Trademark Right Enforcement in China－Comparing with US trademark right enforcement
August 13, 2008By Robert Li, Unitalen Law Office
Abstract
This thesis will compare the trademark right enforcement in China with in US and will emphasize on the enforcement procedures in China. The “Dual-track system” for trademark enforcement is special procedure and is different from US trademark enforcement system. This thesis also introduces the border protection that examines both imported and exported products related trademark infringement. After introducing the procedures, some cases analyses were given. From the comparison, the conclusion comes out that the trademark enforcement in China is “effective and prompt” than many foreigner expected in the administrative protection, border protection and civil action protection, but should be enforced firmly in the criminal procedure protection.
Keywords
Trademark enforcement Administrative protection Border protection Civil law protection Criminal law protection
Introduction
I was questioned many times when I participated the international IP conference, like INTA conference [1], AIPPI conference [2]. “Is there any useful for registering IP right in China?”, “ Can my clients’ IP right be protected in China” or “How about the IP enforcement is in China”. When this scenario occurred, I had to tell him or her that China does protect the owner’s IP rights and the circumstances were much better than they expected. “ But the prerequisite is your clients should have the IP rights in China first, they could have chance to be protected”. I once had a client from Europe and it used a trademark “Sunshine” on the products of plugs and electrical outlet and sold the products in Africa with a 70% market share there. A Chinese businessman registered the identical trademark in China and manufactured the same products in China and then exported to Africa to compete with this European Company. Due to the good quality and lower price than European Company’s products, the European company’s market was diminished sharply. This European company could not protect his rights in Africa successfully and came to China for assistant just because the competed company was Chinese Company. The problem is that this European Company did not register the trademark in China and China does not have the jurisdiction at all. If the European Company had trademark right, we can help it to stop this businessman to make and export products out of China based on the Chinese Laws and regulations. But since the European company did not have any right in China, we could not do anything for him. I only had to suggest this European Company to negotiate with the guy, but the negotiation was not successful. This company then complained that Chinese government did not protect foreign IP rights. It is unfair for complaining China on this issue, the problem is this company should have rights first in China and it is the general rule in the world. To be honesty, Chinese government should do more works to complete the IP system and reduce the rampant infringement phenomena. As I know, China IP laws system should be the almost approach the international IP law system. China IP systems only were formed 20 years ago [3] and were completed step by step. Comparing with the patent and copyright enforcement in China, Trademark enforcement should be the best and effective. “Members of the media love to write about China's failure to protect foreign company intellectual property (IP), but those articles can be misleading. These articles often fail to state whether the foreign company actually registered its IP in China at all and they nearly always fail to distinguish between the various types of IP eligible for protection.”[4]. This comment should be reasonable and describes the current situation of trademark protection in China. United States is the most developed country and has the compressive IP system and the trademark right enforcement procedures. I will compare with the differences of trademark enforcement between China and United States and figure out where and how the China trademark enforcement should be amended and become more effective. First, in PartⅠ, I will give an overview of the trademark law system in China and US. Then, in Part Ⅱ, I will address the acquisition trademark right in China and US. Part Ⅲ addresses the administrative procedures for protection in China and US. Part Ⅳcompares the border protection between China and US. Part Ⅴintroduces the civil action protection in China and US, some typical cases will be introduced also. Part Ⅵwill compare the criminal law protection in China and US and figure out that China should enforce the criminal protection in IP regions. Part Ⅶ is conclusion.
Ⅰ.The overview of China and US trademark law system
A.China trademark law system
The current effective trademark law of China was enacted August 23, 1982 and was effective on March 1st 1983. It was revised respectively in February 1993 and in October 2001 [5]. The amendment of 1993 included “service trademarks” in the work of trademark protection [6]. The amendment of 2001 added three-dimensional trademarks and color combination trademarks in the scope of trademark protection and offered greater protection to well-known trademarks [7]. The revised "Trademark Law" also stipulates that the trademark system shall be used to protect geographical marks and judicial examination shall be added for the granting process of trademark rights. This amendment would meet the requirement of WTO's "Agreement on Trade-related Aspects of Intellectual Property Rights."(TRIPS) [8]
In accordance with the provisions of the "Trademark Law", the State Administration for Industry and Commerce (SAIC) formulated or revised several administrative rules and regulations, including the "Regulations for the Implementation of the Trademark Law"[9] "Provisions on the Recognition and Protection of well-known Trademarks"[10]"Procedures for the Management and Registration of Collective Trademarks and Certification Trademarks"[11] and "Procedures for the Implementation of Madrid Agreement for the International Registration of Trademarks" [12].
Currently, the trademark registration system in China is a blend of voluntary and compulsory registration. According to the PRC Trademark Law “Any natural person, legal entity or other organization, intending to acquire the exclusive right to use a trademark for goods produced, manufactured, processed, selected or marketed by him, shall apply for registration of the trademark used on goods to the Trademark Office. Any natural person, legal person or other organization, intending to acquire the exclusive right to use a service mark for services provided by him, shall apply for registration of the service mark to the Trademark Office.
Provisions in this Law concerning trademarks used on goods shall also apply to service marks [13] ”
The PRC Trademark Law Article 6 stipulates “For goods that, as required by the State, must bear a registered trademark, an application for registration of a trademark shall be filed. If no registration has been made, such goods cannot be sold in the market” In other words, the trademark user can use the trademark in the market if the trademark is not conflict with other prior rights, but if the trademark user wishes to acquire an exclusive trademark right, he or she should register the mark, otherwise, the used trademark could not be protected by the trademark law (unless the unregistered trademark has been a wee-known trademark) [14]. However, tobacco products are required to use registered trademarks [15], otherwise, they are not permitted to be sold in the market.
Trademark registration and some others administrative disputes (opposition, cancellations) in mainland China is administered by the China Trademark Office (with an appeal function administered by the Trademark Review and Adjudication Board and the Beijing No.1 Intermediate People’s Court) .The others disputes and infringement cases will handled by the local AIC and the different level courts.
In 1980, trademark applications were only about 20,000. The amount reached 132,000 in 1993. Since 2001, the amount of application boomed and increased extremely and reached 300,000 in 2001 with increased 100,000 annual year. The amount of applications reached over 700,000 in 2007. The valid registration exceeded 3,000,000. Since entering WTO, both the amount of foreign applications and the amount of foreign trademark registrations have kept increasing. In 1982, there were 1,565 foreign trademark applications in China. The application amount exceeded 20,000 in 1993 and exceeded 50,000 in 2007. The total valid registration amount exceeded 450,000 in 2007[16]. In parallel, statistics show that trademark litigations have exploded since 2001. Since 2001 to 2007, the Chinese Court heard 74,200 cases related to trademark infringement including 17,395 in 2007 with average annual increase of 22.92%. [17]
The China is the member of the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspect of Intellectual Property Rights (TRIPS) and the Madrid Agreement and Madrid Protocol. [18]
Trademark infringement in China is still a rampant problem now, despite the effective and prompt administrative raid procedure available for trademark owners under the assistant of the State Administration for Industries and Commerce and the judicial enforcement. China should reform the trademark law and relevant statutes and enforce strongly to combat the infringers. As I know, the criminal criteria for trademark infringement will be lower and the statute damage will be increased in the next revised trademark act.
B.US trademark law system
The trademark system in US is much more comprehensive and is also much complex than Chinese trademark system. Due to the parallel legal system, the federal trademark act and state trademark law are coexisting. The Lanham (Trademark) Act (title 15, chapter 22 of the United States Code) was approved on July 5, 1946 and took effect "one year from its enactment", on July 5, 1947. [19] The Lanham Act protects the trademark at the federal level. The various states also have their own common law trademark protection statutes, which generally offer overlapping protection for the trademark owner, and might be interpreted more broadly, particularly in the dilution and trade dress context. [20]
The trademark protection requires actual use of the mark in commerce. Federal registration is not mandatory to receive trademark protection in US, but federal registration trademarks can have significantly stronger protection than unregistered trademarks and also have other advantageous. The state law and federal law only provide the protection for actual used trademark in the commerce. So the content is distinct with China Trademark Law for requiring registration. “the owner of a trademark used in commerce may request registration of its trademark on the principal register ….” “ a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register…..” [21]
Trademark registration and administrative disputes (opposition, cancellations) in US are administered by the Patent and Trademark Office (USPTO), and can appeal to the Trademark Trial and Appeal Board (TTAB) is the interested party dissatisfied the decision of USPO and then to the Courts, either the district court, in the form of a civil action against the USPTO, or directly to the Court of Appeals for the Federal Circuit. [22]
The Lanham Act also was revised many times and the last revised part is The US Trademark Dilution Revision Act 2006 was signed into law on October 6, 2006. [23] Collective and certification trademarks can be registered in US. [24] In the Lanham Act, the well-known trademark concept was instead by famous trademark. The court will consider the famous trademark issues during the trademark enforcement and dilution cases.
Another distinctive party of Lanham act is that Lanham Act provides the protection of trade Dress, Cyberpiracy and product configuration [25]. Chinese Trademark Act does not provide this kind of protection and the product configuration and design might be protected by the patent law. As a common law country, the precedents are very important authorities of the court during the trial, but in China, the precedents only can be reference in the similar circumstance cases and could be the binding authority by the Courts.
The United States is signatory to the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspect of Intellectual Property Rights (TRIPS) and the Madrid Protocol. [26]
Ⅱ. Acquisition trademark right in China and US
The procedure of acquisition trademark right in China and US is much similar, such as, both require the trademark should be distinctive, both have the substantial examination, both have opposition period and both require the trademark owner continuously 3-year use in commerce.
But there are also significant distinctions. The basic distinction is the primary element principle for acquisition trademark right. Acquisition trademark right in China is “Fist to file” rule that distinguishes with “First to use” doctrine in the United States, “Use in commerce” is not required when trademark office grants the trademark right to the owner and there is no supplemental registration in China.
A.Acquisition trademark right in China
Like aforesaid, China practices "first to file" system for trademarks registration which means that the trademark right generally belongs to the first person who first to file to register it in China Trademark Office. Where applications are filed on the same day, the trademark right shall be granted to the earliest user.
According to Chinese Trademark Law, any visual symbol, if it can be used to distinguish the source of the goods or service, it can be registered by any natural person, legal entity or any other organization from that of others, the visual symbol can include any word, design, letters of an alphabet, numerals, three-dimensional symbol, combinations of colors, and their actual combination. [27] Before applying for the registration of a mark, it is better for the applicant conducting a preliminary search at the China Trademark Office to determine if a similar or identical mark is previously registered or applied. Then the applicant should complete all the official forms and documents. China adopts the international classification (Nice classification) that specifies 45 classes. The applicant has to submit the application for choosing class and there is no multi-classes application in China. Each application should only include one class. Upon submission of all the necessary documents to the China Trademark Office, the examiner would examine the application for compliance. After a preliminary examination, if the application meets the requirement of China trademark law and the China Trademark Office rules, it will be published on the Trademark Gazette for opposition purpose. China trademark law provides 3 months for any interested party to file an opposition. If there is no any opposition filed, the China Trademark Office will grant the trademark. Once the application is rejected by China Trademark Office or dissatisfied the decision of the opposition, the applicant can appeal to the Trademark Review and Adjudication Board (TRAB) with in 15 days after receiving the notice. If the applicant is not satisfied with the decision of TRAB, the applicant can, within 30 days of receiving notice of decision, file an administrative lawsuit appeal to the Court. For foreign company, it is much better to find an intellectual property firm to do the filing. China laws require foreigners with no permanent address in China to entrust a local firm for registering a trademark in China.
In accordance with the China trademark Law, the trademark should be distinctive or acquired secondary meaning for registration and also should not conflict with prior registration or application. There are some unregisterable subject matters also stipulated by the trademark law. [28] The registered trademark will last 10 years protection and can be renewed permanently each 10 years. Continuous 3 years use in commerce is required. Otherwise, any one can file application to cancel this trademark.
B.Acquisition trademark right in US
Use in commerce is the prerequisite for getting trademark right in US. Although each state protect it own state trademarks, but getting a federal registration can get significant different protection. The first step to acquiring federal trademark rights form the U.S. Patent and Trademark Office (USPTO) requires that applicant starts using the symbol, name or logo in commerce and then subsequently file a trademark application; or file an intent to use (ITU) application which can fix your filing date but still need the commercial use evidence for getting the registration. [29]
The use of a trademark generally means the actual sale of good or provides the service in public. Only advertising use or limit group use could not establish the use in commerce. [30] This priority is limited to the territory if the first use trademark owner does not to register in the USPTO, once someone else registers the trademark and use for certain years, the first use owner should be limited to the first use scope. The registration divides Principal Register and Supplemental Register. For most individuals and businesses, it will be much better for registering the trademark on the Principal Register, which will provide rights superior to those provided by the Supplemental Register. If the Trademark Examiner at the USPTO is not going to allow the mark to issue because it is considered to be descriptive, then settle for registration on the Supplemental Register, which should be better than nothing given that most individuals don’t know the difference. USPTO provides the online application.
In accordance with the Lanham Act, the subject matter for registration is broader thank China trademark Law. Unless specified by 15 U.S.C. §1052 the unregistrable subject matters, any word, name, symbol, or device, or any combination to identify and distinguish the goods or service can be register as trademark. [31] Before applying for the federal registration, it is important to conduct a prior rights research. Since use in commerce can bring trademark right for the user, so it is not enough for searching the data of Federal registration, it should be conducted broadly search in the whole nation. US adopt the international classification (Nice classification), but also use the American classification. There is multi-classes application style and one application can include more than one class. Upon submission of all the necessary documents to USPTO, the examiner will examine the application for compliance. After the substantial examination, if the applicant is entitled to registration, the trademark will be published in the Official Gazette of the USPTO. Potential opponents have 30 days form the publication date to file an opposition or request an extension. No further extension period cannot exceed 180 days form the publication. If the application is rejected the examiner, the applicant can appeal such refusals to the Trademark Trial and Appeal Board (TTAB) and then to the courts.[32]
In accordance with the Lanham Act, the trademark also should be distinctive or acquired secondary meaning for registration and also should not conflict with prior rights. The registered trademark will remain in force 10 years protection, but need to file affidavit of continuing use. Each registration may be renewed for periods of 10 years at the end of each successive 10-year. [33]
Ⅲ. Administrative protection
A.Administrative protection in China
China currently adopts a “dual-track” system for IPR protection under which the trademark owner or any interested party may seek to resolve IPR-related disputes through administrative procedures or legal proceedings. State Administration for Industry and Commerce (SAIC) and regional AIC play a crucial role for trademark right enforcement. When the trademark infringement occurs, the relevant administration authorities will initiatively investigate or accept the compliant to handled this cases by confiscating the infringing goods or by offering other remedies, such as ordering the infrigner to cease infringement, and impose fines. [34]
The regional Administration for Industry and Commerce (AIC) has authority to investigate trademark infringement within its geographic jurisdiction, seize infringing products and adjudicate complaints. The administrative remedies that may be imposed by a local AIC include:
?Cease and desist orders
?Confiscation and destruction of trademark logo that my be separated from the goods, in which case the goods may be returned to the alleged infringer
?Confiscation and destruction of infringing goods where the trademark representation cannot be separated from the goods
?Confiscation of materials, tools and equipment used mainly for production of infringing goods and trademark representations [35]
The proceeding for an administrative compliant:
(a) Information and Evidence to be Submitted
In making a compliant for the AIC to handle an infringement dispute, the trademark owner or any interested party should submit a written application with sufficient evidence, including but not limited the copy of trademark certification, and any evidence of the infringing conduct. If a firm is entrusted to submit the compliant, an authorization letter should also be provided. For cases involving the protection of trademarks under the grace period for renewal, the complainant should also provide proof of application for renewal. [36]
(b) Processing by AIC
The local AIC is responsible for handling trademark dispute after receiving the complaint and will make a decision whether accept the complaint with in 7 days. If the AIC accepts the complaint, the dispute should be handled within 90 days and inform the trademark owner or any interested party the result of the dispute. [37]
(c) Dissatisfaction with AIC Decision
?Instituting administrative reconsideration
Where any interested party is dissatisfied with the administrative judgment decision, he or she may, within 15 days from receiving the receipt of the decision notification, apply to the local AIC at a higher level for reconsideration of the decision. In this case, the interested party should submit a written appeal for reconsideration.
