request them to reply within a specified period.

Article 42 If an opposition was filed and a ruling already made prior to the approval of the registration of a trademark, the same facts and reasons may not be used in an another application for a ruling.

Article 43 After the Trademark Review and Adjudication Board has made the ruling of maintaining or revoking a registered trademark in dispute, it shall notify the parties concerned in writing.

If a party refuses to accept the ruling of the Trademark Review and Adjudication Board, it may bring a suit before a people’s court within 30 days from the day the notification is received. The people’s court shall notify the opposite party of the trademark ruling proceedings to join in the case as the third party.

Chapter VI Administration of the Use of Trademarks

Article 44 In the event of any of the following acts concerning the use of a registered trademark, the Trademark Office shall order rectification of the situation within a specified period or shall revoke the registered trademark:
1) if the registered trademark is altered without authorization;
2) if the registrant’s name, address or any other registered matters concerning the registered trademark is changed without authorization;
3) if the registered trademark is assigned without authorization; and
4) if the registered trademark has not been used for three consecutive years.

Article 45 If a registered trademark is used on crudely manufactured commodities that are passed off as being of high quality, and thus deceives the consumers, the administrative departments for industry and commerce at various levels shall, according to the circumstances, order rectification of the situation within a specified period and may, in addition, circulate a notice on the matter or impose a fine, or the Trademark Office may revoke the registered trademark.

Article 46 If a registered trademark is revoked or is not renewed after its period of validity expires, the Trademark Office shall not approve any application for the registration of a trademark identical with or similar to the said trademark within one year from the day of the revocation or cancellation.

Article 47 In the event of a violation of the provisions of Article 5 of this Law, the local administrative department for industry and commerce shall order the violator to file an application for registration within a specified period and may, in addition, impose a fine.

Article 48 In the event of any of the following acts concerning the use of an unregistered trademark, the local administrative department for industry and commerce shall stop the use of the trademark, order rectification of the situation within a specified period and may, in addition, circulate a notice on the matter or impose a fine:
1) if the trademark is falsely represented as being a registered one;
2) if the trademark violates the provisions of Article 8 of this Law; or
3) if the trademark is used on crudely manufactured commodities that are passed off as being of high quality, thus deceiving consumers.

Article 49 If a party disagrees with the decision of the Trademark Office to revoke a registered trademark, it may apply for a re-examination within 15 days from the day of receiving the notification of the revocation, and the Trademark Review and Adjudication Board shall make a decision and notify the applicant in writing.

If the party disagrees with the decision of the Trademark Review and Adjudication Board, it may bring a suit before a people’s court within 30 days since the day of receiving the notification.

Article 50 If a party disagrees with the decision of the administrative department for industry and commerce to impose a fine on him according to the provisions of Articles 45, 47 and 48 of this Law, it may bring a suit before a people’s court within 15 days since the day of receiving the notification of the decision. If, at the expiration of such a period, the party has neither brought a suit nor complied with the decision, the relevant administrative department for industry and commerce shall apply to the people’s court for compulsory enforcement of its decision.

Chapter VII Protection of the Right to Exclusive Use of a Registered Trademark

Article 51 The right to exclusive use of a registered trademark shall be limited to trademarks which have been approved for registration and to commodities on which the use of a trademark has been approved.

Article 52 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.

Article 53 In the event of any of the acts, listed in Article 52 of this Law, 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.

Article 54 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.

Article 55 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.

Article 56 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.

If any person sells the commodities that have, not knowing the facts, infringed upon the right to exclusive right of a trademark and is able to prove that it has obtained those commodities legally and to specify the provider, it shall not bear the liability for compensation.

Article 57 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.

The provisions of Article 93 to Article 96, and of Article 99 of the Civil Procedure Law of the People’s Republic of China shall be applicable to the handling of the applications mentioned in the preceding paragraph by a people’s court.

Article 58 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.

The people’s court shall make the ruling within 48 hours after accepting the application; if it is ruled to take the measures for preservation, the ruling shall be executed immediately.

The people’s court may order the applicant to provide security, and shall reject the application if the applicant fails to provide security.

If the applicant hasn’t filed the suit within 15 days after the people’s court took the measures for preservation, the people’s court shall discharge the measures for preservation.

Article 59 Any person who uses on the same kind of commodities the trademark identical with a registered trademark without the permission of the registrant of that trademark and constitutes a crime, in addition to compensating for the losses suffered by the infringed, shall be investigated into for the criminal responsibilities according to law.

Any person who forges or manufactures without authorization the marks of a registered trademark of another person, or sells the marks of a registered trademark forged or manufactured without authorization, in addition to compensating for the losses suffered by the infringed, shall be investigated for the criminal responsibilities according to law.

Any person who knowingly sells the goods using the counterfeited registered trademark and constitutes a crime, in addition to compensating for the losses suffered by the infringed, shall be investigated into for criminal responsibilities according to law.

Article 60 The functionaries of state organs engaged in the registration, administration and review of trademarks must handle the cases justly, be incorruptible and self-disciplined, be devoted to their duties and serve in a courteous and honest way.

The functionaries of the Trademark Office, the Trademark Review and Adjudication Board and the state organs engaged in the registration, administration and review of trademarks may not undertake the activities of trademark agency and commodity production and operation.

Article 61 The administrative departments for industry and commerce shall establish and improve the internal supervision system, and supervise and inspect the enforcement of laws and regulations, and the observance of disciplines of the functionaries of state organs responsible for the registration, administration and review of trademarks.

Article 62 If the functionaries of state organs engaged in the registration, administration and review of trademarks neglect their duties, abuse their powers, practice favoritism, handle the matters of trademark registration, administration and review against the law, accept money and goods from the parties, seek improper profits and constitute crimes, they shall be investigated into for criminal responsibilities according to law; and administrative punishment shall be given if a crime hasn’t been constituted.

