CNIPA publishes trademark infringement criteria

To help strengthen and guide trademark law enforcement, provide uniform criteria for law enforcement, strengthen the protection of exclusive rights to use trademarks and create a good business environment, the China National Intellectual Property Administration (CNIPA) has enacted the Criteria for Judging Trademark Infringement (Criteria), which went into effect on June 15, 2020. The Criteria creates an organised system and summarises trademark administrative protection, while adding in provisions based on actual practice.

Trademark Use

Articles 4, 5, 6 and 7 of the Criteria have specified that the use of trademarks is usually the premise of judging trademark infringement. They further increase the definition of trademark use and expand on the forms of trademark use, while clarifying the principle of judgment on the use of trademarks.

Article 3: It is generally necessary to determine whether a suspected infringement act constitutes the use of a trademark in the sense of the Trademark Law in order to determine whether it constitutes trademark infringement.

The use of a trademark refers to the act of using a trademark on goods, goods packaging, containers, service premises and in trading documents, or using a trademark in any advertisement, exhibition or for any other commercial activity, in order to identify the origin of goods or services.

Article 4: The forms of trademarks used on goods, goods packaging, containers and in goods trading documents include, but are not limited to:

• placement of trademarks on goods, goods packaging, containers and labels, etc., by means of direct attachment, engraving, branding or knitting, etc., or use of trademarks on additional signs of goods, product specifications, introduction manuals and price lists, etc.; and
• use of trademarks in the trading documents in connection with goods sales, including goods sales contracts, invoices, vouchers, receipts, goods import and export inspection and quarantine certificates, and customs declaration forms, etc.

Article 5: The forms of trademarks used on service premises and in the service trading documents include, but are not limited to:

• use of trademarks directly on service premises, including introduction manuals, staff uniforms, posters, menus, price lists, business cards, coupons, office stationery, writing paper and other relevant articles to be used for the provision of services; and
• use of trademarks in documents and materials in connection with services, such as invoices, vouchers, receipts, remittance bills, service agreements and repair and maintenance certifications.

Article 6: The forms of trademarks used in advertisements, exhibitions and for other commercial activities include, but are not limited to:

• use of trademarks on radios, televisions, movies, internet and other media, or in the publications issued publicly or on billboards, mail advertisements or other advertisement carriers;
• use of trademarks in exhibitions and expos, including printed materials, booth pictures, exhibition certificates and other materials using trademarks;
• use of trademarks on websites, instant messaging tools, social network platforms, applications and other carriers;
• use of trademarks on QR codes and other information carriers; and
• use of trademarks on shop signboards and shop decorations.

Article 7: It shall take the users’ subjective intent, use methods, publicity methods, industry practices, consumer cognition and other factors into comprehensive consideration when judging whether it constitutes trademark use.

Identical/Similar Goods

The Criteria stipulates the judging principles of the identical/similar goods and also clarifies the role of the Classification of Goods and Services (Classification) when it comes to administrative enforcement of trademarks.

Article 9: Identical goods refers to goods that are actually produced and sold by the suspected infringer that have the same name or, in the case of different names, have the same or essentially same functions, uses, main raw materials, production department, target consumers and marketing channels, etc., as the registered goods of others’ trademark, where the relevant public generally regard them as the identical goods.

Identical service refers to a service that is actually provided by the suspected infringer and has the same name or, in the case of different names, has the same or essentially the same purposes, contents, methods, providers, targets and premises, etc., as the registered service of others’ trademark, where the relevant public generally regard it as the identical service.

The registered goods or services refer to the descriptions used by the CNIPA in connection with goods or services during trademark registration, including the descriptions of the goods or services listed in the Classification and those not listed therein but accepted during trademark registration.

Article 10: Similar goods refer to goods that have certain aspects in common such as functions, uses, main raw materials, production departments, target consumers and marketing channels. Similar services refer to services that have certain aspects in common such as purposes, contents, methods, providers, targets and premises.

Article 11: To determine whether it constitutes identical goods/services or similar goods/services, the comparison shall be made between the registered goods or services of the rights holder’s trademark and the goods or services suspected of infringement.

Article 12: Whether goods or services suspected of infringement constitute identical goods/services or similar goods/services to the registered goods/services of others’ trademark shall be determined in accordance with the Classification.

With respect to the goods that are not covered by the Classification, it shall take the functions, uses, main raw materials, production department, target consumers, marketing channels and other factors into consideration on the basis of the general knowledge of the relevant public to determine whether they constitute identical or similar goods.

