New Customs Enforcement Process Regarding IPR
January 31, 2010
The General Administration of China Customs passed several new regulations that aim to strike a balance between IPR holders and those who import and export goods. Under old regulations, China Customs officials were allowed to “dispose” of confiscated counterfeit goods by removing unlawfully affixed trademarks, and auctioning off the goods. These goods commonly reappeared in the market and thus caused monetary harm to the rights owner. The new regulations now require customs officials to seek the opinion of the relevant IPR owners before it may dispose of any confiscated counterfeit goods.
This regulation is a direct attempt to bring China up to the WTO agreement standard, which specifically states that sized goods should be disposed of “outside the channels of commerce in such manner as to avoid any harm caused to the right holder, or destroyed” and “the simple removal of the trade mark unlawfully affixed shall not be sufficient.” While this move is undoubtedly a step in the right direction, it is important to note that the regulation requires Chinese Customs officials to seek the “opinion” rather than the “consent” of the relevant IPR owners. It thus does not give IPR owners the right to demand the destruction of counterfeit goods rather than the auctioning off of such products.
Another salient feature of these new regulations is that IPR owners will now be able to seek settlements with the infringing party without undergoing a formal customs investigation. It is hoped that this will allow IPR owners to gain valuable information regarding the supply and distribution chains of such counterfeit items while also substantially reducing the resources required of the China Customs Department to investigate each and every claim.
The new regulations also contained several smaller modifications such as changes to the notification protocol, the processing of renewal applications, and the cancellation of recordal. All of these modifications are designed to streamline and expedite the customs enforcement process.
Tags: chinese, Import, TrademarkRelated Posts:
Regulation of the Peoples Republic of China on the Customs Protection of Intellectual Property Rights
November 21, 2009
Chapter I General Provisions
Article 1 The present Regulation is formulated in accordance with the Customs Law of the People’s Republic of China in order to carry out the customs protection of intellectual property rights, to promote economic and trade contacts as well as scientific, technological and cultural contacts with foreign countries, and to maintain public benefits.
Article 2 Customs protection of intellectual property rights mentioned in the present Regulation refers to the protection practiced by the customs of the rights to exclusive use of trademarks, copyrights and copyright-related rights, patent rights (hereinafter uniformly referred to as intellectual property rights), which are related to imported and exported goods and protected by the laws and administrative regulations of the People’s Republic of China.
Article 3 The State prohibits the import and export of goods infringing intellectual property rights.
The customs shall, according to relevant laws and the present Regulation, practice protection of intellectual property rights, and execute the relevant powers provided for in the Customs Law of the People’s Republic of China.
Article 4 Where an intellectual property rights holder requests the customs to practice protection of his intellectual property rights, he shall file an application to the customs for taking protective measures.
Article 5 A consignee of imported goods or his agent, or a consigner of exported goods or his agent shall, according to the provisions of the State, truthfully declare to the customs the status of his intellectual property rights in relation to the imported or exported goods, and shall submit relevant certification documents.
Article 6 When practicing protection of intellectual property rights, the customs shall keep the commercial secrets of the relevant parties.
Chapter II Archival Filing of Intellectual Property Rights
Article 7 An intellectual property rights holder may, in pursuance of the present Regulation, file an application to the Customs General Administration for archival filing of his intellectual property rights; when applying for archival filing, he shall submit an application letter, which shall cover the following contents:
(1) The intellectual property rights holder’s name, and his place of registration or his nationality, etc.;
(2) The name and contents of as well as the relevant information on the intellectual property;
(3) The status of permission to exercise the intellectual property;
(4) The name and place of origin of the goods for which the intellectual property rights holder lawfully exercises the intellectual property, the customs of entry or exit, the importer and exporter, the main features and the price, etc. of such goods;
(5) The manufacturer, importer and exporter of the goods which are known to have infringed the intellectual property, the customs of entry or exit, the importer and exporter, the main features and the price, etc. of such goods.
The intellectual property rights holder shall attach certification documents, if any, contained in the contents of the application letter in the preceding paragraph.
Article 8 The Customs General Administration shall, within 30 working days as of day it receives all the application documents, make a decision on whether or not to permit the archival filing, and notify the applicant in writing; if it does not permit the archival filing, it shall explain the reason thereof.
