Trade Marks & Copyright 2024 Comparisons

Trade marks are governed by the Chinese Trademark Law, and copyright is governed by the Chinese Copyright Law, which are both statutory laws. Common-law trade marks and copyright are not recognised.

China is a member of Madrid Agreement Concerning the International Registration of Marks, the Paris Convention for the Protection of Industrial Property, and the Convention Establishing the World Intellectual Property Organization, but they are not self-executing. In addition, China is a signatory of the Universal Copyright Convention and the Berne Convention.

The Chinese Trademark Law governs the rights of foreign trade mark holders. The Chinese Copyright Law and related conventions and treaties govern the rights of foreign copyright holders.

In China’s legal system, there are different types of trade marks/service marks, eg, unregistered marks, registered marks, certification marks and collective marks. According to Article 8 of the Chinese Trademark Law, any sign capable of distinguishing the goods or services of a natural person, legal person or any other organisation from those of other persons – including words, devices, letters, numerals, three-dimensional signs, combinations of colours, sounds, etc, as well as a combination of such signs – is eligible for application for registration as a trade mark.

Trade dress, company names and trade names are not stipulated types of trade marks in accordance with the Chinese Trademark Law, but they can also be protected under certain circumstances, mainly by the Anti-unfair Competition Law.

There are no specific marks that are protected in a different way to ordinary marks.

Generally speaking, marks that are famous outside of China but are not yet in use or registered in China, are not protected.

Distinctiveness is the element required to qualify for trade mark protection. There are two kinds of distinctiveness: one is inherent distinctiveness and the other is acquired distinctiveness. To prove acquired distinctiveness, the applicant needs to file large amounts of evidence of use.

The following factors are considered in an acquired distinctiveness analysis:

• the manner, effect and role of the actual use of the sign, ie, whether it is used in the form of a trade mark;
• the actual and continuous use of the mark in terms of time, territory, scope, sales scale and other business conditions; and
• the degree of knowledge of the mark in the relevant public.

Trade mark owners have the right to renew, transfer, license or pledge a trade mark. These rights are outlined respectively in Articles 40, 42 and 43 of the Chinese Trademark Law and Article 70 of its implementation regulations. All rights granted to trade mark owners persist throughout the term of a mark. These rights are outlined in the Chinese Trademark Law and its implementing regulations. Anti-circumvention is not recognised as a right in China.

If trade mark registration is obtained for more than three years, anyone can file a non-use cancellation. The registrant then needs to file evidence of use, which forms a chain to prove the effective, commercial and true use in the past three years. It is necessary to establish that the defendant has used the sign as a trade mark, in contrast to using it for purely descriptive purposes.

According to Article 63 of the Implementation Regulation of the Chinese Trademark Law, a registered trade mark can be used on goods, packaging of goods, illustration books or other attachments. It can be denoted “registered trade mark” or as “R” with a circle around it.

The “TM” sign can be used to indicate that the sign is used as a trade mark, but this does not indicate registration.

It is not compulsory to use such symbols, however, and there is no statutory consequence for not providing notice of trade mark ownership.

Whether the trade mark can be protected by copyright or related rights depends on whether it conforms with those laws. There is no specific regulation regarding surname. If it meets the requirements of the Chinese Trademark Law, it can be registered as a trade mark. There is no limitation on the scope of trade mark laws based on copyright or related rights in China.

According to Chinese Copyright Law, the following categories may be protected by copyright:

• written works;
• oral works;
• musical, dramatic, folk arts, choreographic and acrobatic art works;
• works of fine art and architecture;
• photographic works;
• audio-visual works;
• drawings of engineering designs and product designs, maps, sketches and other graphic works as well as model works;
• computer software; and
• expressions of folklore; etc.

Normally, industrial designs are protected by patent.

Ingenious intellectual achievements in the fields of literature, art and science, that can be presented in a certain form, qualify for copyright protection.

The copyright in a work belongs to its author. The author of a work is the natural person who has created the work. Where a work is created according to the intention and under the supervision and responsibility of a legal entity or another unincorporated organisation, such legal entity or unincorporated organisation is the author of the work.

A work created by a natural person when fulfilling the tasks assigned to them by a legal entity or another unincorporated organisation is deemed to be a service work. The copyright of such a work is enjoyed by the author, but the legal entity or unincorporated organisation has a priority right to exploit the work within the scope of its professional activities. During the two years after the completion of the work, the author may not, without the consent of the legal entity or organisation involved, authorise a third party to exploit the work in the same way as the legal entity or organisation does. The copyright ownership of works created by artificial intelligence, etc, is a hot topic now, and there is still controversy in academic circles. The authorship right is the author’s right to disclose the relationship between the authorship and the work, and the author can choose whether or not to disclose their authorship. If they decide to disclose their identity, they can sign their real name or another name known to the public. If they decide not to disclose their identity, they can sign with a pseudonym or no signature. Anonymity or a pseudonym is also a way to exercise the right of authorship, or the author’s control of the right of authorship. But the rights granted to authors are the same.

Joint Authorship

Where a work is created jointly by two or more co-authors, the copyright in the work will be enjoyed jointly by those co-authors. Co-authorship may not be claimed by someone who has not participated in the creation of the work.

The copyright of a co-operative work is exercised by the co-authors upon consensus. Where no consensus has been reached and there is no justified reason, no party may prevent another party from exercising their rights, other than transferring and permitting others’ exclusive use, and pledging, and the proceeds obtained shall be reasonably distributed to all the co-authors.