The higher AIC should decide within 10 days whether to handle the case. If positive, a decision on the reconsideration should be made within two months from receiving the receipt of the application for reconsideration. If the interested party is dissatisfied with the decision on the reconsideration, he or she may, within 15 days from receiving the receipt of the decision notification, institute administrative proceedings with the people's court.
?Instituting administrative lawsuit proceedings
Where any interested party is dissatisfied with the administrative punishment decision made by the AIC, he or she may, within three months from receiving the receipt of the notification of the decision, institute administrative proceedings with the people's court in the place where the AIC is located. If no proceedings are instituted and the decision is not executed at the expiration of the specified period, the AIC may request the people's court for compulsory execution thereof.
Upon the request of the complainant, the AIC may seal, seize and preserve the evidence or products of infringement, and AIC may request the complainant to provide the corresponding deposit according to law.
If, in the process of investigation of infringement cases, some infringement cases are serious and meet the threshold criteria fro constituting crime, the AIC should transfer this case to the security judicial department for further investigation. [38]
Beside the actions which bring by the complainant, the regional AIC also can take action or investigate initiatively if the officials have the indication of trademark infringement.
Since China entered WTO in 2001, the different regional AIC has handled more than 200,000 cases against trademark infringement and 15% of these cases were foreigner trademark cases. [39]
During the administrative procedure, the dispute could be resolved quicker than the judicial procedure and the cost is lower also. Disadvantages of the administrative procedure might be: the trademark owners or interested party cold not receive compensation for IPR infringement as a result of administrative adjudication; sometimes local AIC refuse to investigate the infringement conduct due to local protectionism; and fines are too low to put the infringer out of business or deter future criminal activity.
B.Illustrative examples
Trade Name Infringement by Guangzhou Estee Lauder Cosmetics Ltd.
In March 2004, the American Estee Lauder corporation complain to the Guangzhou AIC against Guangzhou Estee Lauder Cosmetics Ltd., which was a private enterprise registered in Guangzhou in August 2000. the business of this company was cosmetics, beauty and hair care products. Guangzhou Estee Lauder Cosmetics Ltd. used “Estee Lauder” as the main part of its trade name, and made identical or similar products. Pursuant to relevant provisions of the Regulations on the Administration of Enterprise Name Registration and the Implementing Measures on the Administration of Enterprise Name Registration, the Guangzhou AIC ordered the accused enterprise to change its name, to delete the words of “Estee Lauder” from its product labels and promotional materials, and not to replace them with any similar Chinese names. Meanwhile, according to the Implementing Rules of the Trademark Law of the People's Republic of China, the company was fined of RMB 200,000 (30,000USD). Prior to this decision, the company actually had received administrative penalties for being suspected of counterfeiting the products of Estee Laude many times. [40]
Chongqing AIC Seizes Counterfeit Goods in Four Famous Hotels
In June 2007, the Chongqing AIC investigated the shopping centers in four famous hotels and seized total of 637 pieces of counterfeit goods. According to the complaint, the Chongqing AIC inspected the shopping centers in four famous hotels in Chongqing, including the Continental Grand Hotel and Yutong Hotel. Many goods of world-famous brands were sold in the shopping centers; however, the shopping centers could not provide evidence for legitimate sources or customs entry of the goods. Thus the officials detained the goods that were suspected of trademark infringement. The infringing goods included clothes, leather products, watches and glasses, involving the well-known brands like Dunhill, Aquascutum, OMEGA and Christian Dior.[41]
C. Others administrative bodies:
Ministry of Public Security has the specific department for enforcing the criminal cases related economic crime. Some trademark infringement cases will be investigated by the local Public Security and if the Public Security department make a decision that the trademark infringement case commit crime and this case will be transferred to the people’s procuratorate for prosecuting. [42]
Administration of Quality Supervision Inspection and Quarantine Office (AQSIQ) also has the authority for seizing and forfeiting the manufacturer for the bad quality products. AQSIA can take strong measures against counterfeit products and poor quality products from the source of production, especially for the products: foods; building materials such as irons, steels, cements; electrical equipments; spare parts of automobiles; products for agriculture production such as chemical fertilizers, farm chemicals, farm machines.
AQSIA also combats the fabricating or unlawfully using the names and addresses of other producers, especially of famous brand names, fabricating and unlawfully using others’ product quality marks, the content of label not complying with the standard and infringing others’ intelligence property right by using OEM services [43]
D. The administrative agencies in US
Within the US Government, besides the USPTO, the following substantive intellectual property, trade and enforcement agencies all play a role in domestic and international trademark enforcement activities. [44]
The US Department of Justice enforces and supervises the application of all US federal criminal laws, including those dealing with intellectual property rights. Further, the US Department of Justice provides assistance in coordinating international as well as federal, state, and local law enforcement matters. The function of DOJ is like Ministry of Public Security of China.
The U. S. Customs Service is responsible for combating the import infringing goods into the United States. It has statutory authority to decide substantive issues of trademark and copyright infringement, and also works with the US Department of Justice and the Federal Bureau of Investigation on domestic intellectual property matters. The function is like the Custom Protection in China.
The Office of the US Trade Representative is responsible for developing and coordinating US international trade, commodity and direct investment policy and leads negotiations with other countries in these matters. It also provides trade policy leadership and negotiating expertise in its major areas of responsibility including matters relating to trade-related intellectual property protection. [45]
The US Department of Commerce provides practical information, including information relating to intellectual property protection to help US businesses select domestic and international markets for their products. This agency also monitors, investigates and evaluates foreign compliance with more than 200 recent trade agreements, including TRIPS, the trade-related agreement on intellectual property. [46]
The US International Trade Commission conducts the investigations based on the Tariff Act section 337 for the import act. If ITC finds out the import party has the infringement conduct. ITC will issue the exclusion order for the infrigner and the order will be executed by the Custom and Border Service. [47]
Beside the U.S Department of Justice and Custom and Border Service have the statutory authority to enforce the trademark infringement, others administrative agencies does not have the authority to seal, seize or forfeit the infringer. This is the different from the AIC of China.
Ⅳ Custom protection
A.Custom protection in China
Chinese Customs play an important role in intellectual property protection. Pursuant to the Regulations of the People’s Republic of China Customs Protection of Intellectual Property Rights [48], the owner of an intellectual property can not only stop importation of infringing products, but also prevent exportation of infringing products. The Customs Intellectual Property Protection Regulation stipulates in Article 3: “The State prohibits the importation and exportation of goods which infringe intellectual property rights. The Customs provides protection for intellectual property rights in accordance with the provisions of relevant laws and these Regulations and exercises relevant powers under the Customs Law of the People’s Republic of China.” Those powers are entitled by China Customs Law mainly include the right to detain, check, examine, investigate, and confiscate and dispose the infringing goods. [49] Customs played an effective and important role for prohibiting the counterfeit products from importation and exportation. Since 2003, the Customs had handled up to 7,000 infringement cases valued at up to 6,000 million Yuan in total. [50]
Pursuant to the Chapter 2 of Customs Intellectual Property Protection Regulation, owner of intellectual property rights may apply for recordation with the General Administration of Customs. The owner of the IP right should file, together with the application, certain information and evidence regarding the IP right. [51] Once the recordation is successful, the different regional Customs will examine the shipment of importation and exportation. If the Custom suspects that shipment goods might be infringing an intellectual property right on record, the Custom shall immediately notify the owner of intellectual property right in record or their representative. The owner then shall have the option to file within three working days an application to detain the goods or let the goods go. If the owner files such application and posts the required deposit, the Custom may detain the suspected infringing goods with notice to the consignee or consignor. [52]
If the trademark owner made a recordation in the General Administration of Customs, the regional Customs will initiatively watch the infringement products of importation and exportation. If the trademark owner does not make this kind of recordation, under Article 12 of the Customs Intellectual Property Protection Regulation, the owner has the right to apply to the relevant Customs to detain suspected infringing goods if he discovers that the suspected infringing goods are about to be imported or exported [53] and Article 13 provides for the procedure for such kind of applications. [54]
Once the imported or exported infringing goods are detained by the Customs, the Customs will begin to investigate this case and inform the result to the trademark owner once they have a decision within 30 days. [55] Once the Customs recognize that the goods are unlawful products, the Custom will forfeit the infringing products. [56] In some instances, the Customs shall provide assistance upon the receipt of a notification from the people’s court for assistance in execution of an order to cease an infringing act or for preservation of property. [57] The trademark owner has also can commence infringement litigation in a court of appropriate jurisdiction. If the consignor or consignee of the goods believes that the goods do not infringe the intellectual property right, he has the option to apply for the release of the goods after posting deposit equivalent to the value of such goods. [58]
But it seems that most of the trademark owners do not realize the significant function of the Customs protection of enforcing trademark right for imports and exports infringement products. There are about only 5,900 valid trademark recordation in China Custom now, [59] comparing with more than 2 million valid trademark registrations in China, the recordation in China custom is such a small percent. Actually, the custom protection is effective measure for protect trademark right. There was a South Korean corporation sold the Space Heater with the trademark KERONA in Middle East of Asia and found that some counterfeiting products shipped from China. But they could not find out where the manufacture was located. This company came to us for assistant. I suggest them to make the custom record for the trademark since they already registered their trademark in China. This company followed my suggestion and made the recordation in the General Administration of Customs. Only one month later, one regional custom office informed this Company that suspected some exported Space Heater might violate the KERONA trademark right. And then they found out who is the infringer.
B. Customs Protection in US
U.S Custom and Border Protection (CBP) has the authority power to target, intercept, detain, seize and forfeit shipments of unlawful goods which violate the Intellectual Property right in US. [60] The CBP enforcement goals can be accomplished through the cooperative efforts of the trained enforcement officers, other government agencies, and the trade community. The first step in obtaining IPR protection by CBP is to make recordation validly registered trademarks with CBP like in China Custom. CBP uses this recordation information to monitor shipments and prevent the importation of infringing goods. Those who suspect "criminal" violations of IPR may report their allegations to criminal investigators at the National Intellectual Property Rights Coordination Center (IPR Center) of the Bureau of Immigration and Customs Enforcement (ICE). [61]
Section 337 investigations, which are conducted pursuant to 19 U.S.C. § 1337 and the Administrative Procedure Act, include trial proceedings before administrative law judges and review by the Commission. [62] Section 337 investigations conducted by the U.S. International Trade Commission most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods. Both utility and design patents, as well as registered and common law trademarks, may be asserted in these investigations. The primary remedy available in Section 337 investigations is an exclusion order that directs Customs to stop infringing imports from entering the United States.
In the recent years, more and more Chinese corporations become the targets of trademark owners in US. The amount is increasing promptly and there are more than 15 corporations were sue in January and February of 2008. [63]
Ⅴ Civil law Protection
A.Civil Action protection in China
Civil Law protection for trademark infringement is the main measure for trademark owners to get the relief in China. Since 2001 to 2007, the China Courts had judged 74,200 cases related with intellectual property, with 10,743 trademark cases involved. The average annual increase is about 22.92%. In 2007, the courts had judged 17,385 intellectual property cases that were involved 668 foreign IP rights cases. ?The YAMAHA company, a Japanese corporation won the highest damage ever awarded to a foreign company for trademark infringement in China in 2007 and the compensation reached ￥8,300,440.43（about $1,185,777.20）[64]. The largest domestic compensation were ￥ 10,610,000 (about $1,515,714) in 2006. I also represented a Beijing company against the famous Japanese corporation (HITACHI) involved a reverse infringement case in 2006 and the case was settled by negotiation at last and HITACHI compensated about $1 million to the Beijing Company. So the trademark infringement compensation is increasing in the recent years.
1. The jurisdiction of court for trademark infringement case.
Under China current judicial system, intermediate people's courts are courts of first instance for trademark infringement cases. With the approval of the Supreme People's Court, the High People's courts of different province, autonomous and municipality can, based on the actual circumstances in the districts under their respective jurisdiction, assign people's courts at lower levels to handle first hearings of civil cases involving copyright disputes. [65]
The statute also stipulates the territorial jurisdiction that civil litigations instituted for acts of infringing the exclusive right to the use of registered trademark shall be put under the jurisdiction of the courts at the places where the infringement acts happen, or people’s courts at the places where infringement products are stored up, or local Customs and administrations of industry and commerce seal up and detain infringement products according to the law shall also have the jurisdiction. Naturally, people’s courts at the place of domicile of the defendants enjoy jurisdiction as well. [66]
2. Constitute Trademark Infringements
In accordance with the Article 52 of the Trademark Law, as supplemented by Article 50 of the Trademark Law’s Implementing Regulations, the following acts are considered trademark infringement:
?Using a mark which is the same as or similar to a registered trademark on the same or similar goods without the authorization of the registered trademark owner;
?Selling the products that violate the exclusive right to use a registered trademark without the authorization;
?Counterfeiting or fabricating without authorization a mark or a symbol that is part of a registered trademark of another person, or selling marks or symbols that have been made or fabricated without authorization;
?Changing a registered trademark without the authorization of the registered owner and putting into the market with the modified mark;
?Use of identical or similar of a registered trademark in or on connection with identical or similar goods as products name of trade dress to mislead others;
?Causing harm in other respects to the registered trademark holder’s right to exclusive use
?Providing transport, storage, mailing, hiding or other conveniences in order to facilitate others in the infringement of the exclusive rights of a registered trademark holder [67]
3. Pre-trial preliminary Injunction
When the trademark owner or any interested party files a trademark infringement litigation in the relevant People’ Court, if the trademark owner or an interested party finds that due to emergency circumstances any delay to stop the infringing act may cause irreparable damages to his legitimate rights, he may, before instituting legal proceedings, request the people's court to freeze the assets of the infringer or stop infringing. [68] It is called “pre-trial” injunction and preservation of evidence. It is added to China’s Trademark Law in the last revision in 2001 in compliance with Article 50 of TRIPS. [69]
In order to get a preliminary injunction, the applicant, usually it is plaintiff, should provide sufficient evidence that is likely to cause irreparable harm, such as harm of reputation, erosion of market share, etc. The applicant also must provide a deposit for guaranty or assets at a value sufficient to cover the possible damage suffered by the defendant. If the preliminary injunction will not harm the public interest, the People’s Court will grant the preliminary injunction. When the respondent is facing greater damages than that originally contemplated by court in granting the preliminary injunction, the court can increase the deposit amount. If the applicant fail to file a litigation or lose the case and such injunction injure the respondent, usually it is defendant, applicant should use the deposit or assets to compensate also the injury that the respondent suffered including direct damages and indirect damages, such as lost sale revenues, warehouse charges incurred, consequential damages for breaching contracts, etc. If the applicant fails to post sufficient amount of deposit as ordered by the court, the injunction should be rejected. Any party not satisfied with any order in relation to the grant or denial of an injunction may move for reconsideration within ten days of the order. [70]
According to Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation, the People’s Court accepting an application for pre-litigation injunction should make a ruling in writing within 48 hours and that once an orders is entered, it must be executed without delay. The court must also promptly notify the party against whom the application is filed within 5 days after the order is entered.