In the case of any of the following circumstances, the Customs General Administration shall not permit the archival filing:
(1) The application documents are incomplete or null and void;
(2) The applicant is not the intellectual property rights holder;
(3) The intellectual property is no longer protected by laws or administrative regulations.
Article 9 Where the customs finds that an intellectual property rights holder who applies for archival filing for his intellectual property rights does not truthfully provide the relevant information or documents, the Customs General Administration may cancel the archival filing therof.
Article 10 The archival filing of customs protection of an intellectual property right shall become valid as of the day when the Customs General Administration permits the archival filing, with 10 years of validity period .
Where an intellectual property right is valid, the right holder may, within 6 months prior to the expiry of the validity period for the archival filing of customs protection of the intellectual property rights, apply to the Customs General Administration for renewal of the archival filing. The validity period for the renewed archival filing of each time shall be 10 years.
Where an intellectual property right holder does not apply for renewal at the expiry of the validity period for archival filing of the customs protection of the intellectual property rights, or the intellectual property right is no longer protected by laws or administrative regulations, the aforesaid archival filing shall be invalidated immediately.
Article 11 Where an archived intellectual property is changed in any way, the intellectual property rights holder shall, within 30 working days as of such change, modify or nullify the archival filing in the Customs General Administration.
Chapter III Application for and Handling of Detainment of Suspected Infringing Goods
Article 12 Where an intellectual property right holder finds that any suspected infringing goods are about to be imported or exported, he may submit an application to the customs at place of entry or exit for detainment of such goods.
Article 13 Where an intellectual property right holder requests the customs to detain any suspected infringing goods, he shall submit an application letter and relevant certification documents, and provide evidence sufficient to prove the obvious existence of the infringement facts as well.
An application letter shall cover the following main contents:
(1) The intellectual property rights holder’s name, and his place of registration or his nationality, etc.;
(2) The intellectual property’s name, contents, and relevant information;
(3) The names of both the consignee and the consigner of the suspected infringing goods;
(4) The name and specifications, etc. of the suspected infringing goods; and
(5) The possible port and time of entry or exit of the suspected infringing goods, and the means of transportation thereof, and so on.
Where the suspected infringing goods are suspected to infringe an archived intellectual property right, the application letter shall also include the customs archival filing number.
Article 14 Where an intellectual property right holder requests the customs to detain any suspected infringing goods, he shall provide the customs with a guaranty of no less than the equivalent value of the goods, which shall be used to indemnify the losses caused to the consignee or consigner because of inappropriate application, and to pay the warehousing, custody and disposal fees, etc. after the goods are detained by the customs; in case the intellectual property rights holder directly pays warehousing or custody fees to the warehouseman, such fees shall be deducted from the guaranty. The detailed measures shall be formulated by the Customs General Administration.
Article 15 Where an intellectual property right holder who files an application for detainment of any suspected infringing goods conforms to Article 13 of the present Regulation, and has provided a guaranty as prescribed in Article 14 of the present Regulation, the customs shall detain the suspected infringing goods, notify the intellectual property rights holder in writing, and serve the customs detainment list to the consignee or consigner.
Where an intellectual property right holder who files an application for detainment of any suspected infringing goods does not conform to Article 13 of the present Regulation, or fails to provide a guaranty as prescribed in Article 14 of the present Regulation, the customs shall reject the application, and notify the intellectual property rights holder in writing.
Article 16 Where the customs finds that any imported or exported goods are suspected to have infringed an archived intellectual property, it shall immediately notify the intellectual property rights holder in writing. In case the intellectual property rights holder submits an application according to Article 13 of the present Regulation and provides a guaranty according to Article 14 of the present Regulation within 3 working days as of service of the notice, the customs shall detain the suspected infringing goods, notify the intellectual property rights holder in writing, and serve the customs detainment list to the consignee or consigner. In case the intellectual property rights holder fails to file the application or provide the guaranty within the time limit, the customs shall not detain the goods.
Article 17 Upon consent of the customs, an intellectual property right holder and the consignee or consigner may view relevant goods.
Article 18 Where a consignee or consigner considers that his goods do not infringe the intellectual property rights of the right holder, he shall submit to the customs a written statement attached with relevant evidence.
Article 19 Where a consignee or consigner who is suspected to infringe patented goods regards that his imported or exported goods do not infringe the patent right, he may, after providing the customs with a guaranty bond of equivalent value to that of the goods, request the customs to release his goods. If the intellectual property rights holder fails to lodge a lawsuit to the people’s court within a reasonable time, the customs shall refund the guaranty bond.