If a work of joint authorship can be separated into independent parts and exploited separately, each co-author will be entitled to independent copyright in the parts that they have created, provided that the exercise of such copyright does not infringe upon the copyright in the joint work as a whole.

According to Chinese Copyright Law, copyright includes the following personal rights and property rights:

• the right of publication;
• the right of authorship;
• the right of alteration;
• the right of integrity;
• the right of reproduction;
• the right of distribution;
• the right of lease;
• the right of exhibition;
• the right of performance; etc.

Among them, the right of reproduction, the right of distribution, the right of lease, the right of exhibition and the right of performance persist throughout the term of a copyright.

Moral right is one of the important contents protected by copyright, in addition to property right. In copyright law, moral right could be regarded as the personal right specified in the law, which includes the right of publication, the right of authorship, the right of alteration and the right of integrity.

Synchronisation right is a hot topic now, and there is still controversy in academic circles. But it should be understood to be protected like any other right.

Copyright protection starts from the creating of a work. Copyright includes both personal right and property right. As to the duration of protection of copyright’s property rights including the right of reproduction, the right of distribution, the right of lease, the right of exhibition, the right of performance, the right of projection, the right of broadcasting, the right of information network dissemination, the right of production, the right of adaptation, the right of translation and the right of compilation, etc, it is 50 years, expiring on 31 December of the 50th year after the first publication of such work. If the work is not published within 50 years after its completion, it will no longer be protected.

If the copyright belongs to a natural person instead of a legal entity, the protection period will be the lifetime of the author and 50 years after their death, expiring on 31 December of the 50th year after their death. If it is a work of joint authorship, the protection term will expire on 31 December of the 50th year after the death of the last surviving author.

There is an exception regarding audio-visual works – no matter whether the copyright belongs to a natural person or a legal entity, the term of protection is 50 years, expiring on 31 December of the 50th year after the first publication of such work. If the work is not published within 50 years after its completion, it will no longer be protected. The rights of authorship, alteration and integrity of an author are unlimited in time.

The copyright mark stipulated in the Universal Copyright Convention is commonly used internationally, that is, © indicates that the work is protected by copyright. The copyright mark must be prominently displayed on the work. However, in most countries, the copyright protection of a work does not depend on the presence or absence of a copyright mark, and China does not mandate that a work must have a copyright mark in order to be protected.

The Regulation on the Collective Administration of Copyright states that the following activities must be carried out by the organisations for collective administration of copyright in their respective own names upon authorisation of the obligees, so as to exercise the obligees’ relevant rights in a centralised way:

• concluding a licence contract of copyright or of a copyright-related right with the user;

• charging royalties from the user;
• transferring royalties to the obligee; and
• participating in litigation or arbitration, etc, that involves copyright or a copyright-related right.

When enforcing copyright in China, a Copyright Registration Certificate issued by the National Copyright Administration of China can prove the prior right of the copyright owner and is accepted by the Chinese enforcement authorities and courts.

Copyright registration is not compulsory; it depends on how the copyright owners intend to exploit and save their copyright. The Copyright Protection Centre of China (CPCC) and competent copyright authorities are in charge of copyright registration. Every copyright owner can apply to register their copyright.

Guidance on the application procedures can be found on the official websites of the CPCC and other copyright authorities.

Where inaccurate information is provided in an application, this can result in a copyright not being registered. However, the applicant can apply to correct inaccurate information and resubmit their application. The CPCC and/or other copyright authorities have the power to decide such issues.

The CPCC and some competent copyright authorities are in charge of copyright registration. Incomplete or inaccurate submission of documents may result in rejection of a copyright registration, but an applicant may resubmit their documents to the CPCC and the competent copyright authorities after completing or correcting the information and documents.

If a work is created by an author, no matter whether it is published or whether it is registered, the work will enjoy the protection of copyright. Trade mark protection generally adopts the principle of registration protection.

Trade mark registration is not the only way to obtain a trade mark right. The wide prior use of a trade mark can also be protected in China, but the protection is not as broad as that of a registered trade mark. The first-to-file principle is mainly used in China.

Trade dress is not a stipulated type of trade mark in China. If a trade mark is considered as lacking distinctiveness, it can still be approved for registration if it can be proved that the mark has acquired secondary meaning.

Trade mark applications should be filed with the China National Intellectual Property Administration (CNIPA), the only trade mark register in China. The CNIPA has an online database which is available to the public.

It is normal and necessary to conduct a search for prior-filed or registered trade marks, so that the applicant can take action against possible obstacles in advance of filing. The examination period is very short, and it is decreasing, so it may be too late to take action after the application is rejected by the CNIPA.

Marks that are already in use but not yet filed with the CNIPA cannot be located through a trade mark search. The CNIPA can do a trade mark search for either word or device marks. The required information includes the trade mark, class and goods/services description to be covered.

China does not allow for the registration of series marks, ie, a number of trade marks within the same application which resemble each other to some respect. Separate trade mark applications must be made for each.

A registered mark is valid for ten years.

Once expired, the trade mark owner can still file a renewal within the grace period (ie, within six months after the expiry date). If no renewal is filed, even in the grace period, the mark will be invalid and the trade mark owner has no way to restore it. A new trade mark application will need to be filed if the trade mark owner still wants to protect the mark in China.

When filing for renewal, no evidence of use or copyright registration is needed. The owner is now permitted to make amendments to the original mark or identified goods or services.