Some issues should be attention here: 1) there is no hearing during the injunction procedure; 2) This procedure is not limited to pre-trail injunction applications. It can also be used for injunctions applications filed after the litigation commences or during the litigation, [71], 3) once the injunction is issued, the applicant must commence the litigation within 15 days; or the injunction shall be dismissed. [72] and 4) the statistics show that the rat of granting the injunction in the intellectual property cases are high, about 76.92% in 2007. [73]
4. Pre-litigation Evidence Preservation
If the plaintiff found that the evidence will possibly be destroyed or lost or difficult to be obtained again in the future, he or she can file an application with the People's Court for preservation of the evidence before instituting legal proceedings. The applications for evidence preservation shall submit in written form including the requirement information and the sufficient evidence. [74]
When an applicant's application for pre-trial evidence preservation is likely to involve property loss to the respondent, the People's Court may order the applicant to provide guaranty accordingly. Once the applicant does not provide the guaranty, the application shall be rejected. If a trademark registrant or any interested party does not institute legal proceedings within fifteen days after the People's Court adopts the measure to suspend the relevant act or to preserve evidence, the People's Court shall cancel the measure adopted pursuant to the adjudication. [75] The People’s Court approved 87.1% of the all pre-trail evidence preservation in 2007[76]
5. Pre-trail property preservation
Where a trademark owner or any interested party who has evidence to show that infringer is committing or will commit an infringement of the right to use its or his registered trademark, and that failure to promptly stop the infringement will cause irreparable damages to its or his legitimate rights and interests, he or she may, before instituting legal proceedings, apply to the people's court for measures to preserve the infringer’s assets. The applicant should provide sufficient evidence that the infringer will transfer the assets. The applicant must provide deposit for guaranty, if he or she fails to do so, the application shall be rejected. Property preservation shall be limited to the scope of the claims or to the property relevant to the case. After receiving an application, the people's court must make an order within 48 hours; if the court orders the adoption of property preservation measures, the execution will effect immediately. If the applicant fails to pursue an action within 15 days after the people's court has adopted the preservation measures, the people's court shall dismiss the property preservation. If an application for property preservation is wrongfully made, the applicant shall compensate the person against whom the application is made for any damages incurred from property preservation. If the party concerned is not satisfied with the order made on property preservation or execution, he or she may apply for reconsideration. Execution of the order shall not be suspended during the time of reconsideration. [77] The People’s Court approved 98.1% of the all pre-trail evidence preservation in 2007. [78]
6. Evidences should be submitted during the trademark infringement case
During the civil litigation, the plaintiff should provide sufficient evidences, such as the legitimate rights evidences, the evidences for the infringement actions, the compensation evidences. Since there is no discovery procedure in the trail in China, so it is very important for plaintiff to collect enough evidences before processing the litigation.
1). The following evidences that can prove that authority of trademark right or the right of using trademark by license, should be submitted by the plaintiff, such as trademark registered certificate, licensing contract;
2). The plaintiff shall also submit the evidences of infringement to prove that the defendant has implemented the acts of infringing trademark right or is in process of implementing the infringing acts, such as the infringement goods, advertisement, testimony, punishment decision made by AIC or Custom, etc.
3) The plaintiff shall also submit the evidence for compensation, such as the profit that the infringer, the injury that the plaintiff has suffered from the infringement, the cost and attorney’s fee.
According to Article 56 of Trademark Law of the People's Republic of China, the amount of damages shall be the profit that the infringer has earned because of the infringement in the period of the infringement or the injury that the plaintiff has suffered from the infringement in the period of the infringement, including the appropriate expenses of the plaintiff for stopping the infringement. Where it is difficult to determine the profit that the infringer has earned from the infringement in the period of the infringement or the injury that the plaintiff has suffered from the infringement in the period of the infringement, the People's Court shall impose an amount of damages of no more than RMB 500, 000 Yuan (about $ 70.000) according to the circumstances of the infringement. [79]
When a People's Court is determining the measure of damages, it should make an overall determination having considered factors such as the nature, the period and the consequences of the infringement, the reputation of the trademark, the amount of trademark licensing royalties, the types, periods and scope of trademark licenses for the mark, the reasonable expenses incurred in stopping the infringement, etc.
All the evidences should be original or notarized by the Notary and only copied documents might not be accepted by the people’s court. If the evidences are formed outside of Mainland, the evidence should be notarized and legalized up to the local Embassy or Consulate of the People’s Republic of China. If the material is foreign languages and it should be translated into Chinese by verified translation agencies. [80]
6.Statutory limitation of the trademark cases
If a trademark owner or any interested party brings a suit after more than 2 years of the infringing action, if the infringing act is still continuing at the time the suit is brought and the exclusive rights to use the registered trademark are still in the period of validity, then the People's Court should accept the litigation and issue judgment for the plaintiff. The measure of damages for the infringement should be calculated back 2 years from the date when the plaintiff brings the lawsuit. [81]
Anyone who sells the infringing goods with innocence and he or she can prove that the accused goods are delivered by legitimate channel and indicates the supplier, he or she will not be liable for damages, but should cease to sell the infringing products immediately. [82]
7. The duration and execution of the trademark cases
Normally, the first-instance of trademark litigation will last about 6 months, but for some complex cases, they might be longer. If the interested parties do not make an appeal after a trial at the court of first instance, the verdict will come into force.
If any of the parties concerned are not satisfied with the judgment, he or she may appeal to the higher-level People’s Court, that is the court of second-instance and it normally lasts 3 months. The parties could not appeal after this trial. Only few of the cases, the Supreme Court can grant certiorari for re-trial. The frustrated party must execute the judgment with legal validity. If he or she refuses to do so, the prevailed parties may apply to the People’s Court for compulsory execution.
8.Illustrative cases
The following cases reveal different region of the protection by the People’s Court in China.
1). Starbucks Corporation vs. Shanghai Xingbake Cafe Co. Ltd. for trademark infringement and unfair competition (trade name protection)
Starbucks Corporation registered in China “STARBUCKS”, characters and figures of “STARBUCKS” and “星巴克” ( “STARBUCKS” in Chinese) from 1996 to 2003.
Shanghai Xingbake Cafe CO. Ltd. was set up in Shanghai in 2000 and was named the corporation as “星巴克” and used the trademark the same as or similar to the registered trademarks above.
Starbucks Corporation sued Shanghai Xingbake Cafe Co. Ltd. for trademark infringement and unfair competition.
Shanghai No.2 Intermediate Court held that “STARBUCKS”、“星巴克” spread rapidly and has been well-known by the public in the mainland, and they ( “STARBUCKS” and “星巴克”) should be regarded as well-known trademarks. Shanghai Xingbake Cafe Co. Ltd. registered character “星巴克” as the company's name was in a bad faith. Shanghai Xingbake 's conductsas using trademarks the same as and similar to the registered trademarks have infringed Starbucks Corporation legitimate right of the registered well-known trademarks and also constitute an unfair competition to the Starbucks Corporation.
So the court made the judgment requiring Shanghai Xingbake to stop trademark infringement and unfair competition, change companies' name, and compensate Starbucks Corporation RMB 500, 000 (70,000 USD) damage. Shanghai Higher Court affirmed this case. [83]
2). Five Companies vs. Silk Market for trademark infringement (landlord responsibility)
Burberry, Chanel, Gucci, Prada and Louis Vuitton brought a successful lawsuit against not only the sellers of five stalls selling counterfeit goods, but also the landlord which provide the space for the sellers in 2006. The plaintiffs claimed that no action was taken to stop the stall owners from selling counterfeit goods and the landlord also was aware the infringing conducts. The Court ordered the market owner as well as the five stall sellers to pay, approximately, US$50,000 in damages and to cease selling counterfeit goods. [84]
3). Bonneterie Cevenole SARL vs. Guangdong XINKEDE Ceramic Tile Co. Ltd. (Fashion v. Ceramic tile, irrelevant products)
Plaintiff, Bonneterie Cevenole SARL is a French fashion corporation and owns the series trademarks “MONTAGUT” and “夢(mèng)特嬌” which are well-known in China.
The defendant, Guangdong XINKEDE Ceramic Tile Ltd. Company sold ceramic tile. Defendant used the trademark Montagut and Chinese character of the plaintiff on the ceramic tile products. Plaintiff sued defendant in 2006 and the court held for Plaintiff and issued the permanent injunction to defendant. The defendant also should compensate about USD70,000 damages to Plaintiff. The defendant was a middle size company, but impacted by this case, the defendant was bankruptcy several months later after the issuing the judgment.[85]
B. Civil litigation in US for trademark enforcement
According to 15 U.S.C§1121. (a) The district and territorial courts of the United States shall have original jurisdiction, [and] the courts of appeal of the United States (other than the United States Court of Appeals for the Federal Circuit) [and the United States Court of Appeals for the District of Columbia] shall have appellate jurisdiction, of all actions arising under this Act, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties. Federal court and state court both should have the jurisdiction for trademark infringement cases in United States. Most of the cases go to the federal. [86]
Any one without authorization by the trademark owner attempting to use an identical or similar mark on or in the connection of the same or similar goods or service which cases likelihood of confusion may give rise an infringement claim by the trademark owner. 15 U.S.C§1114. (1) (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. [87]
Likelihood of confusion is the central requirement in actions both at common law and under the federal trademark statue. [88] Which means that the trademark owner should prove that the unauthorized use will be confuse, mislead, or deceive the consumer regarding the source of the goods or services, or affiliation, or sponsorship. Only likelihood confusion be proved and do not need to prove the actual confusion. Each federal circuit has the criterion for determining the likelihood of confusion, but the essence should be the same. The second circuit’s version which set forth in Polaroid Corp V. Polarad Electronics Corp., (287 F.2d 492) might be the most comprehensive and the most popular used:
1.Strength of plaintiff’s mark;
2.The degree of similarity of the marks;
3.the proximity of the products or services in the market place;
4.the likelihood that the plaintiff will bridge the gap;
5.evidence of actual confusion;
6.Defendant’s good faith in adopting the mark;
7. The quality of the defendant’s product or service; and
8. The sophistication of the buyers.
Identical use in China is per se infringement and plaintiff does not need to prove the confusion. But US require the plaintiff to prove the likelihood confusion.
Most of the plaintiffs want to stop the infringing act during the litigation, so the injunctive relief should be important measures for stop the infringer to continue infringing. Pursuant to 15 U.S.C §1116. (a) The several courts vested with jurisdiction of civil actions arising under this Act shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section.[89] Injunction must be applied with careful consideration to the circumstances and facts at issue in a particular case. [90] It seems that injunctive relief is more cautious in US than in China.
Damages in a trademark infringement cases include various types of monetary recovery available upon a finding of infringement. It can be defendant’s profits, plaintiff’s lost profits, punitive damages, costs and attorney’s fees. If the defendant willfully infringes the plaintiff trademark rights, the monetary damages may be three times of profits or damages. Once the defendant involved the use of a counterfeit mark, the plaintiff may elect to recover, instead of actual damages and profits, an award of statutory damages. If the court finds that the use of the counterfeit mark was willful, not more than $ 1,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. [91]
C. Comparison the civil litigation between China and US
Civil protection plays very important role for protecting the trademark infringement both in China and US. There are some distinctions between to countries.
1).There is no discovery procedure in China litigation instead of evidence preservation, the collective evidences is important step for processing litigation.
2).Likelihood of confusion is the test of trademark infringement in US, even for the identical use. But in China, it is per se illegal if infringer used the identical trademark in the same goods, only related with the similar mark, the court will require the likelihood of confusion.
3).There is no dilution provision in the China trademark law, but the well-known trademark provision can provide similar protection, like MONTAGUT Case.
4).There is no anti-cybersquatting protection in the trademark law of China. There is an interpretation by the Supreme Court. This kind of case will pertain into well-know trademark protection.
5).The statutory damage is much higher in US than in China. The maximum damage can be $1, 000,000 for intentional infringement of counterfeit. It is only $70,000 in China.
6) Due to the different of legal system, precedents could not be the authority used by the China court, the Court should judge the case based on the statute, regulations and interpretation by the Supreme Court.
In China, the court will balance the circumstance and try to make up the lost of the plaintiff, if the defendant earns $1000 from the infringement, he or she should give $1000 to the plaintiff. But in US, the damage includes some punitive factors (although the statute say it is not). If the defendant earns $1000 from the infringement, he or she should give $3000 to the plaintiff. So the China’s Trademark Law should use this punitive concept to deter the infringer.
Ⅵ Criminal Law Protection for Trademark Infringement
A. Criminal Law Protection in China
In some circumstances, where counterfeiting trademark infringement is "serious," the case might be transferred to the Public Security Bureau for investigation by the AIC, Courts or other agencies and then infringer might be prosecuted by the procuratorate. The criteria for determining what kind of circumstance could be serious enough to constitute crime was stipulated by the Supreme People’s Court and the Supreme People’s Procuratorate promulgated the Interpretation on several issues regarding the Application of Laws in Handling Criminal Cases of Infringement on Intellectual Property Rights, which came into effect on December 21, 2004.