Chapter VIII Supplementary Provisions

Article 63 Applicants for trademark registration and the handling of other trademark matters shall pay a fee, the specific standards of which shall be prescribed separately.

Article 64 This Law shall go into effect as of March 1, 1983. On that same day, the Regulations on Trademark Administration promulgated by the State Council on April 10, 1963 shall simultaneously be repealed, and any other provisions concerning trademark administration that conflict with this Law shall be invalidated.

Trademarks registered before this Law goes into effect shall continue to be valid.

Tags: Law, China, IPR
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Trade Mark Matters in China

If you want to protect your trade mark in China in a cost-effective manner, you need to register it with the China Trademark Office (CTMO).

A trade mark registration can give you access to more simple and inexpensive enforcement options than otherwise available, including  access to criminal remedies against counterfeiters.

Without a registration, enforcement is still technically possible under China’s laws and regulations on the basis of unfair competition, but as in other countries, protection under such laws is much less predictable and normally more costly.

China follows a “first-to-file” rule for obtaining trade marks rights.  This means that generally the person who files their trade mark application first is entitled to register the trade mark.  The person who uses the trade mark first is entitled to register, prior use of a mark affords little or no protection.   It is therefore highly advisable to file applications for trade marks as early as possible, and preferably well before you enter the Chinese market.  The failure to file early leaves the door open to other parties to file before you do.  In some cases, this can lead to the exclusion of your products from entry to the Chinese market because of pre-existing registrations.  There are  numerous examples of cases where trade mark counterfeiters obtained registrations before the true brand owner and threatened infringement actions against distributors of legitimate products.  In such cases, the brand owner is often forced by market realities to pay significant compensation to counterfeiters to procure the assignment of trade mark registrations.

Chinese consumers refer to foreign brands by reference to Chinese versions of the brand, even if there is no “official” Chinese version and advertising uses only the English version.  If you don’t have a Chinese version of your trade mark, you are strongly advised to create one and register it.  Otherwise, the local market will create one for you (which you might not like) and someone else might register it.  It should be noted that the CTMO considers foreign equivalents of marks during the examination process.  For example, the Chinese version of the word SEA could stop the English word SEA from being registered for the same goods or services.

A trade mark application can be filed in China either by filing an application directly with the CTMO or alternatively by extending an existing application or registration to China under the Madrid Protocol.  There are advantages and disadvantages for both procedures which should be discussed with your intellectual property advisor.The procedure for filing a trade mark application in China is similar to worlwide.  However, you have to file through a Chinese trade mark agency which can only act on your behalf upon receipt of a signed power of attorney.  In addition, the applicant must provide its name and address in Chinese. If you do not yet have a Chinese name, the agency can assist with this.

The decision as to which mark to file for and how to describe the goods and  services to be covered should be considered carefully with your advisor.  It is generally preferable in China to file for the version of a mark as it is used and to cover as wide a range of goods and/or services as you reasonably can.

It is also advisable to conduct trade mark searches before filing trade mark  applications to check whether anyone else has already filed for a similar or identical mark which might block your planned application.
It is also important that expert advice is obtained to assess whether the proposed mark might be rejected in China on grounds other than prior conflicts. For example, trade mark applications may be rejected if the word or design elements are considered indistinctive, generic or laudatory.  The same is true in other countries.  However, China has its own particular approach to registrability.

Single colours, smell and sound trade marks are not yet registrable in China. However, it is technically possible to register three-dimensional trade marks as well as combinations of colours.  China does not allow divisional applications, series or defensive trade marks.  Similarly, the owner of a certification trade mark cannot use the mark itself but can only authorise others who meet the required standards to use it. It is also possible for geographical indications to be protected as collective or certification trade marks in China,  For instance, groups of producers of a product where a given quality, reputation or other characteristic is attributable to its location can be granted the exclusive right to use a particular geographic name on the product.

Once an application is approved, it will be published in the CTMO Gazette.  Following gazettal, any party may file an opposition within three months, challenging the application on the grounds of prior marks, distinctiveness or other grounds set out in the Trademark Law.  A registration certificate  will be issued if no opposition is filed within this three-month period.

Chinese trade mark registrations are valid for 10 years and can be renewed for successive 10 year periods.  Trade marks registered through the Madrid Protocol are also valid for 10 years.

It normally takes less than 3 years to obtain a trade mark registration in China, with protection generally effective on the  date of registration, rather than retroactive to the filing date. This underscores the importance of filing early, since trade mark rights are not enforceable in China until the trade mark is registered.

It is worth noting there are strict and sometimes tight time frames for actions associated with trade mark process, for example 15 days turnaround for an applicant to lodge an appeal with Trademark Review and Adjudication Board (TRAB) regarding a ground for rejection. Registering your marks early is clearly the best way to prevent this type of “counterfeiting”.

But if someone applies to register your trade mark, an opposition can be filed once it is gazetted in the Trademark Gazette. Prior to gazettal, it is generally advisable to send an informal letter to the CTMO bringing your rights to the attention of the appropriate examiner provided of course you have prior registrations in China.

An opposition will normally take 3 to 4 years.  The loser in an opposition can file an appeal to the Trademark Review and Adjudication Board which will normally take a further 5 to 7  years to issue a decision.  The decisions of the Trademark Review and Adjudication Board can be appealed further to the Intermediate People’s Court in Beijing.

Trade marks registered by others can be cancelled through the filing of petitions with the Trademark Review and Adjudication Board.  It is normally advisable to support such cancellation actions through extensive evidence of the fame and use of your mark, both in China and globally.

Cancellations normally take five to seven years to be decided, during which time it is normally very difficult to stop the counterfeiter who stole your mark from using it. If someone has registered your mark but has not used it for three years, it is possible to petition the CTMO to cancel the registration on the grounds of non-use. A non-use petition is normally decided within one to two years.