Article 20 Where, after the customs has found that any imported or exported goods are suspected to have infringed an archived intellectual property, and has notified the intellectual property rights holder, while the intellectual property rights holder requests the customs to detain the suspected infringing goods, the customs shall investigate into and ascertain within 30 working days as of the detainment whether the detained suspected infringing goods have infringed the intellectual property; if the aforesaid goods are unable to be ascertained, the customs shall immediately notify the intellectual property rights holder in writing.
Article 21 Where the customs investigates into the detained suspected infringing goods, and requests the competent administration of intellectual property rights to provide assistance, the relevant competent administration of intellectual property rights shall provide assistance.
Where, when handling an infringement case of imported or exported goods, the competent administration of intellectual property rights requests the customs to provide assistance, the customs shall provide assistance.
Article 22 When the customs is investigating into the detained suspected infringing goods and other relevant details, the intellectual property rights holder, and the consignee or consigner shall provide cooperation.
Article 23 An intellectual property right holder may, after submitting an application to the customs for taking protection measures, file an application according to the Trademark Law of the People’s Republic of China, the Copyright Law of the People’s Republic of China or the Patent Law of the People’s Republic of China to the people’s court before lodging a lawsuit for taking the measure of ordering to stop the infringing acts or taking property preservation with regard to the detained suspected infringing goods.
The customs shall provide assistance if receiving relevant notice of the people’s court on assisting in ordering to stop the infringing acts or in taking property preservation.
Article 24 In the case of any of the following circumstances, the customs shall release the detained suspected infringing goods:
(1) The customs detains the suspected infringing goods according to Article 15 of the present Regulation, but does not receive the notice of the people’s court on assisting execution within 20 working days as of the detainment;
(2) The customs detains the suspected infringing goods according to Article 16 of the present Regulation, but does not receive the notice of the people’s court on assisting execution within 50 working days as of the detainment, and the detained suspected infringing goods cannot be ascertained upon investigation to have infringed any intellectual property rights;
(3) The consignee or consigner of the goods which are suspected to have infringed a patent right, after providing the customs with a guaranty bond of equivalent value to that of the goods, requests the customs to release the goods;
(4) The customs considers that the consignee or consigner has sufficient evidence to prove that the goods have not infringed the intellectual property rights of the right holder.
Article 25 Where the customs detains any suspected infringing goods according to the present Regulation, the intellectual property rights holder shall pay relevant warehousing, custody and disposal fees, etc. In case the intellectual property rights holder has not paid the relevant fees, the customs may deduct them from the guaranty bond provided to customs, or requests the guarantor to perform the relevant guaranty responsibilities.
Where the suspected infringing goods are regarded to have infringed an intellectual property, the intellectual property rights holder may calculate the relevant warehousing, custody and disposal fees, etc. that he has paid into the reasonable expenditures for stopping the infringing acts.
Article 26 Where the customs finds any suspected criminal case when carrying out the protection of intellectual property rights, it shall transfer the case in accordance with the law to the public security organ for handling.
Chapter IV Legal Liabilities
Article 27 Where any detained suspected infringing goods are ascertained to have infringed an intellectual property rights after the investigation of the customs, they shall be confiscated by the customs.
The customs shall, after confiscating the goods infringing an intellectual property rights, inform the intellectual property rights holder in writing of the relevant information on the aforesaid goods.
Where the confiscated goods infringing an intellectual property are used for the commonweal undertaking, the customs shall deliver them to the relevant commonweal institutions for the purposes of commonweal undertaking; if the intellectual property rights holder has the intent of purchase, the customs may transfer the goods to the intellectual property rights holder non-gratuitously. In case the confiscated goods infringing an intellectual property right are unable to be used for the commonweal undertaking and the intellectual property rights holder has no intent of purchase, the customs may lawfully auction them after the infringement features have been eliminated; and in case the infringement features are unable to be eliminated, the customs shall destroy such goods.
Article 28 Where an individual brings or mails articles of entry or exit by exceeding the quantity for self-use or the reasonable quantity, and infringes an intellectual property rights prescribed in Article 2 of the present Regulation, the customs shall confiscate such articles.