As to counterfeiting registered trademarks of others, in accordance with the Article 213 in Criminal Law of the People's Republic of China, “whoever uses a trademark identical with another person's registered trademark on the same kind of goods without permission from the owner of the registered trademark shall, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years or criminal detention, and concurrently or independently be sentenced to a fine. If the circumstances are especially serious, the offender shall be sentenced to fixed-term imprisonment of not less than three years and not more than seven years, and concurrently be sentenced to a fine.” [92]
As to sale of counterfeit trademark goods, according to Article 214 “whoever knowingly sells goods bearing counterfeited registered trademarks shall, if the sum obtained through sale is relatively huge, be sentenced to fixed-term imprisonment of not more than three years or criminal detention, and concurrently or independently be sentenced to a fine. If the sum obtained through sale is huge, the offender shall be sentenced to fixed-term imprisonment of not less than three years and not more than seven years, and concurrently be sentenced to a fine.” [93]
As to illegal manufacture, sale of illicitly manufactured logo of registered trademark, according to Article 215, “whoever forges or makes without authorization representations of registered trademarks of another person or sells representations of registered trademarks which are forged or made without authorization shall, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years, criminal detention or public surveillance, and concurrently or independently be sentenced to a fine. If the circumstances are especially serious, the offender shall be sentenced to fixed-term imprisonment of not less than three years and not more than seven years, and concurrently be sentenced to a fine”
For specifying the circumstances of above statutes, the Supreme People’s Court and the Supreme People’s Procuratorate promulgated the Interpretation on several issues regarding the Application of Laws in Handling Criminal Cases of Infringement on Intellectual Property Rights (Interpretation), which stipulates the criteria for constituting a rime for counterfeiting trademark infringement. Since the interpretation is so specific for calculating the value of counterfeiting products or the amount of the counterfeiting symbol, I would not list all of the detail and just figure out some of the stipulation. For instance, if the infringer uses a trademark which is identical or basically the same in vision with the registered trademark in respect of the same goods, sufficient to mislead the public, and if the amount of illegal business value is over 50,000 yuan, or the amount of illegal income is over 30,000 yuan, if he/she counterfeits two or more registered trademarks with an illegal business value of over 30,000 or an illegal income of over 20,000 yuan, or if there are other especially serious circumstances, constitute the crime of counterfeiting registered trademark, shall be sentenced to fixed-term imprisonment of not more than three years or criminal detention and shall also, or shall only, be fined. Once the mount of illegal business value of or above 250,000 yuan or the amount of illegal income of or above 150,000 yuan or uses two or more trademarks without authorization of the owner of the registered trademark valued at over 150,000 yuan in terms of business operation or over 100,000 yuan in terms of illegal gains, or if there are other especially serious circumstances, shall be sentenced to fixed-term imprisonment of no less than three years but not more than seven years and shall also be fined. [94]
In accordance with the Article 16 of the Interpretation, “those, who are aware of other's IPR infringing acts, but still offer loans, capital, account number, invoice, certification or license, or provide production and operation places, or offer convenience for storage, transportation, import and export agencies, should be sentenced as complicity of IPR crimes.” [95] Since most of the counterfeiting infringement do not operate by one person or on company, in most circumstance, they formed a network or a whole chain from raw material purchase, equipment setting, capital support, transportation, warehousing, and marketing, this stipulation try to enforce firmly for this kind of complicity crime
In addition, the criminal procedure will not affect the civil procedure protection, which mean that even the infringer is prosecuted and is imprisoned. The trademark owner who is infringed should also have right to claim the compensation. In case that the court find out the alleged case constitutes crime, may invoke the Public Security Bureau for investigation.
There are some points should be figured out that only the counterfeiting action can constitute crime which mean that the infringer uses the accused trademark which should be identical or basically the same in vision with the registered trademark in respect of the same goods, sufficient to mislead the public, and the counterfeiting value or amount should meet the threshold line. Trademark similar use either identical trademark used on similar goods or similar mark used on the same goods could not constitute trademark infringement crime. The Criminal Law of China does not expressly stipulate the service trademark infringement. The commentators still have controversies whether identical use on the same service could constitute criminal action. The Supreme People’s Court and the Supreme People’s Procuratorate do not say anything on this issue.
The statistics show that the court judged 2,684 criminal cases related Intellectual Property infringement in 2007 and 4,322 people were imprisoned due to infringing Intellectual property conducts. [96]
B.Criminal protection in US
Counterfeiting infringement is felony in US and the punishment is server. The maximum fine can be $15,000,000 and imprisonment can be 20 years for the person who constitutes counterfeiting infringement. Pursuant to 18 U.S.C.§ 2320 (a) Whoever intentionally traffics or attempts to traffic in goods or services and knowingly uses a counterfeit mark on or in connection with such goods or services shall, if an individual, be fined not more than $2,000,000 or imprisoned not more than 10 years, or both, and, if a person other than an individual, be fined not more than $5,000,000. In the case of an offense by a person under this section that occurs after that person is convicted of another offense under this section, the person convicted, if an individual, shall be fined not more than $5,000,000 or imprisoned not more than 20 years, or both, and if other than an individual, shall be fined not more than $15,000,000. [97]
There is also no especial limitation for commit crime, if there is evidence for intentionally counterfeiting, infringer can be prosecuted in US.
Comparing the criminal procedure in US and in China, we can find out that the penalty for counterfeiting goods or service in US are more severe than in China. The imprisonment in china is no more than 7 years, but in US it is no more than 20years and no specific provision for fine in China, but the fine can be $15,000,000 in US. In order to deter the infringer, I agree that more severe measures should be applied in China.
Ⅶ. Conclusion
From the comparison, we can come the conclusion, trademark enforcement in China can be “effective and prompt” by administrative procedures, Custom protection and civil action, but should be enforced firmly in the region of criminal protection.
The specification is following.
1.China provides several procedures for trademark protection, the prerequisite is that the person who want to protect his or her trademark right should register trademark rights first in China;
2.The regional AIC can provide the prompt protection for trademark infringement, but could not deter the infringing conduct effectively sometimes;
3.Custom can provide the effective protection for imported and exported products, trademark owner should utilize this protection actively;
4.China court can provide comprehensive protection for trademark owner, especial for well-known trademark owner;
5.Statute damage in the trademark law should be enhanced and the compensation should be increased when the court judge the case;
6.China especially should enforce the criminal law related the counterfeiting and enhance the duration for the imprisonment and the amount of the fine. Only the more severe instrumentalities might deter the infringer.
The Chinese government just unveiled the Outline of National Intellectual Property Rights -- a new strategy to tackle the many issues surrounding IPR. This new strategy will improve IPR protection in China and attract greater intellectual resources from abroad. [98]. It is the high time for the foreigner corporations to protect their IP in China. If you have IP right in China, you will have high opportunity to protect it. If you don’t have, you could not do any thing about your IP. Meanwhile, IP right enforcement circumstances are changing better and better. We believe that strength of the enforcement can quite meet the international criteria, if you want to know it, you should come closely.
FOOTNOTE:
[1] INTA: International Trademark Association;
[2] AIPPI: International Association for the Protection of Intellectual Property;
[3] The current IP framework was established begin 1980’s. The People’s Republic of China
Trademark Law was enacted on August 23, 1982; The People’s Republic of China Patent Law was enacted on March 12, 1984; The People’s Republic of China Copyright Law was enacted on September 7, 1990;
[4] “China Trademark Laws - Simple and Effective” by Dan Harris http://www.chinalawblog.com/2007/12/china_trademark_law_simple_and.html
[5] The People’s Republic of China Trademark Law was revised respectively on February 22, 1993 and October 27, 2001;
[6] 1993 reversion Trademark Law Article 4;
[7] 2001 reversion Trademark Law Article 8, 13 and 14;
[8] "Agreement on Trade-related Aspects of Intellectual Property Rights." is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.
[9] "Regulations for the Implementation of the Trademark Law" was enacted March 10, 1983;
[10]"Provisions on the Recognition and Protection of well-known Trademarks" was enacted on June 1, 2003;
[11]"Procedures for the Management and Registration of Collective Trademarks and Certification Trademarks" was enacted on June 1, 2003
[12]"Procedures for the Implementation of Madrid Agreement for the International Registration of Trademarks" was enacted on June 1, 2003;
[13] See the PRC Trademark Law Article 4;
[14] See the PRC Trademark Law Article 13: Article 13. A trademark shall not be registered and its use shall be prohibited where the trademark constitutes a reproduction, an imitation, or a translation, of a well-known trademark of another person not registered in China and is likely to create confusion, if the trademark is the subject of an application for registration in respect of goods which are identical or similar to the goods to which the well-known trademark applies.
A trademark shall not be registered and its use shall be prohibited where the trademark constitutes a reproduction, an imitation, or a translation, of a well-known trademark of another person already registered in China and is likely to mislead the public and damage the interests of the owner of the registered well-known trademark, if the trademark is the subject of an application for registration in respect of goods which are not identical or similar to the goods to which the well-known trademark applies.
[15] “The regulations of using trademark on Tobacco” was enacted August 23, 1996.
[16] http://sbj.saic.gov.cn/tjxx/TJTableLNSBTJ.asp?BM=09;
[17] http://www.chinaiprlaw.cn/file/2008031812792.html
[18] China is a member of Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (since 2001), Madrid Agreement and protocol Concerning the International Registration of Marks (since 1989)
[19] See 15 U.S.C. §1141
[20] See The Foundations of Intellectual Property by Robert P. Merges and Jane C. Ginsburg P456;
[21] See 15 U.S.C.§1051
[22] See 15 U.S.C.§1070,§1071.
[23] See 15 U.S.C. §1125, “Trademark Dilution Revision Act of 2006”
[24] See 15 U.S.C.§1051
[25] See 15 U.S.C.§1125
[26] United States became the member of Paris Convention for the Protection of Industrial Property in May 30, 1887, the Agreement on Trade-Related Aspect of Intellectual Property Rights (TRIPS) in January 1, 1995 and the Madrid Protocol in November 2, 2003.
From http://www.wipo.int/treaties/en/
[27] China Trademark Law article 8.
[28] China Trademark Law article 8,9,10 and 11.
[29] See 15U.S.C.§1127 (a)
[30] Blue bell v. Farah Manufacturing Co.508 F.2d 1260
[31] See 15 U.S.C.§1127.
[32] See 15 U.S.C. §1062 §1063
[33] See 15 U.S.C.§1058 §1059
[34] See the PRC Trademark Law Article 53
[35] See the PRC Trademark Law Article 55
[36] http://www.saic.gov.cn/sjpdq/sjpd/nsjg/fgs/gzdt/t20070914_23979.htm
[37] Id
[38] Id
[39] Li Dongsheng, the vice minister of SAIC, promulgated to the public in 2007. http://business.sohu.com/20070613/n250539999.shtml
[40] http://english.ipr.gov.cn/ipr/en/info/Article.jsp?a_no=2663&col_no=127&dir=200604
[41] http://english.ipr.gov.cn/ipr/en/info/Article.jsp?a_no=82335&col_no=127&dir=200706
[42] See the PRC Trademark Law Article 54
[43] http://english.aqsiq.gov.cn/AboutAQSIQ/Mission/
[44] http://www.uspto.gov/main/profiles/international.htm
[45] http://www.uspto.gov/web/offices/dcom/olia/globalip/domesticip.htm
[46] Id
[47] Id
[48] Regulations of the People’s Republic of China Customs Protection of Intellectual Property Rights was enacted on December 2, 2003, and effective as of March 1, 2004;
[49] See Regulations of Customs Protection of Intellectual Property Rights article 16;
[50] http://www.customs.gov.cn/
[51] See Regulations of Customs Protection of Intellectual Property Rights article 7;
[52] See Regulations of Customs Protection of Intellectual Property Rights article 12,13 and 14;
[53] See Regulations of Customs Protection of Intellectual Property Rights article 12;
[54] Id. Supra. Article 13 Where requesting the Customs to detain the suspected infringing goods, the holder of the intellectual property right shall present a written application and relevant evidentiary documents, and provide as well any evidence that sufficiently proves the obvious existence of the fact of infringement. An application shall mainly include the following particulars: (1) the business name or name, place of registration or nationality, etc. of the holder of the intellectual property right; (2) the description, contents and any other relevant information relating to the intellectual property right; (3) the business name of the consignee and consignor of the suspected infringing goods; (4) the descriptions, specifications, etc. of the suspected infringing goods; (5) the possible ports, time, means of transport, etc. related to the importation or exportation of the suspected infringing goods.
The application shall include the number of Customs recordation in addition where the goods are suspected to infringe an intellectual property right under recordation.
[55] Id. Supra article 20;
[56] Id. Supra article 27;
[57] Id. Supra article 23;
[58] Id. Supra article 19;
[59] http://202.127.48.151/applyrecord/;
[60] See 19 U.S.C. § 1337;
[61] http://www.cbp.gov/xp/cgov/trade/priority_trade/ipr/
[62] http://www.usitc.gov/trade_remedy/int_prop/index.htm
[63] http://info.usitc.gov/sec/dockets.nsf/337?OpenView
[64] http://www.chinaiprlaw.cn/file/2008031812792.html
[65] Interpretation by the Supreme People's Court of the Issues Relating to Jurisdiction over and Scope of Application of Law to the Hearing of Trademark Cases
[66] See Civil Procedure Law Article 29;
[67] See the Trademark Law Article 52 and the Trademark Law’s Implementing Regulations Article 50;
[68] See Trademark Law, Article 57: Where the owner of a registered trademark or an interested party has evidence indicating that another person is engaged in or will soon engage in an act of infringement of the former's exclusive right to use his registered trademark and that, unless the act is stopped in a timely manner, irreparable injury will be caused to his legitimate rights and interests, he may, before instituting legal proceedings, apply to the people's court for measures prohibiting the act and preserving the latter's assets. The people's court shall apply the provisions in Article 93 to Article 96 and Article 99 of the Civil Procedural Law of the People's Republic of China in handling the application provided in the preceding paragraph.
[69] Id.
[70] Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation
[71] WU Denglou, [The Rule of Injunction related with Intellectual Property]
[72] Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation Article 12.
[73] http://www.chinaiprlaw.cn/file/2008031812792.html
[74] Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation Article 3. (1) the plaintiff and the basic information thereof; (2) specific subject matter and scope of the application; (3) object attestable by the evidence of which preservation is requested; and (4) cause of application, including specific statement that the evidence is like to be destroyed or hard to be obtained afterwards, and the interested party and, moreover, his or its agent ad litem cannot collect evidence on their own for objective reasons.
[75] Trademark Law Article 58
[76] http://www.chinaiprlaw.cn/file/2008031812792.html
[77] The Civil Procedural Law of the People's Republic of China Article 93 to Article 96 and Article 99;
[78] http://www.chinaiprlaw.cn/file/2008031812792.html
[79] See Trademark Law article 56;
[80] The Civil Procedural Law of the People's Republic of China Article 66,67, 68 and 240;
[81] Interpretations of the Supreme People's Court of Several Issues Concerning the Application of the Law to the Trial of Civil Dispute Cases Involving Trademarks Article18: “The statute of limitations for bringing a suit for the infringement of a registered trademark is 2 years, starting from the date that the trademark registrant or a materially interested party knew or should have known about the act of infringement. Where a trademark registrant or a materially interested party brings a suit after more than 2 years, if the infringing act is still continuing at the time the suit is brought and the exclusive rights to use the registered trademark are still in the period of validity, then the People's Court should issue a judgment [ordering] the defendant to stop the infringing act. The measure of damages for the infringement should be calculated by reckoning back 2 years from the date when the rights holder brought the suit before the People's Court.”
[82] See Trademark Law article 56;
[83] See the Judgment of the Starbucks Corporation v. Shanghai Xingbake Cafe Co. Ltd. in Shanghai No2 Intermediate People’s Court.
[84] http://www.chinaiprlaw.cn/file/2007081611833.html
[85] See the Judgment of the Bonneterie Cevenole SARL vs. Guangdong XINKEDE Ceramic Tile Co. Ltd. in Huna Changsha Intermediate People’s Court.
[86] See15 U.S.C§1121
[87] See15 U.S.C§1114
[88] Polaroid Corp. V. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)
[90] ALPO Petfoods V.Ralston Purina Co., 913 F2d 958 (D.C.Cir. 1990)
[91] See15 U.S.C§1114
[92] See Article 213 in Criminal Law of the People's Republic of China;
[93] See Article 214 in Criminal Law of the People's Republic of China;
[94] See Interpretation on several issues regarding the Application of Laws in Handling Criminal Cases of Infringement on Intellectual Property Rights;
[95] Id;
[96] http://www.chinaiprlaw.cn/file/2008031812792.html
[97] See 18 U.S.C.§ 2320
[98] China's IPR Regime, by Mr. Wang Qishan The Wall Street Journal on June 17, 2008
Abstract
This thesis will compare the trademark right enforcement in China with in US and will emphasize on the enforcement procedures in China. The “Dual-track system” for trademark enforcement is special procedure and is different from US trademark enforcement system. This thesis also introduces the border protection that examines both imported and exported products related trademark infringement. After introducing the procedures, some cases analyses were given. From the comparison, the conclusion comes out that the trademark enforcement in China is “effective and prompt” than many foreigner expected in the administrative protection, border protection and civil action protection, but should be enforced firmly in the criminal procedure protection.