One final fact that should be noted, while not strictly related to the registration of trademarks rights in China, but it does have significant importance over their enforcement, is that customs authorities have been empowered with their own monitoring system to help prevent the export of counterfeited goods. Trademark owners, provided they are registered in China, can now apply for protection of their trademark rights directly at the borders, by having customs agents actively check for potentially infringing exports. Product samples, packaging and even suspected instances of piracy can be submitted before their consideration, which causes them to, ex officio, take measures to curb and stop these kinds of practices when detected.

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Implementing Regulations of the Trademark Law of China

Chapter 1     General Provisions

Article 1 These Implementing Regulations are formulated in accordance with the Trademark Law of the People’s Republic of China (hereinafter referred to as the Trademark Law).

Article 2 The provisions made in these Implementing Regulations concerning goods marks shall apply to service marks.

Article 3 The use of trademarks referred to in the Trademark Law and these Regulations include, among other things, the use of trademarks on goods, Packages or containers thereof and commodity trading instruments, or use of trademarks in advertisements, exhibitions and other commercial activities.

Article 4 Goods required to bear registered trademarks as prescribed by the State mentioned in Article 6 of the Trademark Law refer to goods in respect of which registered trademarks must be used as prescribed by law and administrative regulations.

Article 5 Under the Trademark Law and these Regulations, when an interested party believes his trademark constitutes a well-known trademark when a dispute arises in the course of trademark registration or trademark review and adjudication, he may file a request with the Trademark Office or the Trademark Review and Adjudication Board to establish it as a well-known trademark, to reject the trademark registration application contrary to the provision of Article l3 of the Trademark Law, or to cancel the trademark registration contrary to the provision of Article 13 of the Trademark Law. When filing an application, an interested party shall submit proofs that his trademark constitutes a well-known trademark.

At the request of the interested party, the Trademark Office or the Trademark Review and Adjudication Board shall, on the basis of ascertained facts, establish whether his trademark constitutes a well-known trademark pursuant to the provision of Article 14 of the Trademark Law.

Article 6 Applications may be filed for registration of geographic indications provided for in Article l6 of the Trademark Law as certification marks or collective marks in accordance with the provisions of the Trademark Law and these Regulations.

Where a geographic indication is registered as a certification mark, the natural person, legal person or other organization whose goods has met the requirement imposed on the geographic indications may request for using the certification mark, and the organization having control on the certification mark shall give its permission. Where a geographic indication is registered as a collective mark, the natural person, legal person or other organization whose goods has met the requirement imposed on the geographic indications may request for membership of the body, association or other organization having the geographic indication as its collective mark. The body, association or other organization shall accept him or it as its member according to the articles of constitution thereof. Any person who does not ask to join the body, association or other organization having the geographic indication as its collective mark may also duly use the geographic indication, and the body, association or other organization does not have the right to prohibit the use.

Article 7 An interested party entrusting a trademark agency with the filing of an application for trademark registration or attending to other trademark matters shall submit a Power of Attorney. The Power of Attorney}’ shall indicate such contents and competence as authorized: the Power of Attorney from a foreign person or foreign enterprise shall, in addition, indicate the nationality of the entruster.

Notarization and legalization of the Power of Attorney and other relevant certificates from a foreign person or foreign enterprise’ shall be done based on the principle of reciprocity.

The foreign person or foreign enterprise mentioned in Article l8 of the Trademark Law refers to the foreign person who or foreign enterprise which does not have its habitual residence or place of business in China.

Article 8 The Chinese language shall be used in applying for trademark registration or attending to other trademark matters.

Where the various certificates, certifying documents and proofs submitted under the Trademark Law and these Regulations are in a foreign language, the Chinese translation thereof shall be attached; where the Chinese translation is not attached, the certificates, certifying documents and proofs shall be deemed not to have been submitted.

Article 9 In any one of the following circumstances, any staff member of the Trademark Office and the Trademark Review and Adjudication Board shall withdraw, or a party or interested Part} may request him to withdraw:

(l) he is a party or a close relative to a party or agent;

(2) he is related in such a way with a party or agent insofar as the relation would affect impartiality; or

(3) he has interests in an application for trademark registration or an}’ other trademark matters.

Article l0 Unless otherwise provided for in these Regulations, where any document is sent to the Trademark Office or the Trademark Review and Adjudication Board, the date of receipt shall be the date of delivery where it is delivered personally}. or the date of posting indicated by the postmark if it is sent by post; where the date of posting indicated by the postmark is illegible, or there is no postmark, the date of receipt shall be the date on which the Trademark Office or the Trademark Review and Adjudication Board actually receives the document, except that the interested Part]’ is able to present evidence as to the actual date of posting indicated by the postmark.

Article 11 Any document of the Trademark Office or the Trademark Review and Adjudication Board may be served by post, by personal delivery or by other means. Where an interested party entrusts a trademark agency, delivery of the document to the trademark agency shall be deemed delivery thereof to the interested party.

Where any document is sent to an interested party by the Trademark Office or the Trademark Review and Adjudication Board. the date of receipt shall be the date of receipt indicated b]- the postmark on which the interested party receives it if it is sent by post; where the date of Posting indicated by the postmark is i1legible, or where there is no postmark. the document shal1 be deemed to have been delivered to the interested party on the fifteenth day from the date of posting the document; the date of receipt shall be the date of delivery if it is delivered personally. Where any document cannot be sent by post or by personal delivery, the document may be served b}’ making an announcement. At the expiration of the thirtieth day from the date of the announcement, the document shall be deemed to have been served.

Article 12 Where an application is filed for international registration, it shall be done in accordance with the relevant international treaties to which China has acceded. The specific measures shall be prescribed by the administrative department for industry and commerce under the State Council.

Chapter 2    Application for Trademark Registration

Article 13 In application for the registration of a trademark, a separate application shall be filed in respect of each class of goods or service according to the published Classification of Goods and Services. For each application for the trademark registration, an Application for Trademark Registration shall be filed with the Trademark Office, accompanied by five copies of the reproduction of the trademark; if colour is claimed, five copies of the colour reproduction of the trademark shall be attached, so shall be a black and white design of the trademark.