The formal requirements to register a trade mark include the following:

• name and address of the applicant;
• clear trade mark sample in electronic form with high resolution;
• class and goods/services items covered;
• power of attorney signed by the applicant; and
• a copy of the commercial registry (certificate of good standing) for a company applicant, or a copy of the passport or ID card of an individual applicant.

Any natural person, legal person or other organisation can apply for trade mark registration with the CNIPA. Foreign applicants are required to appoint and be represented by an attorney licensed to practise in their country.

Multi-class applications are allowed, but are not recommended.

The official fee for filing an application for one trade mark in one class (within ten items of goods/services) is CNY270. If the number of items exceeds ten, there will be a CNY27 charge for each item over ten.

In China, there is no requirement to use a trade mark before registration is issued. However, according to Article 4 of the Chinese Trademark Law, an application to register a malicious trade mark, not intended for use, will be rejected. Usually, the CNIPA will judge whether the trade mark is not intended for use by the filing number. If the applicant files a large number of applications in one day, the CNIPA may issue an official office.

During the examination of the application for registration, the CNIPA considers prior trade mark applications. If the application is rejected by citing a similar trade mark, the new trade mark can only be registered if the cited mark is removed by filing a non-use cancellation or other action. Currently, the CNIPA is reluctant to accept a letter of consent if the two trade marks are very similar. The rejection can be overcome by the assignment of the cited mark.

The CNIPA will very possibly reject an application if a trade mark is a copy of another well-known trade mark, or if it uses the names of celebrities, martyrs, etc.

If an application is preliminarily approved, an opposition can be filed within a three-month opposition period.

An opposition can be filed based on absolute grounds, such as malicious filing with no purpose of use, lack of distinctiveness, being misleading as to the characteristics of the goods/services, having bad social influence, etc. Anyone can file an opposition based on absolute grounds.

An opposition can also be filed based on relative grounds, which are prior rights such as a prior trade mark right, a well-known trade mark, a prior-use right, etc. Only a prior right owner or related parties can file an opposition based on relative grounds.

During the process of registration, if the goods/service description is non-standard, the CNIPA will issue an official notification and the applicant can amend the description by filing a response to the notification. Otherwise, the applicant is only allowed to delete some goods/services, but not amend the description.

If the name or address of the applicant is incorrect, the applicant can file a recordal of correction with the CNIPA to amend it.

Material alterations are not allowed.

It is possible to divide a trade mark application. However, a divisional application may only be filed after a mark has been partially refused by the CNIPA. The divisional application must be filed with the CNIPA within 15 days of receipt of the refusal notification. A divisional application is irrevocable.

If information is provided incorrectly due to negligence, ie, incorrect name or address, the applicant can file a recordal of correction with the CNIPA to amend it.

However, if the information provided for trade mark filing is provided by improper means, according to Article 44 of the Chinese Trademark Law, where a trade mark registration violates the provisions of Articles 4, 10, 11, 12 and 19 (4) of this law; or if the trade mark registration was acquired by fraud or any other improper means, the examination division of the CNIPA will invalidate the registration at issue. Any organisation or individual may request that the Review Division makes a ruling to invalidate such a registered trade mark.

A trade mark will be refused by the CNIPA based on absolute grounds, such as the descriptive character of the mark, lack of distinctiveness, or misleading character, malicious filing with no intent to use, an applicant acting in bad faith, fraudulent material in the application, or an immoral or offensive meaning.

The absolute refusal grounds are mainly stipulated in Articles 4, 10, 11 and 12 of the Chinese Trademark Law, as follows.

Article 4 states that natural persons, legal persons, or other organisations that need to obtain exclusive rights to their trade marks for their goods or services in production and business operations should apply to the CNIPA for trade mark registration. An application for the registration of a malicious trade mark not for the purpose of use will be rejected.

If the applicant is dissatisfied with the refusal, it may file a review with the Review Division. During the process of review, the applicant may submit arguments and evidence to prove the trade mark can be registered.

If the applicant is dissatisfied with the refusal, it may file a review with the Review Division of the CNIPA. If the applicant is still dissatisfied with the review decision, it can file a lawsuit with Beijing IP Court and then Beijing High Court.

The review of a refusal must be filed within 15 days after the filing, which is non-extendable. Additional arguments can be filed within three months after filing the review.

China participates in the Madrid system.

There is no procedure for notification of an amendment to international trade mark registration designating China. If the goods/services are not accepted, the CNIPA will refuse the mark and there can be no review of a refusal based on non-acceptance of a goods/services description. The applicant has to re-designate the international registration into China.       

An opposition can be filed within three months after the publication of a trade mark, and this is non-extendable. For international trade marks designating China, the deadline for filing the opposition is the last day of the third month after its publication by the WIPO, which is non-extendable. Supplementary evidence can be filed within three months from the filing of opposition.

After filing the opposition, the CNIPA usually issues an official filing receipt within approximately three months. It usually takes the CNIPA 12 months to make a decision on an opposition. The term can be extended for another six months. There is no cooling-off period in China.

An opposition can be filed based on absolute grounds, such as malicious filing with no purpose of use, lack of distinctiveness, being misleading as to the characteristics of the goods/services, having bad social influence, etc. The opposition can also be filed based on prior rights, such as a prior trade mark right, a well-known trade mark, prior-use right, etc. There is no explicit provision regarding dilution.

Any person can file an opposition based on absolute grounds. Only a prior-right owner or an interested party can file an opposition based on prior rights.