Keywords
Trademark enforcement Administrative protection Border protection Civil law protection Criminal law protection
Introduction
I was questioned many times when I participated the international IP conference, like INTA conference [1], AIPPI conference [2]. “Is there any useful for registering IP right in China?”, “ Can my clients’ IP right be protected in China” or “How about the IP enforcement is in China”. When this scenario occurred, I had to tell him or her that China does protect the owner’s IP rights and the circumstances were much better than they expected. “ But the prerequisite is your clients should have the IP rights in China first, they could have chance to be protected”. I once had a client from Europe and it used a trademark “Sunshine” on the products of plugs and electrical outlet and sold the products in Africa with a 70% market share there. A Chinese businessman registered the identical trademark in China and manufactured the same products in China and then exported to Africa to compete with this European Company. Due to the good quality and lower price than European Company’s products, the European company’s market was diminished sharply. This European company could not protect his rights in Africa successfully and came to China for assistant just because the competed company was Chinese Company. The problem is that this European Company did not register the trademark in China and China does not have the jurisdiction at all. If the European Company had trademark right, we can help it to stop this businessman to make and export products out of China based on the Chinese Laws and regulations. But since the European company did not have any right in China, we could not do anything for him. I only had to suggest this European Company to negotiate with the guy, but the negotiation was not successful. This company then complained that Chinese government did not protect foreign IP rights. It is unfair for complaining China on this issue, the problem is this company should have rights first in China and it is the general rule in the world. To be honesty, Chinese government should do more works to complete the IP system and reduce the rampant infringement phenomena. As I know, China IP laws system should be the almost approach the international IP law system. China IP systems only were formed 20 years ago [3] and were completed step by step. Comparing with the patent and copyright enforcement in China, Trademark enforcement should be the best and effective. “Members of the media love to write about China's failure to protect foreign company intellectual property (IP), but those articles can be misleading. These articles often fail to state whether the foreign company actually registered its IP in China at all and they nearly always fail to distinguish between the various types of IP eligible for protection.”[4]. This comment should be reasonable and describes the current situation of trademark protection in China. United States is the most developed country and has the compressive IP system and the trademark right enforcement procedures. I will compare with the differences of trademark enforcement between China and United States and figure out where and how the China trademark enforcement should be amended and become more effective. First, in PartⅠ, I will give an overview of the trademark law system in China and US. Then, in Part Ⅱ, I will address the acquisition trademark right in China and US. Part Ⅲ addresses the administrative procedures for protection in China and US. Part Ⅳcompares the border protection between China and US. Part Ⅴintroduces the civil action protection in China and US, some typical cases will be introduced also. Part Ⅵwill compare the criminal law protection in China and US and figure out that China should enforce the criminal protection in IP regions. Part Ⅶ is conclusion.
Ⅰ.The overview of China and US trademark law system
A.China trademark law system
The current effective trademark law of China was enacted August 23, 1982 and was effective on March 1st 1983. It was revised respectively in February 1993 and in October 2001 [5]. The amendment of 1993 included “service trademarks” in the work of trademark protection [6]. The amendment of 2001 added three-dimensional trademarks and color combination trademarks in the scope of trademark protection and offered greater protection to well-known trademarks [7]. The revised "Trademark Law" also stipulates that the trademark system shall be used to protect geographical marks and judicial examination shall be added for the granting process of trademark rights. This amendment would meet the requirement of WTO's "Agreement on Trade-related Aspects of Intellectual Property Rights."(TRIPS) [8]
In accordance with the provisions of the "Trademark Law", the State Administration for Industry and Commerce (SAIC) formulated or revised several administrative rules and regulations, including the "Regulations for the Implementation of the Trademark Law"[9] "Provisions on the Recognition and Protection of well-known Trademarks"[10]"Procedures for the Management and Registration of Collective Trademarks and Certification Trademarks"[11] and "Procedures for the Implementation of Madrid Agreement for the International Registration of Trademarks" [12].
Currently, the trademark registration system in China is a blend of voluntary and compulsory registration. According to the PRC Trademark Law “Any natural person, legal entity or other organization, intending to acquire the exclusive right to use a trademark for goods produced, manufactured, processed, selected or marketed by him, shall apply for registration of the trademark used on goods to the Trademark Office. Any natural person, legal person or other organization, intending to acquire the exclusive right to use a service mark for services provided by him, shall apply for registration of the service mark to the Trademark Office.
Provisions in this Law concerning trademarks used on goods shall also apply to service marks [13] ”
The PRC Trademark Law Article 6 stipulates “For goods that, as required by the State, must bear a registered trademark, an application for registration of a trademark shall be filed. If no registration has been made, such goods cannot be sold in the market” In other words, the trademark user can use the trademark in the market if the trademark is not conflict with other prior rights, but if the trademark user wishes to acquire an exclusive trademark right, he or she should register the mark, otherwise, the used trademark could not be protected by the trademark law (unless the unregistered trademark has been a wee-known trademark) [14]. However, tobacco products are required to use registered trademarks [15], otherwise, they are not permitted to be sold in the market.
Trademark registration and some others administrative disputes (opposition, cancellations) in mainland China is administered by the China Trademark Office (with an appeal function administered by the Trademark Review and Adjudication Board and the Beijing No.1 Intermediate People’s Court) .The others disputes and infringement cases will handled by the local AIC and the different level courts.
In 1980, trademark applications were only about 20,000. The amount reached 132,000 in 1993. Since 2001, the amount of application boomed and increased extremely and reached 300,000 in 2001 with increased 100,000 annual year. The amount of applications reached over 700,000 in 2007. The valid registration exceeded 3,000,000. Since entering WTO, both the amount of foreign applications and the amount of foreign trademark registrations have kept increasing. In 1982, there were 1,565 foreign trademark applications in China. The application amount exceeded 20,000 in 1993 and exceeded 50,000 in 2007. The total valid registration amount exceeded 450,000 in 2007[16]. In parallel, statistics show that trademark litigations have exploded since 2001. Since 2001 to 2007, the Chinese Court heard 74,200 cases related to trademark infringement including 17,395 in 2007 with average annual increase of 22.92%. [17]
The China is the member of the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspect of Intellectual Property Rights (TRIPS) and the Madrid Agreement and Madrid Protocol. [18]
Trademark infringement in China is still a rampant problem now, despite the effective and prompt administrative raid procedure available for trademark owners under the assistant of the State Administration for Industries and Commerce and the judicial enforcement. China should reform the trademark law and relevant statutes and enforce strongly to combat the infringers. As I know, the criminal criteria for trademark infringement will be lower and the statute damage will be increased in the next revised trademark act.
B.US trademark law system
The trademark system in US is much more comprehensive and is also much complex than Chinese trademark system. Due to the parallel legal system, the federal trademark act and state trademark law are coexisting. The Lanham (Trademark) Act (title 15, chapter 22 of the United States Code) was approved on July 5, 1946 and took effect "one year from its enactment", on July 5, 1947. [19] The Lanham Act protects the trademark at the federal level. The various states also have their own common law trademark protection statutes, which generally offer overlapping protection for the trademark owner, and might be interpreted more broadly, particularly in the dilution and trade dress context. [20]
The trademark protection requires actual use of the mark in commerce. Federal registration is not mandatory to receive trademark protection in US, but federal registration trademarks can have significantly stronger protection than unregistered trademarks and also have other advantageous. The state law and federal law only provide the protection for actual used trademark in the commerce. So the content is distinct with China Trademark Law for requiring registration. “the owner of a trademark used in commerce may request registration of its trademark on the principal register ….” “ a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register…..” [21]
Trademark registration and administrative disputes (opposition, cancellations) in US are administered by the Patent and Trademark Office (USPTO), and can appeal to the Trademark Trial and Appeal Board (TTAB) is the interested party dissatisfied the decision of USPO and then to the Courts, either the district court, in the form of a civil action against the USPTO, or directly to the Court of Appeals for the Federal Circuit. [22]
The Lanham Act also was revised many times and the last revised part is The US Trademark Dilution Revision Act 2006 was signed into law on October 6, 2006. [23] Collective and certification trademarks can be registered in US. [24] In the Lanham Act, the well-known trademark concept was instead by famous trademark. The court will consider the famous trademark issues during the trademark enforcement and dilution cases.
Another distinctive party of Lanham act is that Lanham Act provides the protection of trade Dress, Cyberpiracy and product configuration [25]. Chinese Trademark Act does not provide this kind of protection and the product configuration and design might be protected by the patent law. As a common law country, the precedents are very important authorities of the court during the trial, but in China, the precedents only can be reference in the similar circumstance cases and could be the binding authority by the Courts.
The United States is signatory to the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspect of Intellectual Property Rights (TRIPS) and the Madrid Protocol. [26]
Ⅱ. Acquisition trademark right in China and US
The procedure of acquisition trademark right in China and US is much similar, such as, both require the trademark should be distinctive, both have the substantial examination, both have opposition period and both require the trademark owner continuously 3-year use in commerce.
But there are also significant distinctions. The basic distinction is the primary element principle for acquisition trademark right. Acquisition trademark right in China is “Fist to file” rule that distinguishes with “First to use” doctrine in the United States, “Use in commerce” is not required when trademark office grants the trademark right to the owner and there is no supplemental registration in China.
A.Acquisition trademark right in China
Like aforesaid, China practices "first to file" system for trademarks registration which means that the trademark right generally belongs to the first person who first to file to register it in China Trademark Office. Where applications are filed on the same day, the trademark right shall be granted to the earliest user.
According to Chinese Trademark Law, any visual symbol, if it can be used to distinguish the source of the goods or service, it can be registered by any natural person, legal entity or any other organization from that of others, the visual symbol can include any word, design, letters of an alphabet, numerals, three-dimensional symbol, combinations of colors, and their actual combination. [27] Before applying for the registration of a mark, it is better for the applicant conducting a preliminary search at the China Trademark Office to determine if a similar or identical mark is previously registered or applied. Then the applicant should complete all the official forms and documents. China adopts the international classification (Nice classification) that specifies 45 classes. The applicant has to submit the application for choosing class and there is no multi-classes application in China. Each application should only include one class. Upon submission of all the necessary documents to the China Trademark Office, the examiner would examine the application for compliance. After a preliminary examination, if the application meets the requirement of China trademark law and the China Trademark Office rules, it will be published on the Trademark Gazette for opposition purpose. China trademark law provides 3 months for any interested party to file an opposition. If there is no any opposition filed, the China Trademark Office will grant the trademark. Once the application is rejected by China Trademark Office or dissatisfied the decision of the opposition, the applicant can appeal to the Trademark Review and Adjudication Board (TRAB) with in 15 days after receiving the notice. If the applicant is not satisfied with the decision of TRAB, the applicant can, within 30 days of receiving notice of decision, file an administrative lawsuit appeal to the Court. For foreign company, it is much better to find an intellectual property firm to do the filing. China laws require foreigners with no permanent address in China to entrust a local firm for registering a trademark in China.
In accordance with the China trademark Law, the trademark should be distinctive or acquired secondary meaning for registration and also should not conflict with prior registration or application. There are some unregisterable subject matters also stipulated by the trademark law. [28] The registered trademark will last 10 years protection and can be renewed permanently each 10 years. Continuous 3 years use in commerce is required. Otherwise, any one can file application to cancel this trademark.
B.Acquisition trademark right in US
Use in commerce is the prerequisite for getting trademark right in US. Although each state protect it own state trademarks, but getting a federal registration can get significant different protection. The first step to acquiring federal trademark rights form the U.S. Patent and Trademark Office (USPTO) requires that applicant starts using the symbol, name or logo in commerce and then subsequently file a trademark application; or file an intent to use (ITU) application which can fix your filing date but still need the commercial use evidence for getting the registration. [29]
The use of a trademark generally means the actual sale of good or provides the service in public. Only advertising use or limit group use could not establish the use in commerce. [30] This priority is limited to the territory if the first use trademark owner does not to register in the USPTO, once someone else registers the trademark and use for certain years, the first use owner should be limited to the first use scope. The registration divides Principal Register and Supplemental Register. For most individuals and businesses, it will be much better for registering the trademark on the Principal Register, which will provide rights superior to those provided by the Supplemental Register. If the Trademark Examiner at the USPTO is not going to allow the mark to issue because it is considered to be descriptive, then settle for registration on the Supplemental Register, which should be better than nothing given that most individuals don’t know the difference. USPTO provides the online application.
In accordance with the Lanham Act, the subject matter for registration is broader thank China trademark Law. Unless specified by 15 U.S.C. §1052 the unregistrable subject matters, any word, name, symbol, or device, or any combination to identify and distinguish the goods or service can be register as trademark. [31] Before applying for the federal registration, it is important to conduct a prior rights research. Since use in commerce can bring trademark right for the user, so it is not enough for searching the data of Federal registration, it should be conducted broadly search in the whole nation. US adopt the international classification (Nice classification), but also use the American classification. There is multi-classes application style and one application can include more than one class. Upon submission of all the necessary documents to USPTO, the examiner will examine the application for compliance. After the substantial examination, if the applicant is entitled to registration, the trademark will be published in the Official Gazette of the USPTO. Potential opponents have 30 days form the publication date to file an opposition or request an extension. No further extension period cannot exceed 180 days form the publication. If the application is rejected the examiner, the applicant can appeal such refusals to the Trademark Trial and Appeal Board (TTAB) and then to the courts.[32]
In accordance with the Lanham Act, the trademark also should be distinctive or acquired secondary meaning for registration and also should not conflict with prior rights. The registered trademark will remain in force 10 years protection, but need to file affidavit of continuing use. Each registration may be renewed for periods of 10 years at the end of each successive 10-year. [33]
Ⅲ. Administrative protection
A.Administrative protection in China
China currently adopts a “dual-track” system for IPR protection under which the trademark owner or any interested party may seek to resolve IPR-related disputes through administrative procedures or legal proceedings. State Administration for Industry and Commerce (SAIC) and regional AIC play a crucial role for trademark right enforcement. When the trademark infringement occurs, the relevant administration authorities will initiatively investigate or accept the compliant to handled this cases by confiscating the infringing goods or by offering other remedies, such as ordering the infrigner to cease infringement, and impose fines. [34]
The regional Administration for Industry and Commerce (AIC) has authority to investigate trademark infringement within its geographic jurisdiction, seize infringing products and adjudicate complaints. The administrative remedies that may be imposed by a local AIC include:
?Cease and desist orders
?Confiscation and destruction of trademark logo that my be separated from the goods, in which case the goods may be returned to the alleged infringer
?Confiscation and destruction of infringing goods where the trademark representation cannot be separated from the goods
?Confiscation of materials, tools and equipment used mainly for production of infringing goods and trademark representations [35]
The proceeding for an administrative compliant:
(a) Information and Evidence to be Submitted
In making a compliant for the AIC to handle an infringement dispute, the trademark owner or any interested party should submit a written application with sufficient evidence, including but not limited the copy of trademark certification, and any evidence of the infringing conduct. If a firm is entrusted to submit the compliant, an authorization letter should also be provided. For cases involving the protection of trademarks under the grace period for renewal, the complainant should also provide proof of application for renewal. [36]
(b) Processing by AIC
The local AIC is responsible for handling trademark dispute after receiving the complaint and will make a decision whether accept the complaint with in 7 days. If the AIC accepts the complaint, the dispute should be handled within 90 days and inform the trademark owner or any interested party the result of the dispute. [37]
(c) Dissatisfaction with AIC Decision
?Instituting administrative reconsideration
Where any interested party is dissatisfied with the administrative judgment decision, he or she may, within 15 days from receiving the receipt of the decision notification, apply to the local AIC at a higher level for reconsideration of the decision. In this case, the interested party should submit a written appeal for reconsideration.