Article 29 Where, after accepting an application for archival filing of intellectual property protection or for taking measures of protecting an intellectual property, the customs fails to find the infringing goods, or fails to in time take protection measures or takes poor protection measures because of the fact that the intellectual property rights holder fails to provide exact information, the intellectual property rights holder shall undertake the liabilities by itself.
Where, after the intellectual property rights holder requests the customs to detain the suspected infringing goods, the customs is unable to ascertain that the detained suspected infringing goods have infringed the intellectual property rights of the right holder, or the people’s court rules that the said goods have not infringed the intellectual property rights of the right holder, the right holder shall undertake the indemnity liabilities in accordance with the law.
Article 30 Where, when importing or exporting any goods infringing an intellectual property rights, a crime is constituted, the offenders shall be subject to criminal liabilities in accordance with the law.
Article 31 Where any customs functionary neglects his duties, abuses his powers or practices frauds for personal gains when carrying out protection of intellectual property rights, and a crime is constituted, he shall be subject to criminal liabilities in accordance with the law; if no crime is constituted, he shall be imposed upon administrative sanctions in accordance with the law.
Chapter V Supplementary Provisions
Article 32 Where an intellectual property rights holder has his intellectual property rights archived in the Customs General Administration, he shall pay the archival filing fee according to the relevant provisions of the State.
Article 33 The present Regulation shall be implemented on March 1st, 2004. The Regulation of the People’s Republic of China on Customs Protection of Intellectual Property Rights promulgated by the State Council on July 5th, 1995 shall be abolished simultaneously.
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How to Determine the Compensation Amount for Trade Secret Infringement?
November 3, 2009
Trade Secret shall mean a sort of technical or business information which can bring actual or potential economic interests to the right holder. It needs to pay certain capital and labor cost, and using it can bring actual economic interests, and monopolizing it can keep the competitive advantages of the right holder. Consequently, if the trade secret has been infringed, the achievement of right holder will be split out, or the right holder loss his competitive advantages or the whole inputs of right holder will be null and void.
Pursuant to the Interpretation of the Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition, the determination of damages for the acts infringing on business secrets as prescribed in Article 10 of the Anti-unfair Competition Law may be governed by the methods of determining damages for patent infringements by analogy. In case a tort causes any business secret to be known by the general public, the damages shall be determined according to the commercial value of this business secret. The commercial value of this business secret shall be determined according to the research and development costs, the proceeds from implementing this business secret, possible benefit, and the time for maintaining the competitive advantage to this business secret, etc.
According to the aforesaid provisions, the methods of determining the compensation for trade secret infringement are as follow:
1 Determine the right holder’s losses arising from the infringing act as the compensation amount. This method requires the infringer to compensate all losses of the right holder in the field of computable property or incomes.
2 Determine the profit obtained by infringer from infringing acts as the compensation amount. As to illegally selling trade secret to others, the incomes of illegal sale is regarded as the compensation; as to illegally using the trade secret to engage in business, the profits obtained or increased is regarded as the compensation. Where the profit rate is difficult to check up, the right holder may appoint an IP Assessment agency or an expert for evaluation.
3 Determine the reasonable license royalty of trade secret license at least as the compensation. This method generally applies to the condition where the third party obtains the secret in good faith and shall assume his responsibility. As to this method, the right holder shall not collude with others and fabricate the license contract and license royalty, so as to obtain a large number of compensation from the infringer.
4 Fixed compensation. Where it is difficult to determine the plaintiff’s losses and the defendant’s profits, the fixed compensation may be applied according to the Summary of the Supreme People’s Court on the trial concerning the IP right of some courts. Where the infringing facts have been found and the plaintiff’s losses and the defendant’s profits could not been determined, the cases could apply to the method of fixed compensation so as to determine the compensation amount. The range of fixed compensation is from RMB 5,000 to RMB 300,000. The specific amount shall be determined by court according to types of IP, evaluated value, period of infringing, and reputation damage due to infringement and so on within the aforesaid range.
5 Mutual voluntary negotiation is another usual method. As the civil right is a private right, the parties may determine at their decision to accept or wavier its own lawful rights, as long as such choices do not violate the lawful rights and interests of the State, society or others.
Source: http://www.chinaipr.gov.cn
Tags: Infringement, compensation, SecretsRelated Posts:
Protection Against Intellectual Property Rights Infringement
November 2, 2009
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.
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Trademark Law of the Peoples Republic of China (the 2nd amended edition)
November 1, 2009
(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.
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