A Chinese opponent can file the opposition either personally or through a trade mark agent registered with the CNIPA. A foreign opponent must file opposition through a trade mark agent.

The official fee for filing an opposition is CNY500. If the opposition is filed electronically, the official fee is CNY450. The attorney’s fee is usually calculated according to the complexity of the case, working hours required, etc.

After an opposition is filed, the CNIPA will forward the opposition grounds and evidence to the opposed party and give the opposed party a chance to respond within 30 days from receipt of the notification. The opposed party has an additional three-month period to supplement its evidence. There is no evidence-exchange procedure for opposition.

The CNIPA will not forward the grounds and evidence filed by the opposed party to the opponent for counter arguments. Instead, the CNIPA will make a direct decision on the opposition.

Electronic filing of an opposition is now encouraged, although this has the disadvantage of limitation of evidence.

After the decision on the opposition is made, only the opposed party is allowed to file an appeal. Since this is an administrative procedure, no award is involved.

If the revocation is based on an absolute reason, there is no limitation to file. If the revocation is based on a relative reason, it can be filed within five years from the date of registration. Where the registration has been made in bad faith, however, the owner of a well-known trade mark will not be bound by the five-year time limit. Cancellation based on non-use can be filed after the registration has been in place for three years.

For copyright, after the acceptance of copyright registration and before the registration application is approved, the applicant may request the CPCC to withdraw the application at any time. There is no legal requirement for a time limit for the revocation of copyright.

Trade Marks

Where a registered trade mark has no effectiveness or has a bad social influence, or the registration of a trade mark has been acquired by fraud or any other unfair means, the CNIPA will declare the registered trade mark invalid. Any organisation or individual may request the CNIPA to declare such a trade mark invalid.

The earlier right-owners or any interested party may request the CNIPA to declare a registered trade mark invalid, within five years from the date of registration, if:

• the registered trade mark is a copy, imitation or translation of a prior well-known trade mark;
• it has a misleading geographical indication;
• the registrant is an agent or has another relationship with the true owner of the mark;
• the registered mark is similar to a prior registered or applied mark on similar goods/services; or
• it is an infringement of another’s prior right or a copy of another’s mark, which has been used and has gained a certain reputation.

Where the registration has been made in bad faith, the owner of a well-known trade mark will not be bound by the five-year time limit.

Where a trade mark registrant, in using a registered trade mark, alters the registered trade mark, or changes the name or address of the owner of a registered trade mark, or other matters contained in the registration, without following the prescribed procedure, the CNIPA will order it to make corrections within a specified time limit. If no corrections have been made by the expiry of the specified time limit, the registered trade mark can be cancelled by the CNIPA. Where a registered trade mark has become a generic name for designated goods, or has not been used for an uninterrupted period of three years without justified reasons, any entity or individual may request the CNIPA to cancel the registered trade mark without any reason.

If the registration was obtained using improper means, anyone can file revocation.

There is no expungement or re-examination procedure available.

Copyright

In the case of copyright, an applicant may state in writing the reasons for withdrawing an application for registration. The reasons should be reasonable, sufficient and true.

Trade Marks

If the revocation of a trade mark is based on absolute reasons/grounds, anyone can file it. If the revocation is based on relative reasons/grounds, only a prior right owner or an interested party can file it.

Cancellation based on non-use can be filed by any party.

Copyright

The applicant who withdraws an application for copyright registration may be:

• the applicant for copyright registration;
• the applicant for contract registration; or
• the applicant for alteration or supplementary registration.

Revocation or cancellation of trade marks can only be brought before the Examination Division or Review Division of the CNIPA. If dissatisfied with the decision of the Review Division on such a revocation/cancellation, an administrative litigation can be filed with the Beijing Intellectual Property Court.

Withdrawal of copyright registration can be lodged with the CPCC and some competent copyright authorities.

A partial revocation/cancellation is allowed. The applicant may choose to invalidate or cancel partial goods/services.

After the revocation/cancellation is filed, it can also be withdrawn any time before the decision is made.

Revocation/cancellation is examined case by case. For revocation of the same nature (the same application, same registrant of the disputed mark, same supporting evidence) and filed at the same time, it is possible to request that the examiner examines the cases together. However, decisions are still made on a case by case basis.

Revocation/cancellation and infringement are not heard together. The court for infringement has discretion to determine whether the court will wait for the decision on revocation/cancellation.

According to Article 44 of the Chinese Trademark Law, if a trade mark is registered fraudulently, the CNIPA can declare the registered trade mark invalid. Any applicant may request that the Trademark Review and Adjudication Board declare the registered trade mark invalid.       

Whether copyright registration was filed fraudulently will be reviewed by the CPCC or the court on a case by case basis.

Trade Marks

If a trade mark is assigned, the assignor and the assignee must sign a written assignment form. The assignment application will be filed with the CNIPA. The assignment application can be filed against registered marks or marks in the process of application. All identical or similar marks in respect of identical or similar goods/services in the name of the assignor will be assigned together.

The assignment of a mark will be published after it has been approved by the CNIPA, and the assignee will have exclusive use from the date of publication.

In the case of transfer due to inheritance, enterprise merger, merger or restructuring, and other reasons, the party accepting the exclusive right to use the registered trade mark must file the assignment based on the relevant certificates or legal documents.

Where the exclusive right to use a trademark is transferred according to the judgment of the court, the assignment must also be recorded.

Partial assignment of trade marks is not permitted.