With respect to any service not covered by the Classification, it shall take the purposes, contents, methods, providers, targets, premises and other factors into consideration on the basis of the general knowledge of the relevant public to determine whether it constitutes an identical or similar service.

Identical/Similar Marks

In addition to the traditional trademarks, the Criteria has added the standard for determining the same and similarity of three-dimensional trademarks, colour combination trademarks, sound trademarks and other new types of trademarks, and at the same time, it has further clarified the role of the Trademark Examination and Adjudication Standards in the administrative enforcement of trademarks.

Article 13: A trademark identical to a registered trademark refers to a trademark suspected of infringement which is identical to or, despite differences, there is basically indistinguishable aspects of visual effect or sense of hearing from others’ registered trademark, whereby the relevant public can hardly distinguish it.

Article 14: It can be determined after comparison that a trademark suspected of infringement is identical to a registered trademark under the following circumstances:

• a word mark falls under any of the following circumstances:
• the composition and order of the characters are the same;
• changed the font, letter case or horizontal and vertical text typesetting of the registered mark but is almost indistinguishable from the registered trademark;
• changed the spacing between characters, letters and figures, etc. of the registered mark but is almost indistinguishable from the registered trademark;
• changed the colours of the registered trademark, which does not affect the embodiment of the distinctive features of the registered trademark; or
• it adds the generic name, pattern, model and other contents of the goods lacking distinctive features on the basis of the registered trademark, which does not affect the embodiment of the distinctive features of the registered trademark;
• a figurative mark is almost visually indistinguishable from the registered trademark in composition elements and form of expression, among others;
• a word-figure combination mark has the same composition of characters, graphical appearance, method of arrangement and combination as those of the registered trademark and is almost indistinguishable from the registered trademark in overall appearance;
• a three-dimensional mark has a significant 3-D logo and significant plain element the same as those of a registered trademark or are almost indistinguishable from such registered trademark;
• a colour combination mark has colours and a mode of arrangement which are the same as those of a registered trademark or are almost indistinguishable from such registered trademark;
• a sound mark has a sense of hearing and overall music image the same as those of a registered trademark or are almost indistinguishable from such registered trademark; and
• any other kind of mark is almost indistinguishable from the registered trademark in visual effect or sense of hearing.

Article 15: A trademark being similar to a registered trademark means that, compared with others’ registered trademark, the trademark suspected of infringement has a similar font, pronunciation and meaning in the case of a word mark, or a similar pattern, colours and appearance in the case of a figurative mark, or a similar method of overall arrangement and combination as well as appearance in the case of a word-figure combination mark, or a similar 3-D logo shape and appearance in the case of a three-dimensional mark, or similar colours or combination in the case of a colour combination mark, or a similar sense of hearing or overall music image in the case of a sound mark.

Article 16: Whether a trademark suspected of infringement is similar to others’ registered trademark shall be determined in accordance with the provisions on trademark similarity of the prevailing Trademark Examination and Adjudication Standards.

Article 17: Whether trademarks are identical or similar shall be determined through comparison of the rights holder’s registered trademark with the trademark suspected of infringement.

Article 18: Whether a trademark is identical or similar to a registered trademark shall be determined in the light of general attention and reasoning of the relevant public by means of separation for observation, overall comparison and comparison of main parts.

Confusion

Based on the administrative regulatory documents and the relevant judicial interpretation of the Trademark Law, the Criteria has clarified two situations for the likelihood of confusion and the relevant factors to determine the likelihood of confusion.

Article 19: For the determination of trademark infringement, if any similar trademark is used in connection with identical goods or services, or an identical or similar trademark is used in connection with similar goods or services, whether it may easily cause public confusion shall also be determined.

Article 20: In accordance with the Trademark Law, a trademark may easily cause public confusion if:

• it is enough to make the relevant public believe that the goods or service involved is produced or provided by the rights holder of the registered trademark; or
• it is enough to make the relevant public believe that there is a relationship of investment, licensing, franchising or cooperation between the provider of the goods or service involved and the rights holder of the registered trademark.

Article 21: When determining whether a trademark may easily cause public confusion, the relevant departments of trademark law enforcement shall take the following factors and the interaction thereof into consideration:

• similarity of the trademarks;
• similarity of the goods or services;
• distinctiveness and reputation of the registered trademark;
• the characteristic features of the goods or services and the use method of the trademark;
• the degrees of attention and cognition of the relevant public; and
• other relevant factors.

