On December 16, 2011, the Supreme People's Court of China issued the Opinions on Exerting the Function of Intellectual Property Rights Judgment to Facilitate Socialist Cultural Development and Prosperity and Promote Independent and Coordinated Economic Development (the "Opinions"). The Opinions provide several guidelines on the trial of trademark infringement cases, which mainly touch upon the following issues:
- Deliberate plagiarism in bad faith. To determine whether an alleged infringer has acted in bad faith, the trial court shall adopt comprehensive criteria by taking into account the reputation and distinctiveness of trademarks, similarities between trademarks and designated goods, and whether the applicant/registrant has the intention to use the mark and the improper use of the marks, such as trademark squatting and free-riding activities.
- Determination of similar trademarks. It shall be decided on a case-by-case basis whether two marks are similar. In general, if relevant marks have similar component elements, they can be determined as similar trademarks. Where the component elements of relevant trademarks are not similar on the whole, two marks could still be considered as similar trademarks if 1) the prominent parts of mentioned marks are similar and 2) the plaintiff's mark is far more famous than the accused mark. Provided that trademarks concerned are both of certain fame or they have co-existed under special conditions, the actual use status in the market, history of use and public awareness of both trademarks as well as the intention of the users should also be weighed when deciding the similarities between the two marks.
- Relatedness of goods. The Classification of Goods and Services can be deemed as the reference when deciding the similarities of goods/services, however, the market status is a vital factor in each specific case. In particular, elements including function and use, manufacturing sources, sales channels, target consumers of goods and other factors that may affect the knowledge of the relevant public should also be taken into consideration. Relevance of goods should be fully taken into consideration when a prior mark enjoys prior reputation through use. Under certain circumstances, those goods that are generally considered as similar from the view of common knowledge and average business awareness of the relevant public should be deemed as similar.
- Well-known trademarks. Stricter standards should be adopted in recognizing well-known trademarks. With respect to the trademarks that are widely known to the general public in actual use, the trademark owners' burden of proof could be reduced regarding the recognition of a well-known trademark.
- Defense to trademark infringement. Identical or similar trademarks in use are the basis for trademark infringement. The defense by the genuine trademark owner who does not possess any prior trademark registration but is accused of infringing upon another's registered trademark right should be supported if the registered mark is a copy, imitation or translation of the genuine owner's unregistered well-known trademarks, or the trademark registration was applied/registered by an agent or representative of the genuine trademark owners, or the registered trademark was plagiarized from the accusing party's mark that had been used and acquired certain fame.
For more information about the above issue, please refer to:
"The Opinions on Exerting the Function of Intellectual Property Rights Judgment to Facilitate Socialist Cultural Development and Prosperity and Promote Independent and Coordinated Economic Development", http://rmfyb.chinacourt.org/paper/html/2011-12/21/content_37879.htm
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