The higher AIC should decide within 10 days whether to handle the case. If positive, a decision on the reconsideration should be made within two months from receiving the receipt of the application for reconsideration. If the interested party is dissatisfied with the decision on the reconsideration, he or she may, within 15 days from receiving the receipt of the decision notification, institute administrative proceedings with the people's court.
?Instituting administrative lawsuit proceedings
Where any interested party is dissatisfied with the administrative punishment decision made by the AIC, he or she may, within three months from receiving the receipt of the notification of the decision, institute administrative proceedings with the people's court in the place where the AIC is located. If no proceedings are instituted and the decision is not executed at the expiration of the specified period, the AIC may request the people's court for compulsory execution thereof.
Upon the request of the complainant, the AIC may seal, seize and preserve the evidence or products of infringement, and AIC may request the complainant to provide the corresponding deposit according to law.
If, in the process of investigation of infringement cases, some infringement cases are serious and meet the threshold criteria fro constituting crime, the AIC should transfer this case to the security judicial department for further investigation. [38]
Beside the actions which bring by the complainant, the regional AIC also can take action or investigate initiatively if the officials have the indication of trademark infringement.
Since China entered WTO in 2001, the different regional AIC has handled more than 200,000 cases against trademark infringement and 15% of these cases were foreigner trademark cases. [39]
During the administrative procedure, the dispute could be resolved quicker than the judicial procedure and the cost is lower also. Disadvantages of the administrative procedure might be: the trademark owners or interested party cold not receive compensation for IPR infringement as a result of administrative adjudication; sometimes local AIC refuse to investigate the infringement conduct due to local protectionism; and fines are too low to put the infringer out of business or deter future criminal activity.
B.Illustrative examples
Trade Name Infringement by Guangzhou Estee Lauder Cosmetics Ltd.
In March 2004, the American Estee Lauder corporation complain to the Guangzhou AIC against Guangzhou Estee Lauder Cosmetics Ltd., which was a private enterprise registered in Guangzhou in August 2000. the business of this company was cosmetics, beauty and hair care products. Guangzhou Estee Lauder Cosmetics Ltd. used “Estee Lauder” as the main part of its trade name, and made identical or similar products. Pursuant to relevant provisions of the Regulations on the Administration of Enterprise Name Registration and the Implementing Measures on the Administration of Enterprise Name Registration, the Guangzhou AIC ordered the accused enterprise to change its name, to delete the words of “Estee Lauder” from its product labels and promotional materials, and not to replace them with any similar Chinese names. Meanwhile, according to the Implementing Rules of the Trademark Law of the People's Republic of China, the company was fined of RMB 200,000 (30,000USD). Prior to this decision, the company actually had received administrative penalties for being suspected of counterfeiting the products of Estee Laude many times. [40]
Chongqing AIC Seizes Counterfeit Goods in Four Famous Hotels
In June 2007, the Chongqing AIC investigated the shopping centers in four famous hotels and seized total of 637 pieces of counterfeit goods. According to the complaint, the Chongqing AIC inspected the shopping centers in four famous hotels in Chongqing, including the Continental Grand Hotel and Yutong Hotel. Many goods of world-famous brands were sold in the shopping centers; however, the shopping centers could not provide evidence for legitimate sources or customs entry of the goods. Thus the officials detained the goods that were suspected of trademark infringement. The infringing goods included clothes, leather products, watches and glasses, involving the well-known brands like Dunhill, Aquascutum, OMEGA and Christian Dior.[41]
C. Others administrative bodies:
Ministry of Public Security has the specific department for enforcing the criminal cases related economic crime. Some trademark infringement cases will be investigated by the local Public Security and if the Public Security department make a decision that the trademark infringement case commit crime and this case will be transferred to the people’s procuratorate for prosecuting. [42]
Administration of Quality Supervision Inspection and Quarantine Office (AQSIQ) also has the authority for seizing and forfeiting the manufacturer for the bad quality products. AQSIA can take strong measures against counterfeit products and poor quality products from the source of production, especially for the products: foods; building materials such as irons, steels, cements; electrical equipments; spare parts of automobiles; products for agriculture production such as chemical fertilizers, farm chemicals, farm machines.
AQSIA also combats the fabricating or unlawfully using the names and addresses of other producers, especially of famous brand names, fabricating and unlawfully using others’ product quality marks, the content of label not complying with the standard and infringing others’ intelligence property right by using OEM services [43]
D. The administrative agencies in US
Within the US Government, besides the USPTO, the following substantive intellectual property, trade and enforcement agencies all play a role in domestic and international trademark enforcement activities. [44]
The US Department of Justice enforces and supervises the application of all US federal criminal laws, including those dealing with intellectual property rights. Further, the US Department of Justice provides assistance in coordinating international as well as federal, state, and local law enforcement matters. The function of DOJ is like Ministry of Public Security of China.
The U. S. Customs Service is responsible for combating the import infringing goods into the United States. It has statutory authority to decide substantive issues of trademark and copyright infringement, and also works with the US Department of Justice and the Federal Bureau of Investigation on domestic intellectual property matters. The function is like the Custom Protection in China.
The Office of the US Trade Representative is responsible for developing and coordinating US international trade, commodity and direct investment policy and leads negotiations with other countries in these matters. It also provides trade policy leadership and negotiating expertise in its major areas of responsibility including matters relating to trade-related intellectual property protection. [45]
The US Department of Commerce provides practical information, including information relating to intellectual property protection to help US businesses select domestic and international markets for their products. This agency also monitors, investigates and evaluates foreign compliance with more than 200 recent trade agreements, including TRIPS, the trade-related agreement on intellectual property. [46]
The US International Trade Commission conducts the investigations based on the Tariff Act section 337 for the import act. If ITC finds out the import party has the infringement conduct. ITC will issue the exclusion order for the infrigner and the order will be executed by the Custom and Border Service. [47]
Beside the U.S Department of Justice and Custom and Border Service have the statutory authority to enforce the trademark infringement, others administrative agencies does not have the authority to seal, seize or forfeit the infringer. This is the different from the AIC of China.
Ⅳ Custom protection
A.Custom protection in China
Chinese Customs play an important role in intellectual property protection. Pursuant to the Regulations of the People’s Republic of China Customs Protection of Intellectual Property Rights [48], the owner of an intellectual property can not only stop importation of infringing products, but also prevent exportation of infringing products. The Customs Intellectual Property Protection Regulation stipulates in Article 3: “The State prohibits the importation and exportation of goods which infringe intellectual property rights. The Customs provides protection for intellectual property rights in accordance with the provisions of relevant laws and these Regulations and exercises relevant powers under the Customs Law of the People’s Republic of China.” Those powers are entitled by China Customs Law mainly include the right to detain, check, examine, investigate, and confiscate and dispose the infringing goods. [49] Customs played an effective and important role for prohibiting the counterfeit products from importation and exportation. Since 2003, the Customs had handled up to 7,000 infringement cases valued at up to 6,000 million Yuan in total. [50]
Pursuant to the Chapter 2 of Customs Intellectual Property Protection Regulation, owner of intellectual property rights may apply for recordation with the General Administration of Customs. The owner of the IP right should file, together with the application, certain information and evidence regarding the IP right. [51] Once the recordation is successful, the different regional Customs will examine the shipment of importation and exportation. If the Custom suspects that shipment goods might be infringing an intellectual property right on record, the Custom shall immediately notify the owner of intellectual property right in record or their representative. The owner then shall have the option to file within three working days an application to detain the goods or let the goods go. If the owner files such application and posts the required deposit, the Custom may detain the suspected infringing goods with notice to the consignee or consignor. [52]
If the trademark owner made a recordation in the General Administration of Customs, the regional Customs will initiatively watch the infringement products of importation and exportation. If the trademark owner does not make this kind of recordation, under Article 12 of the Customs Intellectual Property Protection Regulation, the owner has the right to apply to the relevant Customs to detain suspected infringing goods if he discovers that the suspected infringing goods are about to be imported or exported [53] and Article 13 provides for the procedure for such kind of applications. [54]
Once the imported or exported infringing goods are detained by the Customs, the Customs will begin to investigate this case and inform the result to the trademark owner once they have a decision within 30 days. [55] Once the Customs recognize that the goods are unlawful products, the Custom will forfeit the infringing products. [56] In some instances, the Customs shall provide assistance upon the receipt of a notification from the people’s court for assistance in execution of an order to cease an infringing act or for preservation of property. [57] The trademark owner has also can commence infringement litigation in a court of appropriate jurisdiction. If the consignor or consignee of the goods believes that the goods do not infringe the intellectual property right, he has the option to apply for the release of the goods after posting deposit equivalent to the value of such goods. [58]
But it seems that most of the trademark owners do not realize the significant function of the Customs protection of enforcing trademark right for imports and exports infringement products. There are about only 5,900 valid trademark recordation in China Custom now, [59] comparing with more than 2 million valid trademark registrations in China, the recordation in China custom is such a small percent. Actually, the custom protection is effective measure for protect trademark right. There was a South Korean corporation sold the Space Heater with the trademark KERONA in Middle East of Asia and found that some counterfeiting products shipped from China. But they could not find out where the manufacture was located. This company came to us for assistant. I suggest them to make the custom record for the trademark since they already registered their trademark in China. This company followed my suggestion and made the recordation in the General Administration of Customs. Only one month later, one regional custom office informed this Company that suspected some exported Space Heater might violate the KERONA trademark right. And then they found out who is the infringer.
B. Customs Protection in US
U.S Custom and Border Protection (CBP) has the authority power to target, intercept, detain, seize and forfeit shipments of unlawful goods which violate the Intellectual Property right in US. [60] The CBP enforcement goals can be accomplished through the cooperative efforts of the trained enforcement officers, other government agencies, and the trade community. The first step in obtaining IPR protection by CBP is to make recordation validly registered trademarks with CBP like in China Custom. CBP uses this recordation information to monitor shipments and prevent the importation of infringing goods. Those who suspect "criminal" violations of IPR may report their allegations to criminal investigators at the National Intellectual Property Rights Coordination Center (IPR Center) of the Bureau of Immigration and Customs Enforcement (ICE). [61]
Section 337 investigations, which are conducted pursuant to 19 U.S.C. § 1337 and the Administrative Procedure Act, include trial proceedings before administrative law judges and review by the Commission. [62] Section 337 investigations conducted by the U.S. International Trade Commission most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods. Both utility and design patents, as well as registered and common law trademarks, may be asserted in these investigations. The primary remedy available in Section 337 investigations is an exclusion order that directs Customs to stop infringing imports from entering the United States.
In the recent years, more and more Chinese corporations become the targets of trademark owners in US. The amount is increasing promptly and there are more than 15 corporations were sue in January and February of 2008. [63]
Ⅴ Civil law Protection
A.Civil Action protection in China
Civil Law protection for trademark infringement is the main measure for trademark owners to get the relief in China. Since 2001 to 2007, the China Courts had judged 74,200 cases related with intellectual property, with 10,743 trademark cases involved. The average annual increase is about 22.92%. In 2007, the courts had judged 17,385 intellectual property cases that were involved 668 foreign IP rights cases. ?The YAMAHA company, a Japanese corporation won the highest damage ever awarded to a foreign company for trademark infringement in China in 2007 and the compensation reached ￥8,300,440.43（about $1,185,777.20）[64]. The largest domestic compensation were ￥ 10,610,000 (about $1,515,714) in 2006. I also represented a Beijing company against the famous Japanese corporation (HITACHI) involved a reverse infringement case in 2006 and the case was settled by negotiation at last and HITACHI compensated about $1 million to the Beijing Company. So the trademark infringement compensation is increasing in the recent years.
1. The jurisdiction of court for trademark infringement case.
Under China current judicial system, intermediate people's courts are courts of first instance for trademark infringement cases. With the approval of the Supreme People's Court, the High People's courts of different province, autonomous and municipality can, based on the actual circumstances in the districts under their respective jurisdiction, assign people's courts at lower levels to handle first hearings of civil cases involving copyright disputes. [65]
The statute also stipulates the territorial jurisdiction that civil litigations instituted for acts of infringing the exclusive right to the use of registered trademark shall be put under the jurisdiction of the courts at the places where the infringement acts happen, or people’s courts at the places where infringement products are stored up, or local Customs and administrations of industry and commerce seal up and detain infringement products according to the law shall also have the jurisdiction. Naturally, people’s courts at the place of domicile of the defendants enjoy jurisdiction as well. [66]
2. Constitute Trademark Infringements
In accordance with the Article 52 of the Trademark Law, as supplemented by Article 50 of the Trademark Law’s Implementing Regulations, the following acts are considered trademark infringement:
?Using a mark which is the same as or similar to a registered trademark on the same or similar goods without the authorization of the registered trademark owner;
?Selling the products that violate the exclusive right to use a registered trademark without the authorization;
?Counterfeiting or fabricating without authorization a mark or a symbol that is part of a registered trademark of another person, or selling marks or symbols that have been made or fabricated without authorization;
?Changing a registered trademark without the authorization of the registered owner and putting into the market with the modified mark;
?Use of identical or similar of a registered trademark in or on connection with identical or similar goods as products name of trade dress to mislead others;
?Causing harm in other respects to the registered trademark holder’s right to exclusive use
?Providing transport, storage, mailing, hiding or other conveniences in order to facilitate others in the infringement of the exclusive rights of a registered trademark holder [67]
3. Pre-trial preliminary Injunction
When the trademark owner or any interested party files a trademark infringement litigation in the relevant People’ Court, if the trademark owner or an interested party finds that due to emergency circumstances any delay to stop the infringing act may cause irreparable damages to his legitimate rights, he may, before instituting legal proceedings, request the people's court to freeze the assets of the infringer or stop infringing. [68] It is called “pre-trial” injunction and preservation of evidence. It is added to China’s Trademark Law in the last revision in 2001 in compliance with Article 50 of TRIPS. [69]
In order to get a preliminary injunction, the applicant, usually it is plaintiff, should provide sufficient evidence that is likely to cause irreparable harm, such as harm of reputation, erosion of market share, etc. The applicant also must provide a deposit for guaranty or assets at a value sufficient to cover the possible damage suffered by the defendant. If the preliminary injunction will not harm the public interest, the People’s Court will grant the preliminary injunction. When the respondent is facing greater damages than that originally contemplated by court in granting the preliminary injunction, the court can increase the deposit amount. If the applicant fail to file a litigation or lose the case and such injunction injure the respondent, usually it is defendant, applicant should use the deposit or assets to compensate also the injury that the respondent suffered including direct damages and indirect damages, such as lost sale revenues, warehouse charges incurred, consequential damages for breaching contracts, etc. If the applicant fails to post sufficient amount of deposit as ordered by the court, the injunction should be rejected. Any party not satisfied with any order in relation to the grant or denial of an injunction may move for reconsideration within ten days of the order. [70]
According to Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation, the People’s Court accepting an application for pre-litigation injunction should make a ruling in writing within 48 hours and that once an orders is entered, it must be executed without delay. The court must also promptly notify the party against whom the application is filed within 5 days after the order is entered.