Trademark Registrants’ Permission

In respect of disputable infringement cases raised on trademark licensing in the practice of trademark law enforcement, the Criteria has clearly stipulated that the circumstances of use without the permission of a trademark registrant include use of the registered trademark without the permission or in excess of the permitted class, duration and quantity, among others, of the goods or service.

Trademark Infringement

According to law enforcement practices, the relevant administrative replies and judicial interpretation, the Criteria has stipulated the legal application of trademark infringement that frequently occurs in practice, mainly include changes in registered trademarks, use of multiple registered trademarks in combination, colouring trademarks for the purpose of seeking a connection with others, using suspected infringing products in the processing and contracting business activities of contracted labour and materials, additional donations that infringe products for sales activities, aiding infringement, etc.

Article 22: Whoever, without authorisation, changes a registered trademark or combines several registered trademarks for use, and uses a trademark that is identical to others’ registered trademark in connection with identical goods or services, shall be deemed as constituting the trademark infringement prescribed in Item 1, Article 57 of the Trademark Law.

Whoever, without authorisation, changes a registered trademark or combines several registered trademarks for use, and uses a trademark similar to others’ registered trademark in connection with identical or similar goods or services, thus easily causing public confusion, shall be deemed as constituting the trademark infringement prescribed in Item 2, Article 57 of the Trademark Law.

Article 23: Whoever, in a highlighted manner, uses the trade name of an enterprise in connection with identical goods or services, thus resulting in a trademark that is identical to others’ registered trademark, shall be deemed as constituting the trademark infringement prescribed in Item 1, Article 57 of the Trademark Law.

Whoever, in a highlighted manner, uses the trade name of an enterprise in connection with identical or similar goods or services, thus resulting in a trademark that is similar to others’ registered trademark and easily causes public confusion, shall be deemed as constituting the trademark infringement prescribed in Item 2, Article 57 of the Trademark Law.

Article 24: Registered trademarks that do not specify colours can be freely coloured; however, anyone colouring a trademark for the purpose of seeking connection with others’ registered trademark in connection with identical or similar goods or services and which easily causes public confusion, shall be deemed as constituting the trademark infringement prescribed in Item 2, Article 57 of the Trademark Law.

If a registered trademark enjoys a high reputation, and the suspected infringer is in an industry which is the same as, or highly relevant to, that of the rights holder of the registered trademark, and uses a mark identical or similar to the registered trademark without justified reasons, the suspected infringer shall be determined as having the intent of seeking connection with others’ registered trademark.

Article 25: Where a contractor uses any goods that infringe upon the exclusive right of the registered trademarks in connection with processing and contracting business activities of contracted labour and materials, it shall be deemed as constituting the trademark infringement prescribed in Item 3, Article 57 of the Trademark Law.

Sales Infringement Exemption

The Criteria has refined the sales infringement exemption and clarified the situations that do not belong to “a seller with no knowledge of selling the infringing goods” or “a seller who can identify the provider”.

Article 26: Where a dealer sells certain goods and, meanwhile, delivers any goods that infringe upon the exclusive right of a registered trademark as a free gift, it shall be deemed as constituting trademark infringement prescribed in Item 3, Article 57 of the Trademark Law.

Article 27: Under any of the following circumstances, “a seller with no knowledge of selling goods that infringe upon others’ exclusive right of a registered trademark” as prescribed in Paragraph 2, Article 60 of the Trademark Law shall not be constituted:

• the purchase channel cannot conform to the commercial practice, and the price is obviously lower than the market price;
• the seller refuses to submit account books, sales records and other accounting vouchers, or submits false accounting vouchers;
• the seller transfers or destroys material evidence or submits false certifications and information after a crime is found;
• the seller repeats the crime after being subjected to punishment for similar illegal acts; or
• there is other evidence proving that the seller is or should be aware.

Article 28: “A seller who can identify the provider” as prescribed in Paragraph 2, Article 60 of the Trademark Law means that the suspected infringer takes the initiative to provide its supplier’s name, business premises, contact information and other exact information or evidence.

A suspected infringer that provides any information which is false or cannot be verified, whereby its provider cannot be confirmed, shall not be deemed as “a seller who can identify the provider”.

Article 29: Where a suspected infringer is a seller with no knowledge of selling goods that infringe upon others’ exclusive right of a registered trademark as prescribed in Paragraph 2, Article 60 of the Trademark Law, such a seller shall be ordered to stop selling the infringing goods, and their supplier shall be subjected to case-filing and investigation or the case evidence shall be transferred to the relevant department of trademark law enforcement having jurisdiction over the case.