Copyright

An assignment of a copyright requires a written agreement. The agreement should be registered with the CPCC or competent copyright authorities, to protect both parties’ interests. Notarisation and legalisation of an agreement are not necessary. The copyright owner may transfer part of the property right in the copyright.

If the copyright owner is a natural person, after their death, the right to use the copyright and the right to receive remuneration will be transferred in accordance with the provisions of the inheritance law within the period of protection provided by law.

For the purpose of public records, a licence must be filed against only registered marks, as required by the CNIPA.

For the licensing of unregistered marks, there is no specific provision. A contract between a licensor and licensee regarding an unregistered mark is usually deemed as valid.

All three types of licence – exclusive licence, non-exclusive licence and sole licence – can be recorded. The licence term must be within the validity period of the registration.

It is recommended that a written copyright licence agreement should be signed and registered with the CPCC or competent copyright authorities. A written agreement that is signed and registered will protect both parties’ interests and effectively reduce the risk of disputes caused by misunderstanding. A copyright property right can be licensed through either a sole licence or non-exclusive licence. Normally, the copyright owner can exploit the work even if the copyright has been licensed. The term of licences should not exceed the validity term of the copyright itself. The details of the licence may be agreed upon by contract between the parties.

The trade mark under application process is allowed to be assigned, but is not allowed to be licensed. The use of the trade mark is not taken into consideration.

This does not apply in the field of copyright.

The assignment and licence shall be recorded with the CNIPA. If they are not, neither the assignment nor licence can be used against bona fide third parties. After the approval of the assignment or licence by the CNIPA, the CNIPA will publish the assignment or licence in the Trademark Gazette.

Only after receiving the approval of the CNIPA can the assignee be the trade mark owner in China. Before the approval of the CNIPA is obtained, the assignor remains the owner of the mark in China.

For copyright, a written agreement and its registration will protect both parties’ interests and effectively reduce the risk of disputes caused by misunderstanding.

The personal right of a work is the exclusive right of the author and cannot be transferred or deprived. Even if all the property rights in copyright belong to others, the rights of publication, authorship, alteration and integrity of the work still belong to the author.

The author has the right to authorise others to exercise the personal right in the copyright. Under such authorisation, any infringement or improper use of the personal right of the author will violate the moral rights of the author if the infringement or improper use is not agreed by the author. Therefore, the author has the right to terminate the contract and withdraw the authorisation.

Trade Marks

A trade mark is considered intellectual property. It can be subject to rights in rem, assigned by way of security, or levied in execution.

Pledgor and pledgee must conclude a written contract regarding the pledge of a trade mark which is assignable. Same or similar marks on the same or similar goods/services must also be included in the pledge contract. Pledge registration is filed with the CNIPA.

Copyright

To create a pledge over a copyright property right, there must be a written contract and the pledge must be registered with the CPCC. The contract comes into effect as of the date of registration. The written contract preliminarily creates the pledge, and registration makes the contract valid and enforceable against third parties. Registration of the pledge contract is therefore effectively compulsory, even if the registration of copyrights themselves is not compulsory.

Infringement claims must be brought within three years, starting from the day the right owner or the interested party becomes aware, or should have become aware, of the infringement and the infringer. If the infringement lawsuit is initiated after the expiration of the three-year statute of limitations, and if the infringing act continues at the time the action is initiated, the court will order the defendant to cease the infringement within the validity period of the trade mark exclusive right or the copyright.

Ceasing the infringement and compensating for losses are the legal claims available to a trade mark or copyright owner pursuing infringement. The legal claim for an “apology to the rights owner” is often applicable only when personal rights have been harmed. Therefore, in trade mark infringement disputes that solely involve property rights, it is unlikely that this legal claim will be supported. However, in copyright infringement cases, it may be supported.

Registered and Unregistered Trade Marks

The protections of registered trade marks and unregistered trade marks are different in the PRC.

Unregistered trade marks can only be protected under certain circumstances based on “prior use”, and that through “prior use” the unregistered trade mark has the function of identifying the origin of goods or services. If the unregistered trade mark reaches the “well-known” status, it could be protected in accordance with the Trademark Law. If it obtains “certain influence”, it could be protected in accordance with the Anti-unfair Competition Law as product name, packaging or decoration.

Registered or Unregistered Copyright

Unlike with trade mark rights, once a work is created, the author automatically obtains copyright without the need for registration. Therefore, the claims are the same for registered or unregistered copyright. Types of infringement include direct infringement, indirect infringement, contributory infringement, and others.

The Differences Between Trade Mark and Copyright Infringement

In China, trade mark infringement refers to the use of an identical or similar trademark on the same or similar goods, which may cause confusion. Copyright infringement involves the unauthorised use of someone else’s work, violating the rights of the copyright owner. To successfully claim trade mark or copyright infringement, the corresponding elements need to be proven, bearing in mind, the elements may vary for different types of infringement.

A trade mark owner can bring claims for dilution or cybersquatting. Claims for dilution can be brought when a trade mark owner requests the court to recognise that a trade mark has reached well-known status. For cybersquatting, it is regulated in the Interpretation of the Supreme People’s Court on the Application of Laws in the Trial of Civil Disputes Over Domain Names of Computer Networks.