Some issues should be attention here: 1) there is no hearing during the injunction procedure; 2) This procedure is not limited to pre-trail injunction applications. It can also be used for injunctions applications filed after the litigation commences or during the litigation, [71], 3) once the injunction is issued, the applicant must commence the litigation within 15 days; or the injunction shall be dismissed. [72] and 4) the statistics show that the rat of granting the injunction in the intellectual property cases are high, about 76.92% in 2007. [73]
4. Pre-litigation Evidence Preservation
If the plaintiff found that the evidence will possibly be destroyed or lost or difficult to be obtained again in the future, he or she can file an application with the People's Court for preservation of the evidence before instituting legal proceedings. The applications for evidence preservation shall submit in written form including the requirement information and the sufficient evidence. [74]
When an applicant's application for pre-trial evidence preservation is likely to involve property loss to the respondent, the People's Court may order the applicant to provide guaranty accordingly. Once the applicant does not provide the guaranty, the application shall be rejected. If a trademark registrant or any interested party does not institute legal proceedings within fifteen days after the People's Court adopts the measure to suspend the relevant act or to preserve evidence, the People's Court shall cancel the measure adopted pursuant to the adjudication. [75] The People’s Court approved 87.1% of the all pre-trail evidence preservation in 2007[76]
5. Pre-trail property preservation
Where a trademark owner or any interested party who has evidence to show that infringer is committing or will commit an infringement of the right to use its or his registered trademark, and that failure to promptly stop the infringement will cause irreparable damages to its or his legitimate rights and interests, he or she may, before instituting legal proceedings, apply to the people's court for measures to preserve the infringer’s assets. The applicant should provide sufficient evidence that the infringer will transfer the assets. The applicant must provide deposit for guaranty, if he or she fails to do so, the application shall be rejected. Property preservation shall be limited to the scope of the claims or to the property relevant to the case. After receiving an application, the people's court must make an order within 48 hours; if the court orders the adoption of property preservation measures, the execution will effect immediately. If the applicant fails to pursue an action within 15 days after the people's court has adopted the preservation measures, the people's court shall dismiss the property preservation. If an application for property preservation is wrongfully made, the applicant shall compensate the person against whom the application is made for any damages incurred from property preservation. If the party concerned is not satisfied with the order made on property preservation or execution, he or she may apply for reconsideration. Execution of the order shall not be suspended during the time of reconsideration. [77] The People’s Court approved 98.1% of the all pre-trail evidence preservation in 2007. [78]
6. Evidences should be submitted during the trademark infringement case
During the civil litigation, the plaintiff should provide sufficient evidences, such as the legitimate rights evidences, the evidences for the infringement actions, the compensation evidences. Since there is no discovery procedure in the trail in China, so it is very important for plaintiff to collect enough evidences before processing the litigation.
1). The following evidences that can prove that authority of trademark right or the right of using trademark by license, should be submitted by the plaintiff, such as trademark registered certificate, licensing contract;
2). The plaintiff shall also submit the evidences of infringement to prove that the defendant has implemented the acts of infringing trademark right or is in process of implementing the infringing acts, such as the infringement goods, advertisement, testimony, punishment decision made by AIC or Custom, etc.
3) The plaintiff shall also submit the evidence for compensation, such as the profit that the infringer, the injury that the plaintiff has suffered from the infringement, the cost and attorney’s fee.
According to Article 56 of Trademark Law of the People's Republic of China, the amount of damages shall be the profit that the infringer has earned because of the infringement in the period of the infringement or the injury that the plaintiff has suffered from the infringement in the period of the infringement, including the appropriate expenses of the plaintiff for stopping the infringement. Where it is difficult to determine the profit that the infringer has earned from the infringement in the period of the infringement or the injury that the plaintiff has suffered from the infringement in the period of the infringement, the People's Court shall impose an amount of damages of no more than RMB 500, 000 Yuan (about $ 70.000) according to the circumstances of the infringement. [79]
When a People's Court is determining the measure of damages, it should make an overall determination having considered factors such as the nature, the period and the consequences of the infringement, the reputation of the trademark, the amount of trademark licensing royalties, the types, periods and scope of trademark licenses for the mark, the reasonable expenses incurred in stopping the infringement, etc.
All the evidences should be original or notarized by the Notary and only copied documents might not be accepted by the people’s court. If the evidences are formed outside of Mainland, the evidence should be notarized and legalized up to the local Embassy or Consulate of the People’s Republic of China. If the material is foreign languages and it should be translated into Chinese by verified translation agencies. [80]
6.Statutory limitation of the trademark cases
If a trademark owner or any interested party brings a suit after more than 2 years of the infringing action, if the infringing act is still continuing at the time the suit is brought and the exclusive rights to use the registered trademark are still in the period of validity, then the People's Court should accept the litigation and issue judgment for the plaintiff. The measure of damages for the infringement should be calculated back 2 years from the date when the plaintiff brings the lawsuit. [81]
Anyone who sells the infringing goods with innocence and he or she can prove that the accused goods are delivered by legitimate channel and indicates the supplier, he or she will not be liable for damages, but should cease to sell the infringing products immediately. [82]
7. The duration and execution of the trademark cases
Normally, the first-instance of trademark litigation will last about 6 months, but for some complex cases, they might be longer. If the interested parties do not make an appeal after a trial at the court of first instance, the verdict will come into force.
If any of the parties concerned are not satisfied with the judgment, he or she may appeal to the higher-level People’s Court, that is the court of second-instance and it normally lasts 3 months. The parties could not appeal after this trial. Only few of the cases, the Supreme Court can grant certiorari for re-trial. The frustrated party must execute the judgment with legal validity. If he or she refuses to do so, the prevailed parties may apply to the People’s Court for compulsory execution.
8.Illustrative cases
The following cases reveal different region of the protection by the People’s Court in China.
1). Starbucks Corporation vs. Shanghai Xingbake Cafe Co. Ltd. for trademark infringement and unfair competition (trade name protection)
Starbucks Corporation registered in China “STARBUCKS”, characters and figures of “STARBUCKS” and “星巴克” ( “STARBUCKS” in Chinese) from 1996 to 2003.
Shanghai Xingbake Cafe CO. Ltd. was set up in Shanghai in 2000 and was named the corporation as “星巴克” and used the trademark the same as or similar to the registered trademarks above.
Starbucks Corporation sued Shanghai Xingbake Cafe Co. Ltd. for trademark infringement and unfair competition.
Shanghai No.2 Intermediate Court held that “STARBUCKS”、“星巴克” spread rapidly and has been well-known by the public in the mainland, and they ( “STARBUCKS” and “星巴克”) should be regarded as well-known trademarks. Shanghai Xingbake Cafe Co. Ltd. registered character “星巴克” as the company's name was in a bad faith. Shanghai Xingbake 's conductsas using trademarks the same as and similar to the registered trademarks have infringed Starbucks Corporation legitimate right of the registered well-known trademarks and also constitute an unfair competition to the Starbucks Corporation.
So the court made the judgment requiring Shanghai Xingbake to stop trademark infringement and unfair competition, change companies' name, and compensate Starbucks Corporation RMB 500, 000 (70,000 USD) damage. Shanghai Higher Court affirmed this case. [83]
2). Five Companies vs. Silk Market for trademark infringement (landlord responsibility)
Burberry, Chanel, Gucci, Prada and Louis Vuitton brought a successful lawsuit against not only the sellers of five stalls selling counterfeit goods, but also the landlord which provide the space for the sellers in 2006. The plaintiffs claimed that no action was taken to stop the stall owners from selling counterfeit goods and the landlord also was aware the infringing conducts. The Court ordered the market owner as well as the five stall sellers to pay, approximately, US$50,000 in damages and to cease selling counterfeit goods. [84]
3). Bonneterie Cevenole SARL vs. Guangdong XINKEDE Ceramic Tile Co. Ltd. (Fashion v. Ceramic tile, irrelevant products)
Plaintiff, Bonneterie Cevenole SARL is a French fashion corporation and owns the series trademarks “MONTAGUT” and “夢(mèng)特嬌” which are well-known in China.
The defendant, Guangdong XINKEDE Ceramic Tile Ltd. Company sold ceramic tile. Defendant used the trademark Montagut and Chinese character of the plaintiff on the ceramic tile products. Plaintiff sued defendant in 2006 and the court held for Plaintiff and issued the permanent injunction to defendant. The defendant also should compensate about USD70,000 damages to Plaintiff. The defendant was a middle size company, but impacted by this case, the defendant was bankruptcy several months later after the issuing the judgment.[85]
B. Civil litigation in US for trademark enforcement
According to 15 U.S.C§1121. (a) The district and territorial courts of the United States shall have original jurisdiction, [and] the courts of appeal of the United States (other than the United States Court of Appeals for the Federal Circuit) [and the United States Court of Appeals for the District of Columbia] shall have appellate jurisdiction, of all actions arising under this Act, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties. Federal court and state court both should have the jurisdiction for trademark infringement cases in United States. Most of the cases go to the federal. [86]
Any one without authorization by the trademark owner attempting to use an identical or similar mark on or in the connection of the same or similar goods or service which cases likelihood of confusion may give rise an infringement claim by the trademark owner. 15 U.S.C§1114. (1) (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. [87]
Likelihood of confusion is the central requirement in actions both at common law and under the federal trademark statue. [88] Which means that the trademark owner should prove that the unauthorized use will be confuse, mislead, or deceive the consumer regarding the source of the goods or services, or affiliation, or sponsorship. Only likelihood confusion be proved and do not need to prove the actual confusion. Each federal circuit has the criterion for determining the likelihood of confusion, but the essence should be the same. The second circuit’s version which set forth in Polaroid Corp V. Polarad Electronics Corp., (287 F.2d 492) might be the most comprehensive and the most popular used:
1.Strength of plaintiff’s mark;
2.The degree of similarity of the marks;
3.the proximity of the products or services in the market place;
4.the likelihood that the plaintiff will bridge the gap;
5.evidence of actual confusion;
6.Defendant’s good faith in adopting the mark;
7. The quality of the defendant’s product or service; and
8. The sophistication of the buyers.
Identical use in China is per se infringement and plaintiff does not need to prove the confusion. But US require the plaintiff to prove the likelihood confusion.
Most of the plaintiffs want to stop the infringing act during the litigation, so the injunctive relief should be important measures for stop the infringer to continue infringing. Pursuant to 15 U.S.C §1116. (a) The several courts vested with jurisdiction of civil actions arising under this Act shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section.[89] Injunction must be applied with careful consideration to the circumstances and facts at issue in a particular case. [90] It seems that injunctive relief is more cautious in US than in China.
Damages in a trademark infringement cases include various types of monetary recovery available upon a finding of infringement. It can be defendant’s profits, plaintiff’s lost profits, punitive damages, costs and attorney’s fees. If the defendant willfully infringes the plaintiff trademark rights, the monetary damages may be three times of profits or damages. Once the defendant involved the use of a counterfeit mark, the plaintiff may elect to recover, instead of actual damages and profits, an award of statutory damages. If the court finds that the use of the counterfeit mark was willful, not more than $ 1,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. [91]
C. Comparison the civil litigation between China and US
Civil protection plays very important role for protecting the trademark infringement both in China and US. There are some distinctions between to countries.
1).There is no discovery procedure in China litigation instead of evidence preservation, the collective evidences is important step for processing litigation.
2).Likelihood of confusion is the test of trademark infringement in US, even for the identical use. But in China, it is per se illegal if infringer used the identical trademark in the same goods, only related with the similar mark, the court will require the likelihood of confusion.
3).There is no dilution provision in the China trademark law, but the well-known trademark provision can provide similar protection, like MONTAGUT Case.
4).There is no anti-cybersquatting protection in the trademark law of China. There is an interpretation by the Supreme Court. This kind of case will pertain into well-know trademark protection.
5).The statutory damage is much higher in US than in China. The maximum damage can be $1, 000,000 for intentional infringement of counterfeit. It is only $70,000 in China.
6) Due to the different of legal system, precedents could not be the authority used by the China court, the Court should judge the case based on the statute, regulations and interpretation by the Supreme Court.
In China, the court will balance the circumstance and try to make up the lost of the plaintiff, if the defendant earns $1000 from the infringement, he or she should give $1000 to the plaintiff. But in US, the damage includes some punitive factors (although the statute say it is not). If the defendant earns $1000 from the infringement, he or she should give $3000 to the plaintiff. So the China’s Trademark Law should use this punitive concept to deter the infringer.
Ⅵ Criminal Law Protection for Trademark Infringement
A. Criminal Law Protection in China
In some circumstances, where counterfeiting trademark infringement is "serious," the case might be transferred to the Public Security Bureau for investigation by the AIC, Courts or other agencies and then infringer might be prosecuted by the procuratorate. The criteria for determining what kind of circumstance could be serious enough to constitute crime was stipulated by the Supreme People’s Court and the Supreme People’s Procuratorate promulgated the Interpretation on several issues regarding the Application of Laws in Handling Criminal Cases of Infringement on Intellectual Property Rights, which came into effect on December 21, 2004.