The reproduction of the trademark must be clear and easy to paste and shall be printed on smooth and clean durable paper or substituted by a photograph. Its length or breadth shall not be more than l0 cm and less than 5 cm each.

Where an application is filed for the registration of a three-dimensional sign as a trademark, a statement shall be made in the application, and the reproduction capable of defining the three-dimensional formation be submitted.

Where an application is filed for the registration of a combination of colours as a trademark, a statement shall be made in the application, and an explanation thereof be submitted in writing.

Where an application is filed for the registration of a certification mark or collective mark, a statement shall be made in the application, and the certificates of the qualification of the applicant and regulations for the administration of the use thereof be submitted.

Where a trademark is in a foreign language or contains lexical elements in a foreign language, explanation of its meaning shall be made.

Article 14 When filing an application for the registration of a trademark, the applicant shall submit a copy of effective certificate capable of proving his identification. The name of the applicant for trademark registration shall be consistent with the certificate submitted.

Article 15 The goods or services shall be listed in the application according to the Classification of Goods and Services. If the goods or services are not listed in the Classification of Goods and Services, a description of the 5aid goods or services shall be attached.

The documents relating to an application for trademark registration shall be typewritten or printed.

Article 16 If an application is jointly filed for registration of the same trademark, a representative shall be designated in the application; if such representative is not designated, the first person listed in the application shall be the representative.

Article 17 If an applicant changes his name, address, agent, or deletes or reduces designated goods, he may go through the formalities for the change with the Trademark Office.

An applicant who assigns his application for trademark registration shall go through the formalities for the assignment with the Trademark Office.

Article 18 The filing date of an application for trademark registration shal1 be the date on which the Trademark Office receives the application documents.

Where the formal requirements of the application are fulfilled and the application form filled out according to the relevant rules, the Trademark Office will accept the application and notify the applicant in writing. Where the formal requirements are not fulfilled or the application form not filled out according to the relevant rules, the Trademark Office will not accept it, and it shall notify the applicant in writing and explain the reason. Where the formal requirements are basically fulfilled or the application form filled out basica1ly according to the relevant rules, but amendments are required, the Trademark Office shall notify the applicant to make the amendments and require him to do so according to the contents prescribed and re-submit it to the Trademark Office within thirty days from the date on which he receives the notification. Where the application is amended and re-submitted to the Trademark Office within the time limit, the date of filing shall be retained. Where the application is not amended within the time limit, the application shall be deemed to have been abandoned, and the Trademark Office shall notify the applicant in writing.

Article 19 Where two or more applicants respectively apply for the registration of identical or similar trademarks used on the identica1 or similar goods on the same day, each applicant sha1l, within thirty days from the date of receipt of the notification of the Trademark Office, submit a proof of his prior use of the mark in respect of which he has applied for the registration. Where the applicants used the mark for the first time on the same day or where none of them has used the mark, they shall try to resolve the matter through consultation, and submit a written agreement to the Trademark Office within thirty days from the date of receipt of the notification from the Trademark Office; where the applicants are reluctant to resolve the matter through consultation or an agreement is not reached, the Trademark Office shall notify the applicants that one applicant will be singled out by lot, and reject the registration applications filed by the other applicants. Where the Trademark Office notifies an applicant, but the applicant does not show up and draw his lot, his application shall be deemed to have been abandoned, and the Trademark Office shall notify in writing the applicant who has failed to show up.

Article 20 Where an applicant claims the right of priority according to Article 24 of the Trademark Law, the copy of the application document which he first filed for the registration of the trademark shall be certified by the competent trademark authority accepting the application, with the date of filing and the application number indicated.

Where an applicant claims the right of priority according to Article 25 of the Trademark Law, the certification documents submitted by him shall be certified by the administrative department for industry and commerce under the State Council, except that the international exhibition on which the goods are put on display is held inside the territory of China.

Chapter 3     Examination of Application for Trademark Registration

Article 21 The Trademark Office shall, in accordance with the Trademark Law and these Regulations, examine the applications for the registration of trademark it has accepted. Applications which conform to the relevant provisions, or those for the registration of trademarks in respect of a part of the designated goods which conform to the relevant provisions, shall be preliminarily approved and published. Applications which do not conform to the relevant provisions, or those for the registration of trademarks in respect of a part of the designated goods which do not conform to the relevant provisions, shall be rejected. The Trademark Office shall notify the applicant in writing and explain the reason for the rejection.

Where the Trademark Office has preliminarily approved applications for the registration of trademarks on a part of the designated goods, the applicant may apply for the abandonment thereof before the date of expiration of the opposition period; where the applicant abandons the registration of trademarks in respect of a part of the designated goods, the Trademark Office shall withdraw the preliminary approval, terminate the examination procedure, and republish it.

Article 22 Where an opposition is filed to a trademark which, after examination, has been preliminarily approved and published by the Trademark Office, the opponent shall submit the Application for Trademark Opposition in duplicate to the Trademark Office. The Application for Trademark Opposition shall indicate the issue number of the Trademark Gazette on which the opposed trademark is published, and the number of preliminary approval of the opposed trademark. The Application for Trademark Opposition shall contain the specific requests and facts and grounds, with relevant proofs and certificates attached.

The Trademark Office shall send a copy of the Application for Trademark Opposition to the opposed party and require him to make a reply within thirty days from the date of his receipt of the copy. His failure to make a rep1y shall not affect the adjudication by the Trademark Office on the opposition.

Where an interested party needs to supplement relevant proofs and certificates after he raises an opposition application or makes a reply, he shall make a statement in the application or reply, and submit the proofs and certificates within three months from the date of submission of the application or rep1y; where he fails to submit them at the expiration of the time limit, the interested party shall be deemed to have abandoned supplementing the relevant proofs and certificates.