Where an infringer sells any infringing goods which the infringer has been ordered to stop selling again, the infringer shall be investigated and handled in accordance with the law.

Article 30: Where market sponsors, exhibition organisers, counter lessors or operators of e-commerce platforms, etc., are negligent in performing their management duties and fail to stop trademark infringement committed by dealers in the markets, exhibitors, counter lessees or e-commerce operators on platforms even if they are, or should be, aware of such infringement, or, in the case of unawareness thereof, and fail to take necessary measures to stop such trademark infringement after receiving a notice issued by the relevant department of trademark law enforcement or the effective administrative or legal document presented by the trademark rights holders, it shall be deemed as constituting the trademark infringement prescribed in Item 6, Article 57 of the Trademark Law.

Article 31: Whoever registers certain words which are identical or similar to others’ registered trademark as their domain name and operates an e-commerce business in connection with relevant goods or services under such a domain name, which easily misleads the relevant public, shall be deemed as constituting trademark infringement prescribed in Item 7, Article 57 of the Trademark Law.

Conflicts with Other Intellectual Property Rights

The Criteria has stipulated the approach to settle the conflict between the trademark rights and other intellectual property rights, in which the application date of the trademark shall be the baseline.

Article 32: Prior legitimate rights shall be protected during investigation and handling of trademark infringement cases.

Where a design patent or a copyrighted work is used to defend others’ exclusive right of a registered trademark, and the application date of the registered trademark is earlier than that of the design patent or the proved completion date of the copyrighted work, the relevant trademark law enforcement departments may investigate and handle the trademark infringement case. 

Prior Use Defence

To regulate the use of unregistered trademarks in prior use, the Criteria has detailed the provisions of “trademark acquiring certain influence” and “the original scope of use” etc.

Article 33: The term “trademark with substantial influence” as prescribed in Paragraph 3, Article 59 of the Trademark Law refers to an unregistered trademark that is already in use within the country and has acquired a certain reputation among the relevant public.

To determine whether a trademark acquired substantial influence, such factors as the duration of use of the trademark, sales volume, sales amount and advertisement shall be taken into consideration.

A user shall not be deemed as continually using a trademark within the original scope if:

• the user adds to the specific goods or services to which the trademark applies;
• the user changes the pattern, characters, colours, structure, writing style and other items of the trademark, except for those changes made to distinguish the trademark from others’ registered trademark; and
• the user otherwise goes beyond the original scope of use.

Suspending a Trademark Infringement Case

Article 35 of the Criteria has stipulated that the provisions on “suspension” of Paragraph 3, Article 62 of the Trademark Law shall apply to the following cases which are being examined by the CNIPA or subject to legal proceedings in a people’s court:

1. the registered trademark is subject to an announcement of invalidation;
2. the registered trademark is within the grace period for renewal; and
3. there is any other dispute over the ownership of the registered trademark.

Two or More Trademark Infringements within Five Years

Article 34 of the Criteria has clarified the term “two or more trademark infringements within five years” as prescribed in Paragraph 2, Article 60 of the Trademark Law to the same person who commits trademark infringement again within five years of the effective date of the administrative punishment or judgment issued by the relevant department of trademark law enforcement or the people’s court due to infringement of others’ exclusive right of a registered trademark.

Rights Holder Identification

The Criteria stipulates that the trademark right holder shall assume legal responsibility for the identification opinions issued by itself, and also clarify that the department of law enforcement shall examine the qualification of the holder and the authenticity of the identification opinions.

Article 36: During the investigation of a trademark infringement case, the relevant department of trademark law enforcement may require the rights holder to issue written identification opinions concerning whether the goods involved are produced by it or under its licensing. The rights holder shall assume corresponding legal liabilities for its identification opinions.

The relevant department of trademark law enforcement shall examine the qualification of a subject who issued the identification opinions and the authenticity of the identification opinions. If the suspected infringer has no evidence to the contrary to overthrow the identification opinions, the relevant department of trademark law enforcement shall adopt the identification opinions as evidence.

Analysis

Trademarks continue to play an important role in promoting the sustainable development of China as a rising economic superpower. It can be seen from the above that the Chinese government and relevant authorities are determined to enact various measures to curb and tackle trademark infringement and to improve and strengthen intellectual property rights protection. The Criteria provides a clear and direct legal basis for cracking down on trademark infringement during administrative, judicial and law enforcement activities. Considering that the Criteria has now been implemented, it is expected that trademark protection in China will continue to see more consistent treatment when it comes to trademark law enforcement.