As to counterfeiting registered trademarks of others, in accordance with the Article 213 in Criminal Law of the People's Republic of China, “whoever uses a trademark identical with another person's registered trademark on the same kind of goods without permission from the owner of the registered trademark shall, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years or criminal detention, and concurrently or independently be sentenced to a fine. If the circumstances are especially serious, the offender shall be sentenced to fixed-term imprisonment of not less than three years and not more than seven years, and concurrently be sentenced to a fine.” [92]
As to sale of counterfeit trademark goods, according to Article 214 “whoever knowingly sells goods bearing counterfeited registered trademarks shall, if the sum obtained through sale is relatively huge, be sentenced to fixed-term imprisonment of not more than three years or criminal detention, and concurrently or independently be sentenced to a fine. If the sum obtained through sale is huge, the offender shall be sentenced to fixed-term imprisonment of not less than three years and not more than seven years, and concurrently be sentenced to a fine.” [93]
As to illegal manufacture, sale of illicitly manufactured logo of registered trademark, according to Article 215, “whoever forges or makes without authorization representations of registered trademarks of another person or sells representations of registered trademarks which are forged or made without authorization shall, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years, criminal detention or public surveillance, and concurrently or independently be sentenced to a fine. If the circumstances are especially serious, the offender shall be sentenced to fixed-term imprisonment of not less than three years and not more than seven years, and concurrently be sentenced to a fine”
For specifying the circumstances of above statutes, the Supreme People’s Court and the Supreme People’s Procuratorate promulgated the Interpretation on several issues regarding the Application of Laws in Handling Criminal Cases of Infringement on Intellectual Property Rights (Interpretation), which stipulates the criteria for constituting a rime for counterfeiting trademark infringement. Since the interpretation is so specific for calculating the value of counterfeiting products or the amount of the counterfeiting symbol, I would not list all of the detail and just figure out some of the stipulation. For instance, if the infringer uses a trademark which is identical or basically the same in vision with the registered trademark in respect of the same goods, sufficient to mislead the public, and if the amount of illegal business value is over 50,000 yuan, or the amount of illegal income is over 30,000 yuan, if he/she counterfeits two or more registered trademarks with an illegal business value of over 30,000 or an illegal income of over 20,000 yuan, or if there are other especially serious circumstances, constitute the crime of counterfeiting registered trademark, shall be sentenced to fixed-term imprisonment of not more than three years or criminal detention and shall also, or shall only, be fined. Once the mount of illegal business value of or above 250,000 yuan or the amount of illegal income of or above 150,000 yuan or uses two or more trademarks without authorization of the owner of the registered trademark valued at over 150,000 yuan in terms of business operation or over 100,000 yuan in terms of illegal gains, or if there are other especially serious circumstances, shall be sentenced to fixed-term imprisonment of no less than three years but not more than seven years and shall also be fined. [94]
In accordance with the Article 16 of the Interpretation, “those, who are aware of other's IPR infringing acts, but still offer loans, capital, account number, invoice, certification or license, or provide production and operation places, or offer convenience for storage, transportation, import and export agencies, should be sentenced as complicity of IPR crimes.” [95] Since most of the counterfeiting infringement do not operate by one person or on company, in most circumstance, they formed a network or a whole chain from raw material purchase, equipment setting, capital support, transportation, warehousing, and marketing, this stipulation try to enforce firmly for this kind of complicity crime
In addition, the criminal procedure will not affect the civil procedure protection, which mean that even the infringer is prosecuted and is imprisoned. The trademark owner who is infringed should also have right to claim the compensation. In case that the court find out the alleged case constitutes crime, may invoke the Public Security Bureau for investigation.
There are some points should be figured out that only the counterfeiting action can constitute crime which mean that the infringer uses the accused trademark which should be identical or basically the same in vision with the registered trademark in respect of the same goods, sufficient to mislead the public, and the counterfeiting value or amount should meet the threshold line. Trademark similar use either identical trademark used on similar goods or similar mark used on the same goods could not constitute trademark infringement crime. The Criminal Law of China does not expressly stipulate the service trademark infringement. The commentators still have controversies whether identical use on the same service could constitute criminal action. The Supreme People’s Court and the Supreme People’s Procuratorate do not say anything on this issue.
The statistics show that the court judged 2,684 criminal cases related Intellectual Property infringement in 2007 and 4,322 people were imprisoned due to infringing Intellectual property conducts. [96]
B.Criminal protection in US
Counterfeiting infringement is felony in US and the punishment is server. The maximum fine can be $15,000,000 and imprisonment can be 20 years for the person who constitutes counterfeiting infringement. Pursuant to 18 U.S.C.§ 2320 (a) Whoever intentionally traffics or attempts to traffic in goods or services and knowingly uses a counterfeit mark on or in connection with such goods or services shall, if an individual, be fined not more than $2,000,000 or imprisoned not more than 10 years, or both, and, if a person other than an individual, be fined not more than $5,000,000. In the case of an offense by a person under this section that occurs after that person is convicted of another offense under this section, the person convicted, if an individual, shall be fined not more than $5,000,000 or imprisoned not more than 20 years, or both, and if other than an individual, shall be fined not more than $15,000,000. [97]
There is also no especial limitation for commit crime, if there is evidence for intentionally counterfeiting, infringer can be prosecuted in US.
Comparing the criminal procedure in US and in China, we can find out that the penalty for counterfeiting goods or service in US are more severe than in China. The imprisonment in china is no more than 7 years, but in US it is no more than 20years and no specific provision for fine in China, but the fine can be $15,000,000 in US. In order to deter the infringer, I agree that more severe measures should be applied in China.
Ⅶ. Conclusion
From the comparison, we can come the conclusion, trademark enforcement in China can be “effective and prompt” by administrative procedures, Custom protection and civil action, but should be enforced firmly in the region of criminal protection.
The specification is following.
1.China provides several procedures for trademark protection, the prerequisite is that the person who want to protect his or her trademark right should register trademark rights first in China;
2.The regional AIC can provide the prompt protection for trademark infringement, but could not deter the infringing conduct effectively sometimes;
3.Custom can provide the effective protection for imported and exported products, trademark owner should utilize this protection actively;
4.China court can provide comprehensive protection for trademark owner, especial for well-known trademark owner;
5.Statute damage in the trademark law should be enhanced and the compensation should be increased when the court judge the case;
6.China especially should enforce the criminal law related the counterfeiting and enhance the duration for the imprisonment and the amount of the fine. Only the more severe instrumentalities might deter the infringer.
The Chinese government just unveiled the Outline of National Intellectual Property Rights -- a new strategy to tackle the many issues surrounding IPR. This new strategy will improve IPR protection in China and attract greater intellectual resources from abroad. [98]. It is the high time for the foreigner corporations to protect their IP in China. If you have IP right in China, you will have high opportunity to protect it. If you don’t have, you could not do any thing about your IP. Meanwhile, IP right enforcement circumstances are changing better and better. We believe that strength of the enforcement can quite meet the international criteria, if you want to know it, you should come closely.
FOOTNOTE:
[1] INTA: International Trademark Association;
[2] AIPPI: International Association for the Protection of Intellectual Property;
[3] The current IP framework was established begin 1980’s. The People’s Republic of China
Trademark Law was enacted on August 23, 1982; The People’s Republic of China Patent Law was enacted on March 12, 1984; The People’s Republic of China Copyright Law was enacted on September 7, 1990;
[4] “China Trademark Laws - Simple and Effective” by Dan Harris http://www.chinalawblog.com/2007/12/china_trademark_law_simple_and.html
[5] The People’s Republic of China Trademark Law was revised respectively on February 22, 1993 and October 27, 2001;
[6] 1993 reversion Trademark Law Article 4;
[7] 2001 reversion Trademark Law Article 8, 13 and 14;
[8] "Agreement on Trade-related Aspects of Intellectual Property Rights." is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.
[9] "Regulations for the Implementation of the Trademark Law" was enacted March 10, 1983;
[10]"Provisions on the Recognition and Protection of well-known Trademarks" was enacted on June 1, 2003;
[11]"Procedures for the Management and Registration of Collective Trademarks and Certification Trademarks" was enacted on June 1, 2003
[12]"Procedures for the Implementation of Madrid Agreement for the International Registration of Trademarks" was enacted on June 1, 2003;
[13] See the PRC Trademark Law Article 4;
[14] See the PRC Trademark Law Article 13: Article 13. A trademark shall not be registered and its use shall be prohibited where the trademark constitutes a reproduction, an imitation, or a translation, of a well-known trademark of another person not registered in China and is likely to create confusion, if the trademark is the subject of an application for registration in respect of goods which are identical or similar to the goods to which the well-known trademark applies.
A trademark shall not be registered and its use shall be prohibited where the trademark constitutes a reproduction, an imitation, or a translation, of a well-known trademark of another person already registered in China and is likely to mislead the public and damage the interests of the owner of the registered well-known trademark, if the trademark is the subject of an application for registration in respect of goods which are not identical or similar to the goods to which the well-known trademark applies.
[15] “The regulations of using trademark on Tobacco” was enacted August 23, 1996.
[16] http://sbj.saic.gov.cn/tjxx/TJTableLNSBTJ.asp?BM=09;
[17] http://www.chinaiprlaw.cn/file/2008031812792.html
[18] China is a member of Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (since 2001), Madrid Agreement and protocol Concerning the International Registration of Marks (since 1989)
[19] See 15 U.S.C. §1141
[20] See The Foundations of Intellectual Property by Robert P. Merges and Jane C. Ginsburg P456;
[21] See 15 U.S.C.§1051
[22] See 15 U.S.C.§1070,§1071.
[23] See 15 U.S.C. §1125, “Trademark Dilution Revision Act of 2006”
[24] See 15 U.S.C.§1051
[25] See 15 U.S.C.§1125
[26] United States became the member of Paris Convention for the Protection of Industrial Property in May 30, 1887, the Agreement on Trade-Related Aspect of Intellectual Property Rights (TRIPS) in January 1, 1995 and the Madrid Protocol in November 2, 2003.
From http://www.wipo.int/treaties/en/
[27] China Trademark Law article 8.
[28] China Trademark Law article 8,9,10 and 11.
[29] See 15U.S.C.§1127 (a)
[30] Blue bell v. Farah Manufacturing Co.508 F.2d 1260
[31] See 15 U.S.C.§1127.
[32] See 15 U.S.C. §1062 §1063
[33] See 15 U.S.C.§1058 §1059
[34] See the PRC Trademark Law Article 53
[35] See the PRC Trademark Law Article 55
[36] http://www.saic.gov.cn/sjpdq/sjpd/nsjg/fgs/gzdt/t20070914_23979.htm
[37] Id
[38] Id
[39] Li Dongsheng, the vice minister of SAIC, promulgated to the public in 2007. http://business.sohu.com/20070613/n250539999.shtml
[40] http://english.ipr.gov.cn/ipr/en/info/Article.jsp?a_no=2663&col_no=127&dir=200604
[41] http://english.ipr.gov.cn/ipr/en/info/Article.jsp?a_no=82335&col_no=127&dir=200706
[42] See the PRC Trademark Law Article 54
[43] http://english.aqsiq.gov.cn/AboutAQSIQ/Mission/
[44] http://www.uspto.gov/main/profiles/international.htm
[45] http://www.uspto.gov/web/offices/dcom/olia/globalip/domesticip.htm
[46] Id
[47] Id
[48] Regulations of the People’s Republic of China Customs Protection of Intellectual Property Rights was enacted on December 2, 2003, and effective as of March 1, 2004;
[49] See Regulations of Customs Protection of Intellectual Property Rights article 16;
[50] http://www.customs.gov.cn/
[51] See Regulations of Customs Protection of Intellectual Property Rights article 7;
[52] See Regulations of Customs Protection of Intellectual Property Rights article 12,13 and 14;
[53] See Regulations of Customs Protection of Intellectual Property Rights article 12;
[54] Id. Supra. Article 13 Where requesting the Customs to detain the suspected infringing goods, the holder of the intellectual property right shall present a written application and relevant evidentiary documents, and provide as well any evidence that sufficiently proves the obvious existence of the fact of infringement. An application shall mainly include the following particulars: (1) the business name or name, place of registration or nationality, etc. of the holder of the intellectual property right; (2) the description, contents and any other relevant information relating to the intellectual property right; (3) the business name of the consignee and consignor of the suspected infringing goods; (4) the descriptions, specifications, etc. of the suspected infringing goods; (5) the possible ports, time, means of transport, etc. related to the importation or exportation of the suspected infringing goods.
The application shall include the number of Customs recordation in addition where the goods are suspected to infringe an intellectual property right under recordation.
[55] Id. Supra article 20;
[56] Id. Supra article 27;
[57] Id. Supra article 23;
[58] Id. Supra article 19;
[59] http://202.127.48.151/applyrecord/;
[60] See 19 U.S.C. § 1337;
[61] http://www.cbp.gov/xp/cgov/trade/priority_trade/ipr/
[62] http://www.usitc.gov/trade_remedy/int_prop/index.htm
[63] http://info.usitc.gov/sec/dockets.nsf/337?OpenView
[64] http://www.chinaiprlaw.cn/file/2008031812792.html
[65] Interpretation by the Supreme People's Court of the Issues Relating to Jurisdiction over and Scope of Application of Law to the Hearing of Trademark Cases
[66] See Civil Procedure Law Article 29;
[67] See the Trademark Law Article 52 and the Trademark Law’s Implementing Regulations Article 50;
[68] See Trademark Law, Article 57: Where the owner of a registered trademark or an interested party has evidence indicating that another person is engaged in or will soon engage in an act of infringement of the former's exclusive right to use his registered trademark and that, unless the act is stopped in a timely manner, irreparable injury will be caused to his legitimate rights and interests, he may, before instituting legal proceedings, apply to the people's court for measures prohibiting the act and preserving the latter's assets. The people's court shall apply the provisions in Article 93 to Article 96 and Article 99 of the Civil Procedural Law of the People's Republic of China in handling the application provided in the preceding paragraph.
[69] Id.
[70] Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation
[71] WU Denglou, [The Rule of Injunction related with Intellectual Property]
[72] Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation Article 12.
[73] http://www.chinaiprlaw.cn/file/2008031812792.html
[74] Interpretation by the Supreme People's Court of the Issues Relating to Application of Law to Pre-trial Suspension of Acts of Infringement of Exclusive Right to Use Trademarks and to Evidence Preservation Article 3. (1) the plaintiff and the basic information thereof; (2) specific subject matter and scope of the application; (3) object attestable by the evidence of which preservation is requested; and (4) cause of application, including specific statement that the evidence is like to be destroyed or hard to be obtained afterwards, and the interested party and, moreover, his or its agent ad litem cannot collect evidence on their own for objective reasons.
[75] Trademark Law Article 58
[76] http://www.chinaiprlaw.cn/file/2008031812792.html
[77] The Civil Procedural Law of the People's Republic of China Article 93 to Article 96 and Article 99;
[78] http://www.chinaiprlaw.cn/file/2008031812792.html
[79] See Trademark Law article 56;
[80] The Civil Procedural Law of the People's Republic of China Article 66,67, 68 and 240;
[81] Interpretations of the Supreme People's Court of Several Issues Concerning the Application of the Law to the Trial of Civil Dispute Cases Involving Trademarks Article18: “The statute of limitations for bringing a suit for the infringement of a registered trademark is 2 years, starting from the date that the trademark registrant or a materially interested party knew or should have known about the act of infringement. Where a trademark registrant or a materially interested party brings a suit after more than 2 years, if the infringing act is still continuing at the time the suit is brought and the exclusive rights to use the registered trademark are still in the period of validity, then the People's Court should issue a judgment [ordering] the defendant to stop the infringing act. The measure of damages for the infringement should be calculated by reckoning back 2 years from the date when the rights holder brought the suit before the People's Court.”
[82] See Trademark Law article 56;
[83] See the Judgment of the Starbucks Corporation v. Shanghai Xingbake Cafe Co. Ltd. in Shanghai No2 Intermediate People’s Court.
[84] http://www.chinaiprlaw.cn/file/2007081611833.html
[85] See the Judgment of the Bonneterie Cevenole SARL vs. Guangdong XINKEDE Ceramic Tile Co. Ltd. in Huna Changsha Intermediate People’s Court.
[86] See15 U.S.C§1121
[87] See15 U.S.C§1114
[88] Polaroid Corp. V. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)
[90] ALPO Petfoods V.Ralston Purina Co., 913 F2d 958 (D.C.Cir. 1990)
[91] See15 U.S.C§1114
[92] See Article 213 in Criminal Law of the People's Republic of China;
[93] See Article 214 in Criminal Law of the People's Republic of China;
[94] See Interpretation on several issues regarding the Application of Laws in Handling Criminal Cases of Infringement on Intellectual Property Rights;
[95] Id;
[96] http://www.chinaiprlaw.cn/file/2008031812792.html
[97] See 18 U.S.C.§ 2320
[98] China's IPR Regime, by Mr. Wang Qishan The Wall Street Journal on June 17, 2008
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