Article 23 The justification of the opposition mentioned in Article 34, paragraph two, of the Trademark Law shall include the justification of the opposition to a registration in respect of a part of the designated goods. Where such opposition is justified, the application for the registration of trademarks in respect of that part of the designated goods shall not be approved.

Where an opposed trademark has, prior to the coming into effect of the adjudication on the opposition, been announced as a registered trademark in the Trademark Gazette, the registration announcement shall be cancelled. The trademark that has been approved for registration upon the adjudication on the opposition sha1l be re-published.

The trademark approved for registration upon the adjudication on the opposition shall not have the retroactive effect on another person’s act to use a sign identical with or similarly to the trademark on the same or similar goods from the date on which the period for trademark opposition expires and before the adjudication on the opposition takes effect; however, the losses inflicted to the trademark registrant due to the bad faith in which the sign is used shall be compensated.

The time limit for the application for review and adjudication of the trademark approved for registration upon the adjudication on the opposition shall be calculated from the date of publication of the adjudication on the trademark opposition.

Chapter 4       Modification, Assignment and Renewal of Registered Trademarks

Article 24 When applying for modification of his name, address or other registration matters, the registrant shall file an Application for Modification with the Trademark Office. The Trademark Office shall, upon examination and approval, issue the trademark registrant the relevant certificates, and make an announcement. Where the application is not approved, the Trademark Office shall notify the applicant in writing and explain the reason.

When applying for modification of his name, the registrant shall submit modification certificate issued by the relevant registry. An applicant who has not submitted the modification certificate may do so within thirty days from the date of filing the application. Where the submission is not made within the time limit, the application for the modification shall be deemed to have been abandoned, and the Trademark Office shall notify the applicant in writing.

When applying for modification of his name and address, the trademark registrant shall make the modifications in all his registered trademarks. If he fails to do so, the application for the modification shall be deemed to have been abandoned, and the Trademark Office shall notify the applicant in writing.

Article 25 When applying for the assignment of a registered trademark, the assignor and assignee shall file with the Trademark Office an Application for Assignment of Registered Trademark. The formalities of applying for the assignment of the registered trademark shall be gone through by the assignee. The Trademark Office, upon examination and approval of the application. shall issue the relevant certificate to the assignee and make an announcement.

When applying for the assignment of a registered trademark, the trademark registrant shall assign all the identical or similar trademarks registered in respect of the same or similar goods. If the registrant fails to do so, the Trademark Office shal1 notify him to correct the situation within a time limit; if the correction is not made within the time limit, the application for the assignment of the registered trademark shall be deemed to have been abandoned, and the Trademark Office shall notify the applicant in writing.

Any application for the assignment of a registered trademark that may mislead the public or cause confusion or exert any other adverse effects shall not be approved by the Trademark Office. the Trademark Office shall notify the applicant in writing and explain the reason.

Article 26 If the exclusive right to use a registered trademark is transferred for reasons other than assignment, the party receiving the transferred exclusive right to use the registered trademark shall go to the Trademark Office with relevant certificates or legal instruments to go through the formalities for the transfer of the exclusive right to use the registered trademark.

When applying for a transfer of the exclusive right to use a registered trademark, the exclusive right holder of the registered trademark shall transfer all the other identical or similar trademarks registered in respect of the same or similar goods. If the exclusive right holder fails to do so, the Trademark Office shall notify him to correct the situation within a time limit; if the correction is not made within the time limit, the application for the assignment of the registered trademark shall be deemed to have been abandoned, and the Trademark Office shall notify the applicant in writing.

Article 27 When applying for the renewal of a trademark registration, the applicant shall file with the Trademark Office an App1ication for Renewal of Trademark Registration. After examination and approval of the application for the renewal of a trademark registration, the Trademark Office shall issue the relevant certificate and announce it.

The period of validity of a renewed trademark shall be calculated from the day after the expiration of the previous period of validity of the said trademark.

Chapter 5       Trademark Review and Adjudication

Article 28 The Trademark Review and Adjudication Board shall accept applications for trademark review and adjudication filed according to the provisions of Articles 32, 33, 4l and 49 of the Trademark Law, and conduct, according to law, the review and adjudication on the basis of facts.

Article 29 By having dispute over a registered trademark mentioned in Article 4l, paragraph three, of the Trademark Law shall be meant that a registrant of a trademark in respect of which a prior application is filed for registration thereof alleges that a trademark in respect of which another person subsequently files an application for its registration is identical with or similar to his trademark registered in respect of the identical or similar goods.

Article 30 When applying for the trademark review and adjudication, the applicant shall file an application with the Trademark Review and Adjudication Board, and submit the same number of copies thereof as that of the other parties; when filing the application for reexamination based on the Decision or Adjudication made by the Trademark Office, the applicant shall meantime submit a copy of the Decision or Adjudication made by the Trademark Office.

After receipt of the application, the Trademark Review and Adjudication Board shall accept the application found to have met the requirements for acceptance upon examination; the Trademark Review and Adjudication Board shall not accept the application if it does not meet the requirements, and notify the applicant in writing and explain the reason. Where rectification is required, the Trademark Review and Adjudication Board shall notify the applicant to make the rectification within thirty days from the date of receipt of the notification. If an application still fails to meet the requirements after the rectification, the Trademark Review and Adjudication Board shall not accept it, and notify the applicant in writing and explain the reason. If the rectification is not made within the time limit, the application shall be deemed to have been withdrawn, and the Trademark Review and Adjudication Board shall notify the applicant in writing.

Where it finds that an application for the trademark review and adjudication does not meet the requirements for acceptance after accepting it, the Trademark Review and Adjudication Board shall reject the application and notify the applicant in writing and explain the reason.

Article 31 After accepting an application for the trademark review and adjudication, the Trademark Review and Adjudication Board shall send, in a timely manner, a copy of the Application to the other party, and require him to reply within thirty days from the date of receipt of the copy of the Application, failure to make a reply at the expiration of the time limit shall not affect the review and adjudication by the Trademark Review and Adjudication Board.

