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Judicial Interpretations Made by PRC Supreme Court
Relating to Application Law in Hearing Trademark Civil Disputes
(Adopted by the 1246th Meeting of Judicial Committee of PRC Supreme
Court on October 12, 2002)
The following explanations of the application of law are made
in accordance with the General Principles of Civil Law of the
People’s Republic of China, the Contract Law of the People’s Republic
of China, the Trademark Law of the People’s Republic of China,
the Civil Procedural Law of the People’s Republic of China for
the purpose of correct adjudication of trademark disputes:
Article 1
The following acts are acts set forth in Article 52(5) of the
Trademark Law that cause other injuries to the exclusive right
to use a trademark:
(1) use of words identical with or similar to the trademarks
of others prominently as names of enterprises on identical or
similar goods likely to cause public misidentification;
(2) reproductions, imitations and translations of others’ registered
well-known trademarks or the principal parts thereof to be used
as trademarks on goods that are not identical or similar which
mislead the public and likely to cause injury to the interest
of the registrants of the well-known trademarks;
(3) use of words identical with or similar to the trademarks
of others as domain names to conduct electronic commerce for the
trading of relevant goods through such domain names and likely
to cause public misidentification;
Article 2
In accordance with Clause 1 of Article 13 of the Trademark Law,
any one who reproduces, imitates or translates well-known trademarks
of others not registered in China or the principal parts thereof
and uses the same as trademarks on identical or similar goods
shall be civilly liable to cease and desist from the infringement
if the use of the same will likely cause confusion.
Article 3
The licenses to use trademarks as set forth in Article 40 of the
Trademark Law include the following three categories:
(1) Exclusive license, which means a license granted by a trademark
registrant to allow a single licensee to use the trademark for
an agreed period of time, within an agreed geographic area and
in an agreed manner and that the trademark registrant may not
use such registered trademark as agreed;
(2) Sole license, which means a license granted by a trademark
registrant to allow a single licensee to use the trademark for
an agreed period of time, within an agreed geographic area and
in an agreed manner and that the trademark registrant may use
the trademark as agreed, but may not allow any other to use such
registered trademark;
(3) General license, which means a license granted by a trademark
registrant to allow a single licensee to use the trademark for
an agreed period of time, within an agreed geographic area and
in an agreed manner and that the trademark registrant may use
the trademark as agreed or allow others to use such registered
trademark.
Article 4
The interested parties as provided for in Article 53 of the Trademark
Law include licensees under registered trademark licensing agreements
and lawful successors and assigns of the property rights of registered
trademarks.
In the event of infringement upon the exclusive right to use
a registered trademark, the licensee under an exclusive licensing
agreement may bring an action before the people’s court; the licensee
under a restrictive licensing agreement may bring an action jointly
with the trademark registrant before the people’ court or bring
such an action singly if the registrant does not bring an action;
the licensee under a general licensing agreement may bring an
action pursuant to an express authorization of the trademark registrant.
Article 5
If a trademark registrant or an interested party applies for an
extension of a registered trademark during the grace period for
extension of registered trademarks and, before the approval for
the extension is obtained, brings an action against a third party
infringement upon the exclusive right to use the registered trademark,
the people’s court shall accept and hear the case.
Article 6
For any civil case brought against infringement upon the exclusive
right to use registered trademarks, the people’s courts in places
where the infringement takes place or where the infringing goods
are stored or sealed for investigation and impounded or where
the defendant resides shall have jurisdiction over the case as
provided for in Articles 13 and 52 of the Trademark Law.
As provided for in the preceding paragraph, the place where the
infringing goods are stored means the place where infringing goods
are stored in material quantity or where such goods are often
stored; the place where the infringing goods are sealed for investigation
and impounded means the place where the infringing goods are sealed
for investigation and impounded by the administrative authorities
of the customs and of the industry and commerce.
Article 7
For a joint action involving multiple defendants and different
places where the infringement has taken place, the plaintiff may
choose the people’s court in the place where one of the defendants
had carried out the infringement; for any action against only
one of the defendants, the people’s court in the place where the
such defendant has carried out the infringement shall have jurisdiction
over the case.
Article 8
The relevant public as provided for in the Trademark Law means
the consumers of certain type of goods or service represented
by a trademark or any one closely related to the promotion and
sale or such goods and service.
Article 9
The identical trademark as provided for in Article 52(1) of the
Trademark Law means the trademark against which infringement is
alleged represents no materials visual difference from the registered
trademark of the plaintiff.
The similar trademark as provided for in Article 52(1) of the
Trademark Law means the trademark against which infringement is
alleged that, when compared with the registered trademark of the
plaintiff, is similar in the shape of words, phonetics, meaning
or the shape of the graphics and its color, or in the general
formation resulting from the positions of the all the principal
elements, or in the three-dimensional shape or the formation of
colors, and is likely to cause misidentification among the general
public as to the origin of the goods or misperception that the
origin of the goods is specially connected to the goods represented
by the registered trademark of the plaintiff.
Article 10
Pursuant to Article 52(1) of the Trademark Law, the people’s court
shall determine what constitutes identical or similar trademarks
in accordance with the following principles:
(1) measure against the attention generally applied by the relevant
public;
(2) conduct both an overall comparison of the trademarks and
a comparison of the principal parts of the trademarks and the
comparisons shall be conducted separately with the objects of
comparison isolated from one another;
(3) to determine whether the trademarks are similar, consideration
shall be made to the prominence and popularity of the registered
trademarks for which protection is being sought.
