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Results: 4 Answers
Trademarks
7.
Enforcement and remedies for trademark infringement
7.1
What remedies are available against trademark infringement?
 
China
Customs measures: The owner of a registered trademark can record its registered trademark right with the General Administration of Customs of the People’s Republic of China. Upon discovering suspected infringing goods pending import or export, the trademark owner may present an application to Customs at the port of entry to detain such goods and provide Customs with security. Customs will then detain the suspected infringing goods.

On discovering any imports or exports that are suspected of infringing a recorded registered trademark right, Customs shall immediately notify the trademark owner in writing of the suspected infringement. If the trademark owner presents an application and provides security within three working days of the date of service of this notification, Customs will detain the suspected infringing goods.

Customs shall investigate and then determine, within 30 working days of the date of detention, whether the suspected infringing goods are in fact infringing. The suspected infringing goods shall be confiscated by Customs if it determines that they have infringed a registered trademark right. Where the import or export of infringing goods constitutes a crime, criminal liability shall be investigated according to the law.

AIC measures: A trademark owner or an interested party may further request the relevant administrative department for industry and commerce (AIC) to address the issue. If the AIC finds that an infringement has occurred, it shall order the relevant party to immediately cease the infringing acts, and shall confiscate and destroy the infringing goods and instruments mainly used to manufacture the infringing goods and forge the registered trademark. Where the illegal business revenue is RMB50,000 or more, a fine of up to five times the illegal business revenue may be imposed; where there is no illegal business revenue or the illegal business revenue is less than RMB50,000, a fine of up to RMB250,000 may be imposed thereon.

If a party commits trademark infringement on two or more occasions within five years or falls under any other serious circumstances, it shall be subject to more severe punishment.

If a party is unaware of the infringing nature of products that it sells, can prove that the products were obtained by legitimate means and can provide information on the suppliers of the products, the AIC shall order it to stop selling the products.

In case of a dispute over the amount of damages due for trademark infringement, the parties may apply to the AIC for mediation, or may file suit at the people’s court in accordance with the Civil Procedure Law of the People’s Republic of China. If the parties fail to reach agreement through mediation, or fail to execute the mediation agreement once it has become effective, the parties may file suit at the people’s court in accordance with the Civil Procedure Law of the People’s Republic of China.

The AIC has the power to investigate any act of trademark infringement. If it suspects that a crime has been committed, it shall promptly transfer the case to a judicial department for handling in accordance with the law.

In investigating a case of suspected trademark infringement, an AIC at or above county level may conduct inspections and seal or seize articles that are proven to have been used for the infringement.

Judicial remedy: A trademark owner or an interested party may further file suit before the people’s court.

The amount of damages for trademark infringement shall be determined based on the actual loss suffered by the trademark owner as a result of the infringement. If it is difficult to determine the actual loss suffered, the amount of damages may be determined according to the profits earned by the infringer. If it is difficult to determine both the loss of the trademark owner and the profits earned by the infringer, the amount of damages may be reasonably determined by reference to the multiple of royalties payable for a licence for the trademark. If the infringement is malicious and serious, the damages may be doubled or trebled. The amount of damages awarded shall cover reasonable expenses incurred by the trademark owner in stopping the infringing act.

If the trademark owner has exhausted its efforts in discharging its burden of proof, but the account books and materials relating to the infringement are mainly controlled by the infringer, the people’s court may order the infringer to submit account books and materials relating to the infringement. If the infringer fails to provide such account books or materials, or provides false account books or materials, the people’s court may render a judgment on the amount of damages based solely on the claims of, and the evidence presented by, the trademark owner.

If it is difficult to determine the actual loss suffered by the trademark owner as a result of the infringement, the profits earned by the infringer from the infringement or the royalties for a licence, the people’s court shall render a judgment awarding damages in an amount of up to RMB3 million based on the circumstances of the infringement.

If the trademark owner or an interested party proves that another party has infringed or will soon infringe its trademark, and that unless promptly stopped, such infringement will cause irreparable damage to its legitimate rights and interests, it may, in accordance with the law, apply to the people’s court for an injunction to preserve assets before a lawsuit is filed.

In order to stop an infringement, and where evidence may vanish or be destroyed, or may become unobtainable in the future, the trademark owner or interested party may, in accordance with the law, apply to the people’s court for evidence preservation before filing a lawsuit.

If a party, without the permission of the owner of a registered trademark, uses an identical trademark for the same kind of goods, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

If a party counterfeits or makes without permission representations of another person’s registered trademark, or sells such representations, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

If a party knowingly sells goods bearing a counterfeit registered trademark, which constitutes a crime, then in addition to compensating for losses suffered by the trademark owner, that party shall be investigated for criminal responsibility in accordance with the law.

For more information about this answer please contact: Stephen Yang from IP March
7.2
What remedies are available against trademark dilution?
 
China
According to the Trademark Law, where a trademark used for different goods or services reproduces, imitates or translates a registered well-known trademark, and such use misleads the public in a way that is likely to impair the interests of the owner of the registered well-known trademark, no application for registration may be granted and its use shall be prohibited. The owner of the registered well-known trademark or an interested party may file suit before the people’s court or request the relevant administrative department for industry and commerce (AIC) to address the dispute.

For more information about this answer please contact: Stephen Yang from IP March
7.3
Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
 
China
Anyone that uses the registered trademark or the unregistered well-known trademark of another party as a trade name in a way that misleads the public, which constitutes an act of unfair competition, shall be dealt with in accordance with the Anti-unfair Competition Law of the People’s Republic of China.

For more information about this answer please contact: Stephen Yang from IP March
7.4
What is the procedure for pursuing claims for trademark infringement?
 
China
The trademark owner or an interested party may file suit before the people’s court or request the relevant AIC to address the dispute. The AIC’s decision may be appealed before the people’s court. There are usually two instances of appeal.

For more information about this answer please contact: Stephen Yang from IP March
7.5
What typical defences are available to a defendant in trademark litigation?
 
China
If, before an applicant applies to register a trademark, another party has used an identical or similar trademark that has acquired a certain influence for the same or similar goods or services, the applicant cannot prohibit that party from continued use of its trademark within the original scope of use. However, the applicant may require the latter to add a proper mark for the purposes of distinguishing between the two marks.

Where a trademark owner seeks damages for infringement and the alleged infringer counterclaims that the trademark owner has never used the registered trademark, the people’s court may require the trademark owner to provide evidence of actual use of the registered trademark in the three years prior to the lawsuit. The alleged infringer shall not be liable for compensation if the trademark owner cannot prove actual use of the registered trademark in the three years prior to the lawsuit, and further cannot prove other losses suffered as a result of the infringement.

If a party is unaware of the infringing nature of products which it is selling, can prove that the products were obtained by legitimate means and can provide information on the suppliers of the products, it shall not be liable for compensation.

For more information about this answer please contact: Stephen Yang from IP March
7.6
What is the procedure for appealing a decision in trademark litigation?
 
China
If dissatisfied with a first-instance decision of the local people’s court, a party may appeal to the people’s court at the next level within 15 days of the date of service of the decision. There are usually two instances of appeal.

For more information about this answer please contact: Stephen Yang from IP March