Article 32 Where an interested party needs to supplement relevant proofs after he files an application for trademark review and adjudication or makes a reply, he shall make a statement to this effect in the Application or Reply, and submit the proofs within three months from the date of filing the Application or making the Reply; if the proofs are not submitted at the expiration of the time limit, the supplementation thereof shall be deemed to have be abandoned.

Article 33 The Trademark Review and Adjudication Board may, at the request of an interested party or according to practical needs, decide to conduct a public review and adjudication of the application therefor.

Where it conducts a public review and adjudication of an application therefor, the Trademark Review and Adjudication Board shall notify the interested party, within fifteen days before the public review and adjudication is held, of the date and place of, and the persons conducting the public review and adjudication. The interested party shall make a reply within the time limit fixed in the notification.

Where the applicant does not reply, nor attend the public review and adjudication, his application for the trademark review and adjudication shall be deemed to have been withdrawn, and the Trademark Review and Adjudication Board shall notify him in writing. Where the respondent does not respond, nor attend the public review and adjudication, the Trademark Review and Adjudication Board may conduct a default review and adjudication.

Article 34 Where an applicant requests for the withdrawal of his application before the Trademark Review and Adjudication Board makes its decision or adjudication, he may withdraw his application after he explains the reason in writing to the Trademark Review and Adjudication. Where the application is withdrawn, the review and adjudication procedure terminates.

Article 35 Where an applicant withdraws his application for review and adjudication, he shall not file another application for the review and adjudication on the basis of the same facts and grounds. Where the Trademark Review and Adjudication Board has made the adjudication or decision as regards an application for trademark review and adjudication, any person shall not file another app1ication for the review and adjudication on the basis of the same facts and grounds.

Article 36 In respect of a trademark the registration of which is cancelled in accordance with Article 4l of the Trademark Law, the exclusive right to use the trademark shall be deemed to be non-existent from the beginning. The decision or adjudication on the cancellation of the registered trademark has no retroactive effect on a judgment or decision already made and executed by the People’s Court or the administrative department for industry and commerce on a case of trademark infringement, or on a trademark assignment or licensing contract executed. However, in respect of damage done to any other person in bad faith by the trademark registrant, he shall compensate for the damages.

Chapter 6      Administration of the Use of Trademarks

Article 37 Where a registered trademark is used, it may carry the indication of “注册商标” (“Registered Trademark”) or the registration signs of the goods, packaging or description or other attachments of the goods.

The registration signs include 注 and ®. When used, the registration signs shall be marked or indicated on the upper or lower right hand corner of the trademark.

Article 38 Where a Certificate of Trademark Registration is lost or damaged, it is necessary to apply to the Trademark Office for re-issuance of the Certificate. Where the Certificate is lost, the registrant shall declare the loss of the Certificate by publishing a declaration in the Trademark Gazette. The damaged Certificate shall be returned to the Trademark Office when an application for re-issuance is filed.

Where a Certificate of Trademark Registration is forged or falsified, criminal liability shall be imposed according to law based on the provisions governing the crimes of forging and falsifying certificates issued by the State administrative authority or other crimes.

Article 39 In respect of any of the acts referred to in Article 44 (l), (2) and (3) of the Trademark Law, the administrative authority for industry and commerce shall order the trademark registrant to rectify the situation within a time limit. If the registrant refuses to comply, the case shall be submitted to the Trademark Office for cancellation of the registered trademark.

In respect of the act referred to in Article 44 (4) of the Trademark Law, any person may apply to the Trademark Office for cancellation of the said registered trademark and explain the circumstances. The Trademark Office shall notify the trademark registrant and require him to furnish, within two months from the date of receipt of the notification, proof of use of the trademark before the date on which the application for cancellation is filed, or a justifiable reason for its non-use. If no proof of use, nor a justifiable reason for the non-use is furnished at the expiration of the time limit or the proof is invalid, the Trademark Office shall cancel his registered trademark.

The proof of use of a trademark referred to in the preceding paragraph includes proofs of the registrant’s using the registered trademark and his licensing any other person to use the registered trademark.

Article 40 Registered trademarks cancelled according to the provisions of Articles 44 and 45 of the Trademark Law shall be published by the Trademark Office, the exclusive right in the registered trademarks shall terminate on the date of cancellation decision made by the Trademark Office.

Article 4l Where the Trademark Office or the Trademark Review and Adjudication Board cancels a registered trademark for reasons re1ating only to a part of the goods designated, the trademark registration in respect of this part of the designated goods shall be cancelled.

Article 42 The amount of the fine imposed in accordance with the provisions of Articles 45 and 48 of the Trademark Law shall be less than 20% of the illegal business turnover or less than two times the illegal profits.

The amount of the fine imposed in accordance with the provision of Article 47 of the Trademark Law shall be less than l0% of the illegal business turnover.

Article 43 Where he licenses another person to use his registered trademark, the licensor shall submit the trademark licensing contract to the Trademark Office for filing within three months from the date on which the contract is concluded.

Article 44 Where any person contravening the provisions of Article 40, paragraph two, of the Trademark Law, the administrative department for industry and commerce shall order the offender to rectify the situation within a prescribed time limit. Where the offender refuses to comply, the administrative department for industry and commerce shall confiscate the representations of his trademark. If it is difficult to detach the representations of the trademark from the goods, both the representations and goods shall be confiscated and destroyed.

Article 45 Where a trademark is used in contravention of the provision of Article 13 of the Trademark Law, an interested party may request the administrative department for industry and commerce for prohibition of the use. When filing the request, the interested party shall submit proofs that his trademark constitutes a well-known mark. If the Trademark Office establishes it as a well-known mark according to the provision of Article l4 of the Trademark Law, the administrative department for industry and commerce sha1l order the infringer to cease the act of using the well-known mark in contravention with the provision of Article l3 of the Trademark Law, confiscate and destroy the representations of the trademark. If it is difficult to detach the representations of the trademark from the goods, both the representations and goods shall be confiscated and destroyed.