Article 11
The similar goods as provided for in Article 52(1) of the Trademark
Law mean goods that share similarities in function, usage, manufacturing
entities and targeted consumers, or goods that cause the relevant
public to believe the existence of a special relationship or are
likely to cause confusion.
Similar services mean services that share similarities in purpose,
method and targeted consumers of such services, or services that
cause the relevant public to believe the existence of a special
relationship or are likely to cause confusion.
If goods are said to be similar to services, it means the existence
of a special relationship between the goods and services and the
likelihood of the relevant public being confused about them.
Article 13
When the people’s court ascertains the amount of compensation
to be paid by the infringing party pursuant to Clause 1 of Article
56 of the Trademark Law, it may calculate the amount of compensation
on the basis of the calculating formula selected by the claimant.
Article 14
The amount of gains obtained as a result of infringement as provided
for in Clause 1 of Article 56 of the Trademark Law may be calculated
by multiplying the quantity of sales of the infringing goods by
the unit profit of such goods sold; if the unit profit of such
goods cannot be ascertained, the calculation shall be based on
the unit profit of the goods bearing the registered trademark.
Article 15
The losses caused by the infringement as provided for in Clause
1 of Article 56 of the Trademark Law may be calculated by multiplying
the amount of sale reduction of the goods suffered by the claimant
as a result of the infringement or the amount of sale of the infringing
goods by the unit profit of the goods bearing the registered trademark.
Article 16
If it is difficult to determine both the amount of gains obtained
by the infringer from his infringement and the losses resulting
from the infringement suffered by the victim of the infringement,
the people’s court may rely on the claimant’s request or use its
discretion pursuant to Clause 2 of Article 56 of the Trademark
Law to determine the amount of compensation.
In its determination of the amount of compensation, the people’s
court shall take into consideration the nature, duration and consequence
of the infringement, the reputation of the trademark in question,
the amount of licensing fees for the use of the trademark, the
type, duration and scope of the trademark license and to reasonable
costs to enjoin the infringement.
The parties involved shall be permitted to reach a settlement
agreement as to the amount of compensation pursuant to the first
clause of this Article.
Article 17
The reasonable costs incurred to enjoin infringement as provided
for in Clause 1 of Article 56 of the Trademark Law include the
reasonable costs incurred by the claimant or its authorized agent
to conduct investigation and evidence collection in respect of
any infringement.
At the request presented by the party in action or as the specific
circumstances of the case may require, the people’s court may
include legal fees in the amount of compensation pursuant to the
regulations of the relevant governmental departments.
Article 18
The statute of limitation for infringement upon the exclusive
right to use registered trademarks is two years, commencing from
the time when the trademark registrant or claimant knew or should
have known the infringement. If the trademark registrant or claimant
brings an action beyond the two-year limitation and if the infringement
continues at the time of the action, during the validity period
of the exclusive right to use the trademark, the people’s court
shall rule to enjoin the infringement by the defendant and the
amount of compensation for the infringement shall be calculated
for two years dating back from the time when the claimant brings
the action before the people’s court.
Article 19
Failure to file a trademark licensing agreement shall not affect
the validity of the agreement unless the parties thereto provide
otherwise.
Any trademark agreement not having been files with the Trademark
Office shall not be used against any good-faith third party.
Article 20
The transfer of a registered trademark shall not affect the validity
of a trademark licensing agreement which took effect before the
transfer unless the trademark licensing agreement provides otherwise.
Article 21
When hearing cases of infringement upon the exclusive right to
use registered trademarks, the people’s court may, pursuant to
Article 134 of the General Principles of Civil Law, Article 53
of the Trademark Law and the specific circumstances of the cases,
rule to order the infringer to bear such civil liabilities as
to cease and desist the infringement, eliminate interference,
compensate for losses and eliminate adverse effects. It may also
order such civil sanctions as fines, confiscation of the infringing
goods, counterfeit trademark representations and materials, tools
and equipment used specifically to produce infringing goods. The
amount of fines may be determined by reference to the Implementing
Rules of the Trademark Law of the People’s Republic of China.
For the same act of infringement upon the exclusive right to
use a registered trademark to which the administration for industry
and commerce has rendered administrative sanctions, the people’s
court shall not render any civil sanction.
Article 22
When hearing trademark disputes, the people’s court may, pursuant
to the request of the parties involved and the specific circumstances
of the cases, ascertain whether the registered trademarks involved
are well-known pursuant to law.
Well-known trademarks shall be ascertained pursuant to Article
14 of the Trademark Law.
If a party seeks protection of a trademark already ascertained
as well-known by the administrative authorities or by the people’s
court, and the opposite party does not raise any objection in
respect of the well-known mark involved, the people’s court shall
not carry out any investigation thereof. In the event of any such
objection, the people’s court shall investigate the matter pursuant
to Article 14 of the Trademark Law.
Article 23
The explanations made in respect of trademarks for goods apply
to service marks.
Article 24
In the event of any inconsistency between any relevant antecedent
regulations and these explanations, these explanations shall prevail.（liu
Yuanyue translated）
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