Copyright Management Information

The Copyright Law in China protects electronic information related to copyright management, but it does not provide a clear definition of what constitutes copyright management information. In Article 26 of the Regulations on the Protection of the Right to Information Network Transmission, “electronic right management information” is defined as “information that indicates the work and its author, the performance and its performer, the recording and video products and their creators, information about the rights holders of the works, performances, and recording and video products, information about the conditions of use, and the digital or coded representation of the aforementioned information”. This definition draws on the wording of relevant provisions in the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. As a member country of these two international treaties, China’s positioning of rights management information aligns with the requirements of the treaties.

The factors for determining trade mark infringement include:

• the use of a mark as a trade mark for identifying the origin of the goods or service;
• the use of an identical or similar trade mark;
• the use of the same or similar goods/service;
• the likelihood of confusion; and
• the absence of exemption of infringement.

The factors for determining copyright infringement include:

• the infringer uses someone else’s work;
• the use of the work is without the permission of the copyright owner; and
• the absence of fair use and exemption of infringement.

Meanwhile, after the examination of the essential elements of the right, a specific review of the infringing acts will be conducted, which may involve the application of the “access and substantial similarity” rule.

These factors are established by statute.

The necessary parties to an action for infringement are typically the rights holder(s) (trademark or copyright owner and rights holders related to copyright) and the alleged infringer. It is possible for “interested parties” who are not the rights holder(s) to file an action for infringement under certain circumstances. The interested parties include the licensee to a contract for the licensed use of registered trade marks or copyright and the lawful heirs of the trade mark registrant or copyright owner.

Trade Mark Licensees

Both the exclusive and non-exclusive licensee may file an action for trade mark infringement. Under the Trademark Law, there are three kinds of licensees, based on the contents of the licence agreement: the monopolised licence, the exclusive licence and the ordinary licence. A monopolised licensee could initiate an action with the people’s court. An exclusive licensee could initiate a civil action with the trade mark registrant or file an action on its own on condition that the trade mark registrant refuses to initiate an action. The ordinary licensee could file the action with an explicit authorisation from the trade mark registrant.

Copyright Licensees

For copyright-related cases, the licensee of an exclusive licensing agreement has the right to sue or apply for pre-litigation measures in their own name against the infringers. In a non-exclusive licensing agreement, the licensee can only initiate legal proceedings if expressly authorised in writing by the copyright owner. The alleged infringing actions should generally occur within the valid period of the licensing agreement and fall within the scope of rights obtained by the licensee.

Action to Stop Infringement

It is possible for a trade mark owner to take action to stop infringement before its mark is registered, if the unregistered trade mark obtained the well-known status under the Trademark Law or reached the status of having “certain influence” under the Anti-Unfair Competition Law based on prior use.

As for copyright, once a work is created, the author automatically obtains copyright without the need for registration, therefore whether the copyright is registered in the administration would hardly have any influence on the copyright owner to take action to stop infringement.

During copyright or trademark infringement litigation, the parties may apply to the court for a third party to join as a co-plaintiff or co-defendant in the ongoing litigation.

Regulations on representative and collective actions are included in the Civil Procedure Law. For joint litigation, it is required that one side or both sides of a civil action consist of two or more parties; the subject matter of action for each party is the same or is of the same kind; the people’s court considers that the disputes of all the parties may be tried concurrently; and all the related parties agree.

Trade mark infringement litigations are handled in accordance with the Civil Procedure Law, but there are hardly any representative or collective actions for trade mark proceedings, as they cannot reach the requirements for joint litigation.

For copyright infringement, copyright owners and rights holders related to copyright can authorise collective management organisations to exercise copyright or related rights. Once authorised, collective management organisations can assert rights on behalf of copyright owners and related rights holders. The collective management organisation is a non-profit legal person that is lawfully formed.

For trade mark infringement cases, it is suggested that the plaintiff initiates trade mark infringement litigation based on a registered trade mark or an unregistered trade mark with sufficient evidence proving that it reached the well-known status. For copyright infringement cases, the plaintiff needs to submit evidence proving their ownership of the copyright or neighbouring rights. The evidence may include drafts, original works, legally published materials, copyright registration certificates, certificates issued by certification authorities, contracts establishing rights, administrative permits, and legally effective judgments determining the rights holder.

Some rights holders may abuse their rights by sending infringement warnings to their competitors, without filing a lawsuit or taking any legal action in a reasonable time, leaving the accused party in an uncertain state regarding whether infringement has been constituted. In such cases, the accused party has the right to file a lawsuit for a declaration of non-infringement, seeking clarification on the existence of any infringement and eliminating the state of uncertainty.

Courts With Jurisdiction

The first instance of trade mark or copyright infringement cases is generally handled by a primary people’s court. The second instance is handled by the people’s court at the next level. The party who deems that an effective judgment or ruling is erroneous may file a petition for retrial with the people’s court at the next higher level. Civil and administrative cases involving recognition of well-known trade marks fall under the original jurisdiction of IP courts and intermediate people’s courts; and may also fall under the original jurisdiction of a basic people’s courts upon approval by the Supreme People’s Court.

Costs Incurred

The costs incurred before filing a trade mark or copyright lawsuit are mainly fees rendered during evidence collection, which are investigation fees, notarisation fees, translation fees, etc. The parties in trade mark or copyright litigation are not required to be represented by a lawyer. The parties may retain one or two litigation representatives, who could be lawyers or legal service workers, close relatives or staff members and citizens recommended by the community, or an entity related to a party or citizens recommended by a relevant social group.