Article 46 Where a trademark registrant applies for the removal, from the Register, of his registered trademark or the registration of his trademark in respect of a part of the designated goods, he shall send an Application for Trademark Removal and return the original Certificate of Trademark Registration to the Trademark Office.

Where a trademark registrant applies for the removal, from the Register, of his registered trademark or the registration of his trademark in respect of a part of the designated goods, the exclusive right in the registered trademark or the effect thereof on the part of designated goods shall terminate on the date of receipt by the Trademark Office of the Application for Trademark Removal.

Article 47 Where the registrant of a trademark dies or ceases, and no formalities have been gone through for transfer of the registered trademark at the expiration of one year from the date of the death or cessation, any person is entitled to apply to the Trademark Office for the removal, from the Register, of the registered trademark. When filing an application for the removal, he shall submit the proofs of the death or cessation of the trademark registrant.

Where a registered trademark is removed from the Register owing to the death or cessation of the trademark registrant, the exclusive right to use the registered trademark terminates from the date of the death or cessation of the trademark registrant.

Article 48 Where a registered trademark is cancelled or removed from the Register according to the provisions of Articles 46 and 47 of these Regulations, the original Certificate of Trademark Registration shall become invalid. Where the registration of the trademark in respect of a part of the designated goods is cancelled, or where the trademark registrant applies for removal, from the Register, the registration of the trademark in respect of a part of designated goods, the Trademark Office shall return, to the registrant, the original Certificate of Trademark Registration on which the approval of the cancellation or removal has been marked, or re-issue the Certificate of Trademark Registration and publish the re-issuance.

Chapter 7      Protection of the Exclusive Right to Use Registered Trademark

Article 49 Where an registered trademark contains the generic name, shape or model of the goods in respect of which it is used, or directly indicates the quality, main raw material, function, use, weight, quantity and other features of the goods, or contains a place name, the holder of the exc1usive right to use the registered trademark has no right to prohibit others from duly using it.

Article 50 Any of the following acts shall be an act of infringement of the exclusive right to use a registered trademark as provided for in Article 52 (5) of the Trademark Law:

(l) to use any design which is identical with or similar to the registered trademark of another person on the same or similar goods, as the designation or decoration of the goods, which mislead the public; or

(2) to intentionally provide any other person with such facilities as of storage, transportation, postal service, and concealment in his infringement of the exclusive right of another person to use a registered trademark.

Article 51 Where the exc1usive right to use a registered trademark has been infringed, any person may lodge a complaint with, or file a report on, the case of infringement to the administrative department for industry and commerce.

Article 52 An act of infringement of the exclusive right to use a registered trademark shall be subject to a fine of not exceeding three times the amount of the illegal business turnover. Where it is impossible to calculate the amount of the illegal business turnover, the fine shall be no more than RMB l00,000 yuan.

Article 53 Where a trademark proprietor believes that another person has registered his well-known trademark as an enterprise name, which is likely to deceive, or mislead, the public, he may file an application with the competent authority for the registration of enterprise names for cancellation of the registration of the enterprise name. The competent authority for the registration of enterprise names shall handle the matter pursuant to the Regulations for the Administration of Registration of Enterprise Names.

Chapter 8       Supplementary Provisions

Article 54 Where a service mark already in continuous use up to l July l993 which is identical with or similar to the service mark of another person already registered in respect of the same or similar services may continue to be used. However, a mark the use of which has been suspended for three or more years after l July l993 shall not continue to be used.

Article 55 The specific measures for the administration of trademark agency shall be separately provided for by the State Council.

Article 56 The classification of goods and services for the purposes of registration of trademarks shall be formulated and published by the administrative department for industry and commerce under the State Council.

The documents or forms for filing applications for the registration of trademarks or for attending to other trademark matters shall be formulated and published by the administrative department for industry and commerce under the State Council.

The rules for trademark review and adjudication of the Trademark Review and Adjudication Board shall be formulated and published by the administrative department for industry and commerce under the State Council.

Article 57 The Trademark Office shall set up the Register of Trademark Registration for the documentation of registered trademarks and matters relating to the registration.

The Trademark Office shall compile, print and distribute the Trademark Gazette to publish trademark registrations and other related matters.

Article 58 Fees shall be paid for applying for the registration of trademarks or for handling other trademark matters. The items and schedule of the fees shall be provided for and published by the administrative department for industry and commerce under the State Council in conjunction with the competent price administrative department under the State Council.

Article 59 These Regulations shall enter into force on l5 September 2002. The Implementing Regulations of the Trademark Law of the People’s Republic of China promulgated by the State Council on l0 March l983, revised for the first time with the approval by the State Council on 3 January l988, and revised for the second time with the approval by the State Council on 15 July 1993 and the Answers by the State Council to Issues Relating to the Attachment of Certificates for the Purpose of Trademark Registration shall simultaneously be abrogated.

(Promulgated by the State Council on 3 August 2002)

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Stopping infringement of Patent Right Before Instituting Legal Proceedings

(Several Provisions of the Supreme People’s Court for

the Application of Law)

With a view to protecting the lawful rights and interests of patentees and other interested parties, these several Provisions have been made for the application of law to stopping infringement of patent right before instituting legal proceedings according to the relevant provisions of the General Principles of the Civil Law of the People’s Republic of China, the Patent Law of the People’s Republic of China (hereinafter referred to as the Patent Law), the Civil Procedure Law of the People’s Republic of China (hereinafter referred to as the Civil Procedure Law):

Article 1 Any patentee or interested party may file an application with the people’s court for ordering the party against whom an application is filed, before instituting legal proceedings, to stop its or his act of infringement of the patent right in accordance with the provision of Article 61 of the Patent Law.

The interested party that files an application refers to the licensee of the licensing contract for exploitation of patent and the legal heir to the property right of the patent, etc.. Among the licensees of the licensing contract for exploitation of patent, the licensee alone of a monopolising exclusive patent license* contract may file an application with the people’s court; the licensee of a sole exclusive patent license contract may file an application when the patentee does not.

