By Luo Yanjie
Trademark infringement, trademark right protection, trademark application, trademark agency, trademark lawsuit, trademark administrative complaint, trademark custom record, trademark infringing products seal, trademark lawyer, trademark complaint, trademark administrative punishment, trademark infringement claim, trademark lawsuit compensation, trademark law, crime of trademark infringement, crime of trademark counterfeit, crime of sales of fake trademarked products, crime of illegal manufacture & sales of illegally manufactured trademark,
By the latest logistics (note: the link is in Chinese) from State Administration of Industry and Commerce of China (SAIC), by the end of June 2012, the trademark applied in China has totaled 10,636,000 pieces, with 7,175,000 million pieces have been approved, among which 6, 090,000 pieces are still valid now. All these data are at the position of Top 1 around the world. And that shows more and more Chinese companies have paid their attention to the trademark exploitation and protection.
But to be worried is, in China, the infringement against trademark is still severe, and in the market there could be found amounts of knockoffs or copycats. That was mainly resulted by the poor enforcement and punishment by Chinese law against the trademark infringement, and thereby bring a large number of merchants with no afraid of legal penalties. Yet, on the other hand, the delay or omission for right protection also contributes to the widespread of the infringement. Once the right holder could combat the trademark infringement with the full exercise of their rights in law, the arrogance of infringer could be combated. And the following is the ways for holders to protect their rights and the pros and cons accompanied with them.
I. Negotiation
Advantage: could help the holder protect their rights instantly and effectively, with no lawsuits shall involve the parties, and on the other hand, it could conceal the infringement by the wrongdoers from the public knowing.
Disadvantage: the success of negotiation mainly depends on infringer’s admission of their fault, and their respect on reputation. But to some apparent malicious infringers, the negotiation will not help, or may even bring a worse consequence for it share the time to infringer to conceal the evidences.
Applicable object: for those who admire the commercial reputation, like big-scale companies, a lawyer’s letter to demand the negotiation on compensations is feasible.
II. Administrative complaint
By Article 53 of Trademark Law:
“Where a dispute arises from any of the acts of infringement of the exclusive right to use a registered trademark provided for in Article 52 of this Law, the parties involved shall settle the dispute through consultation…The administrative authority for industry and commerce may, upon determining the infringement has taken place, order the infringer to immediately stop the infringing act, confiscate and destroy the infringing goods and any implements specifically used to manufacture the infringing goods and counterfeit representations of the registered trademark, and may impose a fine. …”
Also by the law, the department of administration may “inquir” and “seal” the infringing products.
Advantage: the administrative complaints is a effective measure to right holder to prevent the infringement against trademark, and the demands on evidences are low (only the preliminary evidences are required and the SAIC as well as its local offices will actively conduct the investigation), and it may warn the infringer (a fine could be posed)
Disadvantage: the right holder could not get the compensation, and the administrative department does not handle the disputed infringement, like the disputes arising from the contract, and in the mean time, some regions of China is with local protectionism, the local governments will not investigate or punish the companies registered there after the complaints.
Applicable objects: obvious infringer to the trademark.
III. Civil lawsuits
Advantage: once the legal decision could be enforced, the compensation will be guaranteed. And with the preservation prior to the lawsuit or applied during it could help to seal the infringing products or property.
Disadvantage: the lawsuit may be lasted for a long time, and the case shall go through 1st, 2nd and enforcement phrase, and the costs thereby paid will be higher than administrative complaints and negotiation. The right protection fees paid in advance include lawsuit fee and attorney fee, but surely such fees shall be finally taken by the infringers. Nevertheless, considering the facts in the trademark dispute is clear for most times, therefore the consensus on the compensation in the 1st distance is not rare, and whereby the dispute could be settled within months.
Applicable objects: all the trademark infringers.
IV. Custom house record protection
The legal service: by the “REGULATIONS OF THE PEOPLE’S REPUBLIC OF CHINA ON THE CUSTOMS PROTECTION OF INTELLECTUAL PROPERTY RIGHTS”, once the right holder applies the custom record, then it has the right to apply to the local custom houses for the product seal with the reference to the right indicated on the certificate, also the custom house may actively detain such infringing articles when detected. And the custom will conduct an investigation on the claimed infringement, once the infringement is established, the articles will be confiscated. (for more details, please check “How to Apply for the Trademark Record in China Custom”)
Advantage: just like those of administrative complaints, it could curb the infringement immediately.
Disadvantage: more limited in nature as compared with the administrative complaints, for it could only be applied to the import and export through custom houses, and could not involve the local manufactured products which shall not through the custom houses.
Applicable objects: the infringer enrolling in the import and export
V. criminal combat
By Article 213-215, there has been provided 3 crimes concerning the trademark infringement in the Criminal Law: crime of trademark counterfeit, crime of sales of fake trademarked products, crime of illegal manufacture & sales of illegally manufactured trademark.
Advantage: the effect is obvious, especially to warn the infringer.
Disadvantage: with a high threshold, like to the crime of trademark counterfeit and crime of sales of fake trademarked products, the threshold is more than RMB 50, 000 resulted by the illegal operation, more than RMB 50,000 of the crime of sales of fake trademarked products, and illegal operation amount of more than RMB 50,000 or illegal income of more than RMB 30, 000 of the crime of illegal manufacture & sales of illegally manufactured trademark. Although the amount legally demanded is not high, in facts, the aforesaid amounts are difficult to prove. Furthermore, the criminal combat could only be conducted on “simple copy” to the trademark, namely identical. But to the malicious knockoff with a few differences, the criminal punishment could not cover.
Applicable objects: the infringer of simple copy and with a large scale.
Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU’s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)
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You Yunting
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youyunting@debund.com, yytbest@gmail.com
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