Foreign Trade Mark or Copyright Owners

Foreign trade mark or copyright owners can bring infringement claims in China. However, it is necessary for the trade mark to be registered in China. If the trade mark is not registered, it may still be protected under certain circumstances. Copyright registration is not required for foreign copyright owners in China. The work could still be protected under certain circumstances, such as if there is a copyright agreement between the author’s home country or the country of permanent residence and China, or if the works are protected under an international treaty to which both countries are signatories, etc.

The standards for initiating a lawsuit are as follows:

• the plaintiff is a citizen, legal person or any other organisation with a direct interest in the case;
• there is a specific defendant;
• there are specific claims, facts and reasons; and
• the case is within the scope of civil actions accepted by the people’s courts and under the jurisdiction of the people’s court in which the action is initiated.

There are no special provisions for lawsuits in trade mark or copyright proceedings that differ from non-intellectual property proceedings. It is possible to supplement pleadings with additional arguments after the acceptance of a case and this will be before the end of court debate in the first instance. It is also possible for a defendant to initiate a counterclaim. If the counterclaim filed by the defendant and the claims of the plaintiff are based on the same legal relationship and there is causation between such claims, or the counterclaim filed by the defendant and the claims of the plaintiff are based on the same facts, the people’s court will try them concurrently.

It appears unnecessary for the defendant to initiate a lawsuit as a response. If the defendant initiates a lawsuit for confirmation of non-infringement against the plaintiff as a response, this lawsuit would probably be transferred to the court in charge of the infringement lawsuit, where the plaintiff of the prior infringement lawsuit could file an objection of jurisdiction and point out the existence of the former infringement lawsuit.

The alleged infringer could initiate a lawsuit requesting confirmation of non-infringement. The lawsuit for confirmation of non-infringement could be filed by a specific party which is warned of infringement by an intellectual property right-holder who fails to initiate a lawsuit within a reasonable period.

A potential defendant in a trade mark case could initiate trade mark cancellation or invalidation action with the CNIPA against the registered trade mark involved in the trade mark dispute. The potential defendant could prepare evidence proving its “fair use” of the relevant trade mark, the “non-infringement defence” or the “prior use” defence.

The small claims procedure could be applied to resolve small trade mark or copyright claims. It is applicable in first-instance cases and can be applied by a primary people’s court or its detached tribunal. This procedure is suitable for civil cases characterised by clear facts, well-defined rights and obligations, and minor disputes resulting in a one-instance final judgment. It cannot be applied if a foreign party is involved.

The decisions of the trade mark or copyright office can have some influence on infringement actions, but civil courts are not bound by these decisions and have the authority to make their own determinations based on the evidence presented before them.

Trademark Infringement Actions

For trademark infringement actions, the CNIPA’s decisions that have influence on the registration status of the registered trade marks will have influence on infringement actions. If the CNIPA issues a decision to cancel a registered trade mark, the right to use such a registered trade mark exclusively shall be terminated from the date of publication. The decision might not influence a pending litigation suing infringement acts incurred before the trade mark cancellation date. If the CNIPA issues a decision to declare the invalidation of a registered trade mark, the right to use such a registered trade mark exclusively will be deemed void at the inception. The plaintiff would have lost the legal basis for initiating the infringement lawsuit, or would not be supported in the pending lawsuit.

Copyright Infringement Actions

For copyright infringement actions, the copyright holder can file a complaint with the copyright office in the jurisdiction where the infringement occurred or where the infringing results have taken place. Upon receiving the complaint, the copyright office will investigate the alleged infringement and could impose administrative penalties on the infringer. If the infringement is suspected to be a criminal offence, it will be transferred to the judicial authorities. If the party involved is dissatisfied with the decision made by the copyright administrative department, they can apply for administrative reconsideration or file an administrative lawsuit in accordance with the law.

A counterfeit mark is an unauthorised mark identical with or substantially similar to a registered trade mark, and copyright counterfeiting refers to the unauthorised reproduction, distribution or public display of copyrighted works. The procedures and remedies against counterfeiting include administrative enforcement, civil litigation and criminal liability. Criminal liability can be imposed on a party for counterfeiting. The Criminal Law of China includes provisions on constituting crimes for counterfeiting trade marks or copyright under certain circumstances.

Bootlegging is one kind of copyright infringement act. This appears to involve the unauthorised copying or distribution of copyrighted content without the permission of the rights holder. Therefore, the procedures and remedies against copyright infringement could be applied to bootlegging.

There are no special provisions for lawsuits in trade mark or copyright proceedings. In China, there are specialised intellectual property courts to handle intellectual property cases, but most first instance trade mark and copyright infringement cases are handled in the primary level court. Trade mark and copyright infringement litigations are handled in accordance with the Civil Procedure Law of the PRC. These cases are determined by a collegial bench, which may be formed of judges and jurors, or only of judges. Technical judges are not required in these cases. There must be an odd number of members of a collegial bench. Civil cases tried by simplified procedures are tried by a single judge.

Generally, the parties do not have any influence on who is the decision-maker. However, under certain circumstances, the parties could request disqualification of a judge, court clerk, interpreters, identification or evaluation expert, or surveyor, either verbally or in writing.

Facilitating Infringement Litigation

In China, holding a trade mark or copyright registration can provide certain litigation benefits to the right holder. The trade mark law protects registered trade marks, and unregistered trade marks are under protection only in special situations. In the case of a registered trade mark, the trade mark owner can file a litigation against infringement directly, while for an unregistered trade mark, evidence proving the “prior use” and reputation of the trade mark need to be submitted. Copyright protection in China arises automatically upon the creation of an original work. However, registering copyrights with the CPCC or other recognised copyright registration institutions can provide evidence of ownership and facilitate infringement litigation.