Article 2 Any application for ordering to stop infringement of patent right before instituting legal proceedings shall be filed with the people’s court having jurisdiction over cases of patent infringement.

Article 3 Any patentee or interested party who files an application with the people’s court shall submit an application in writing, in which the interested party per se and the basic information thereof, the claims and the extent of and reasons for the application shall be clearly indicated. The reasons for the application shall include the specific statement that irremediable damages will be caused to the legitimate rights and interests of the applicant if the relevant act is not to be promptly stopped.

Article 4 The applicant shall submit the following evidence when filing an application:

(l) The patentee shall submit document proving the authenticity and validity of its or his patent right, including, among other things, the patent certificate, claims, description and receipt of payment for the annual patent fee. Where the application filed relates to a patent for utility model, the applicant’ shall submit the search report by the Patent Administrative Organ under the State Council.

(2) The interested party shall submit the patent licensing contract and the proof for filing the Patent Administrative Organ under the State Council; where the proof is not for filing, it or he shall submit the certificate of the patentee or other evidence that proves that it or he enjoys the right.

Where the licensee of a sole exclusive licensing contract files an application alone, it or he shall submit the proof of abandonment by the patentee of the application. The heir to the patent property right shall submit evidence indicating that it or he has already inherited or is in the process of inheriting the patent property right.

(3) The applicant shall submit evidence to prove that the party against whom an application is filed is committing or will commit an act of infringing its or his patent right, including the alleged infringing product and the technical features of the patented technology and the alleged infringing product and the comparison thereof.

Article 5 The ruling made by the people’s court to stop an act of patent infringement before instituting legal proceedings shall be confined to the application filed by the patentee or interested party.

Article 6 Any applicant shall provide guaranty when filing an application; where no guaranty is furnished, the application is rejected.

Where the guaranty furnished by the interested party, in the form of pledge or hypothecation is reasonable and valid, the people’s court shall grant its approval.

When the people’s court determines the scope of the guaranty, it shall take account of the sales of the product in question and the reasonable. costs of storage and stock-keeping; of the losses that may be caused by stopping the relevant act of the party against whom an application is filed and other reasonable costs, such as the wages or salaries and of any other factors involved as Well.

Article 7 Where, in the process of executing the ruling to stop the relevant act, the party against whom an application is filed may suffer greater losses due to the adoption of the measure, the people’s court may order the applicant to provide guaranty in an extroactive manner. Where no such guaranty is provided, the measure to stop the relevant act shall be removed.

Article 8 Any measure taken to execute the ruling to stop the act of patent infringement shall not be removed because the party against whom an application is filed provides a counterguaranty.

Article 9 After accepting the application filed by a patentee or interested party to order to stop the act of patent infringement, the people’s court shall make a ruling in writing within 48 hours where the application conforms with Article 4 of these Provisions upon examination; where the ruling is made to order the party against whom an application is filed to stop its or his act of patent infringement, the ruling shall be executed without delay.

Where it is necessary for the people’s court to verify the relevant facts within the aforementioned time limit, the people’s court may summon and inquire the one or both interested parties and, then, make the ruling in a timely manner.

The people’s court making the ruling to order the part) against whom an application is filed to stop the relevant infringing act before instituting legal proceedings shall promptly notify the party against whom an application is filed, or does so within no more than 5 days at the latest.

Article 10 Where the interested party is not satisfied with the ruling, it or he may apply for reconsideration within l0 days from the date of the receipt of the ruling. The execution of the ruling shall not be suspended during the reconsideration.

Article 11 The people’s court shall examine the application for reconsideration filed by the interested party as to the following aspects:

(l) whether or not the act which is being committed or will be committed by the party against whom an application is filed constitutes an infringement of patent right;

(2) whether or not not taking the relevant measure will cause irremediable damages to the legal rights and interests of the applicant;

(3) the content of the information relating to the applicant’s provision of the guaranty; and

(4) whether or not to the order the party against whom an application is filed to stop the relevant act would impair the public interests.

Article 12 Where the patentee or interested party does not institute legal proceedings within l5 days, after the people’s court takes the measure to stop the relevant act, the people’s court shall remove the adopted measure of the ruling.

Article 13 Where an applicant does not institute legal proceedings or there is an error in the application, causing losses to the party against whom an application is filed, the party against whom an application is filed may institute legal proceedings in the people’s court having the jurisdiction, requesting the applicant to compensate for the losses; or file a request for damages during the patent infringement litigation instituted by the patentee or interested party. The people’s court may simultaneously handle the requests.

Article 14 The ruling ordering to stop the infringement of patent right shall generally remain effective until the final legal instrument comes into effect. The people’s court may also fix a specific time limit according to the facts of the case; after the expiration of the time limit, the people’s court may still make a ruling to continue to stop some relevant acts on the request of the interested party.

Article  15 Where the party against whom an application is filed runs counter to the ruling made by the people’s court to order to stop the relevant act, the matter shall be handled according to the provision of Article l02 the Civil Procedure Law.

Article 16 When executing the pre-litigation measure to stop the act of patent infringement, the people’s court may, according to the application of the interested party, simultaneously preserve the evidence in the light of the provision of Article 74 of the Civil Procedure Law.

The people’s court may, according to the application of the interested party, preserve the property pursuant to Articles 92 and 93 of the Civil Procedure Law.

Article 17 Where the patentee or the interested party institutes proceedings against patent infringement, when simultaneously requesting for stopping the act of patent infringement in advance, the people’s court may first make the ruling on the request.

Article 18 In respect of a case to stop an act of patent infringement, the applicant shall pay the fees according to the Standards of the People’s Court for Litigation Charges and the Additional Provisions thereof.

Adopted on 5 June 2001  at the 1179th Meeting of the Adjudication Committee of the Supreme People’s Court

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