By Cissy Zhou, King and Wood Mallesons’ IP group
On June 15, 2020, the China National Intellectual Property Administration(CNIPA) enacted the “Trademark Infringement Judgment Standard” (hereinafter referred to as the “Standard”), which came into force from the date of promulgation. Within the framework of the Trademark Law, the Standard, based on the guiding function of trademark law enforcement, systematically combed and summarized the beneficial experiences and practices of trademark administrative protection over the years, providing operational guidelines for trademark law enforcement departments to perform law-based administration, helping to improve the trademark protection rule system, solving difficult and complicated problems in law enforcement practice, creating a transparent and predictable IP protection environment for market players, and further enhancing trademark law enforcement and protection.
The trademark law enforcement departments stipulated in the Standard mainly refer to the market supervision and administration departments, relevant departments with trademark administrative law enforcement rights and intellectual property management departments with trademark law enforcement rights such as Shanghai Pudong New District Intellectual Property Administration and Changsha Intellectual Property Administration, etc.
The Standard systematically sorted out and summarized the useful experience and practices of trademark administrative protection over the years, and added innovative regulations in combination with practice. The Standard has a total of thirty-eight articles that specify the use of trademarks, the identical and similar goods, the identical and similar trademarks, likelihood of confusion, exemption of sellers, conflict of rights, applications of stay and identification of rights holders. What deserves special attention is :
1.The use of trademarks
The Standard specifies that the use of trademarks is usually a prerequisite for judging trademark infringement, further refines the definition of trademark use and lists the specific forms of trademark use, clarifies the principle of judging the use of trademarks.
The Standard clarifies that judging the infringement of trademark normally requires judging whether the alleged infringement constitutes the use of trademark in the sense of trademark law. At the same time, the Standard further specifies the definition of the use of trademarks, adds the service venues involved in service trademarks, and separately lists the specific manifestations of trademarks used in goods, services, advertising and other commercial activities, especially for the Internet era features, adds new forms of use such as websites, instant messaging tools, social networking platforms, Apps, QR codes, etc. Finally, the Standard stipulates the principles for determining the use of trademarks, that is, the use of trademarks should be comprehensively considered by the user’s subjective intentions, use manners, publicity manners, industry practices, consumer perceptions, etc.
2.Specific Forms of Trademark Infringement
According to the law enforcement practice, referring to the relevant administrative replies and judicial interpretations, the Standard stipulates the legal application of trademark infringement that occurs frequently in practice, mainly including:
- Change registered trademarks or use multiple registered trademarks in combination;
- Highlight the trade name in the enterprise name on the identical good or service;
- Registered trademarks that do not specify colors can freely attach colors, but attaching colors for the purpose of being similar to the registered trademarks of others on the identical or similar goods or services, which is easy to cause confusion, constituted infringement;
- In the processing and contracting business activities of contracted labor and materials, if the contractor uses goods infringing the exclusive right of trademarks;
- When selling goods, the additional donation infringes the exclusive right of trademark;
- Market organizers, exhibition organizers, counter lessors, e-commerce platforms and other operators are slack to perform their management duties, knowing or should have known that market operators, exhibitors, counter lessees and e-commerce operators in the platforms have committed trademark infringement acts and will not stop them; Or, although he is not aware of it, he has not taken necessary measures to stop trademark infringement after being notified by relevant trademark law enforcement departments or by trademark owners holding effective administrative and judicial documents;
- E-commerce uses the words that are identical as or similar to registered trademarks of others as domain names, and sells related goods or services through the domain names, which is easy to mislead the relevant public.
3.Verification by the right holder
Article 36 of the Standard stipulates that in the process of investigating trademark infringement cases, trademark law enforcement departments may require the right holder to issue written verification on whether the goods involved are produced by or licensed by the right holder. The Standard correspondingly stipulates that the trademark owner shall bear legal responsibility for the verification and specifiesthe preconditions for law enforcement agencies to examine the legality of the subject issuing verification, the authenticity and relevance of the identification opinions, and the acceptance of verification as evidence. According to the Standard, the verification of the trademark owner shall form a complete evidence chain with the source channel, price, account book, communication record and relevant statements of the goods involved. In addition, trademark owners should also note that if the parties object, the administrative department will initiate an investigation.
4.The prior use defense
Article 59 of the Trademark Law after revision in 2014 for the first time stipulates the prior use defense enjoyed by the earlier user to continue its use of trademark with certain influence within the original scope, but leaving uncertain room for what “original scope” is. Now Article 33 of the Standard further specifies the definitions including “trademarks that have certain influence”, “original scope of use”. The Standard also stipulates the circumstances where the use can not be deemed to fall within the original scope of use.
In addition, the Standard also specifies the principles for judging the identical and similar goods, and the role of the “Classification Book for Similar Goods and Services” in trademark administrative enforcement. In addition to comparing traditional trademarks, the Standard also includes methodology for comparing and determining similarities for non-traditional trademarks such as three-dimensional trademarks, color combination trademarks and sound trademarks. The Standard confirms Trademark Review and Adjudication Standards in trademark administrative enforcement shall also be taken into account during the administrative enforcement for trademark infringement cases.
The issues of OEM (Original Equipment Manufacture) and parallel import, which have received much attention in practice, are however not covered in this Standard due to lack of relevant stipulations in higher-level laws and regulations.