Law & Practice
CHINA: New Standard on Trademark Infringement
Published: July 15, 2020
Albert Tsui Dentons Beijing, China INTA Bulletins—Asia-Pacific Subcommittee
Verifier: Rick Z. Tan Jiaquan IP Law Guangzhou, China
China’s National Intellectual Property Administration on June 15, 2020, issued the Standard for Determination of Trademark Infringement (the Standard), which serves as a guideline for law enforcement when handling infringement cases.
Relying on administrative power to resolve disputes is common in China. When a trademark is infringed, registrants often choose to file complaints with local law enforcement, usually a local bureau of the Administration for Market Regulation (AMR), instead of taking the infringer to court. The new Standard assists AMR officers in determining whether a complaint may be sustained.
The 38-article Standard succinctly consolidates previous laws, judicial interpretations, and administrative practices regarding trademark infringement. In particular, it addresses issues such as similarity in goods and services, similarity of trademarks, and the concept of “confusion.”
To determine similarity in goods and services, Chinese law enforcement has traditionally relied on the Classification Table of Similar Goods and Services (Classification Table), a guideline issued by the China Trademark Office (CTMO). This table incorporates the most recent edition—the 11th edition— of the Nice Classification. The Classification Table subdivides the 45 classes into “subclasses,” goods under each of which are presumed to be similar. The Standard recognizes the referential authority of the Classification Table and sets out exemptions when presumptions do not hold.
Turning to the issue of trademark similarity, the CTMO previously published Trademark Examination and Review Standards (TERS) to assist trademark examiners in determining similarity in the context of trademark prosecution. The Standard recognizes that TERS is also applicable for law enforcement.
Articles 19 to 21 of the Standard clarify the concept of “confusion,” a factor that AMR enforcers will take into account when a complaint is less clear-cut. In contrast, a higher degree of likelihood of confusion may warrant an enforcement action. This is good news for trademark owners who can pass the “confusion” threshold. By leveraging government power to enforce trademarks, it not only saves brand owners money by avoiding civil action but also creates a strong deterrent effect for society at large.
To overcome the threshold, the owner of a registered mark allegedly being infringed should prove to the AMR enforcers that the mark is prominent and famous in mainland China, excluding Taiwan, Hong Kong SAR, China, and Macao SAR, China. The relevant public needs to be well aware of the mark, and their attention has to be sufficiently drawn to it.
Owners of foreign brands may be better served by traditional judicial actions if their brands are well recognized abroad but not widely known in China, or if these foreign language names are not comprehensible or catchy enough for Chinese.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2020 International Trademark Association
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