Protection Against Cancellation/Invalidation

After obtaining trade mark registration, the trade mark owner should keep using the trade mark, otherwise the trade mark might be cancelled for “non-use” over three consecutive years. With regard to an invalidation procedure, a trade mark registered for more than five years is comparatively stable and a third party would need to prove that the registration is in bad faith in order to invalidate it.

“Similar Goods” and “Similar Services”

“Similar goods” refers to goods that are identical or similar in terms of function, purpose, manufacturing sector, distribution channels, and consumers. “Similar services” refer to services that are similar in terms of purpose, content, method, and target customer. The important factor is that the use of a similar mark creates a likelihood of confusion among consumers regarding the source of the goods or services.

In accordance with the Civil Procedure Law, lawyers and other agents ad litem have the right to investigate and collect evidence. If the evidence could not be collected by the party and its litigation representative, the party may apply in writing to the people’s court for investigation and collection within the evidence producing term.

A people’s court has the authority to investigate and collect evidence from the relevant entities and individuals, who may not refuse to co-operate with such investigation and evidence collection.

According to the regulations, the parties concerned may apply to the people’s court to have one or two experts appear in court to offer answers to specialised questions relating to the case. The judges and parties concerned may interrogate the experts that appear in court. Upon the approval of the people’s court, the experts – as applied for by each party concerned – may express their opinions on the issues relevant to the case.

The experts and/or survey regarding the likelihood of confusion, secondary meaning, and the generic quality of the mark are considered as ordinary evidence which is not decisive. The courts will not reach a decision based only on the experts’ opinions. Other supporting evidence must also be submitted.

The typical costs include investigation fees, notarisation fees, translation fees paid to the qualified translation firm (if documents in foreign languages are involved), attorneys’ fees and expenses, and court fees.

Trade mark and copyright infringement can constitute both administrative and criminal offences in China.

Administrative Offence

Regarding an administrative offence, the trade mark holder could file a complaint with the administration for market supervision, when trade mark infringement disputes arise. For copyright infringement actions, the copyright holder can file a complaint with the copyright office in the jurisdiction where the infringement occurred or where the infringing results have taken place. If an infringement is constituted, the administrations have the power to order immediate cessation of infringement, to confiscate and destroy the infringing goods/copies, and to impose fines. 

Criminal Offence

Trade mark or copyright infringement can be pursued as a criminal offence under the Criminal Law. The public security bureaus and the People’s Procuratorate are responsible for investigating and prosecuting criminal trade mark infringement cases. Trade mark infringement may include the crimes of counterfeiting registered trade marks, selling goods with counterfeit registered trade marks, and illegally manufacturing or selling trade marks without authorisation. Copyright infringement may include the crime of infringing copyright. For the aforementioned crimes with serious circumstances, the infringer may be sentenced to imprisonment for up to three years along with a fine, or solely a fine. For particularly severe cases, the infringer may be sentenced to imprisonment for three to ten years, along with a fine.

The specific statues governing such offences are in the Trademark Law, Copyright Law and Criminal Law of the PRC respectively.

There are procedural defences and substantive defences. For procedural defences, the alleged infringer could file opposition against jurisdiction, challenge the qualification of the plaintiff, prove the legitimate sources of the allegedly infringing goods, etc.

Substantive defences include “fair use” or “prior use”. The alleged infringer could also try to prove that the mark in question is not used as a “trade mark” as it does not have the function of “distinguishing the origin of the goods/services”. The alleged infringer could also challenge the effectiveness of the trade mark right, as the status of the trade mark right might be influenced by official decisions. If the trade mark is cancelled or invalidated during the litigation, this will influence the result of the litigation against the trade mark infringement.

Defences against trade mark infringement also include “non-infringement” defences, claiming both the trade marks and the goods involved are not identical or similar, and/or no confusion would likely be caused due to the use of the mark in question. The alleged infringer could also challenge the use status of the trade mark involved. If the trade mark registrant cannot prove their use of the trade mark within the three years prior to the infringement litigation being filed, the alleged infringer will not bear liability for compensation.

In China, the concept of fair use exists in both the Trademark Law and Copyright Law. The Trademark Law regulates that the right holder cannot prohibit the legitimate use of generic names, designs, or models of goods, or direct indications of the quality, main raw materials, functions, uses, weight, quantity, and other features of goods, or the place name in the trade mark. The Copyright Law provides for specific circumstances where certain uses of copyrighted works may be permitted without the owner’s consent, such as for the purposes of news reporting, teaching, scientific research, or personal study.

The Copyright Law does not recognise an exception to copyright infringement based on satire or parody. It is still controversial whether parody should enjoy copyright protection. For satire, it might be considered an independent subject of copyright, but as it incorporates elements of the original copyrighted work, there may be infringement risks.

There is no statutory exception to trade mark or copyright infringement based on the right to free speech or information.

According to Article 24 of the Copyright Law, individuals are permitted to use a published work for the purposes of the user’s own private study, research or self-entertainment, without permission from the copyright holder or the need to pay remuneration. It is necessary for the user to indicate the author’s name or pseudonym and the name of the work, and their use should not impede the normal use of the work or unreasonably harm the legitimate rights and interests of the copyright holder.

Internet service providers (ISPs) may be exempt from liability for trademark or copyright infringement if they meet certain conditions. They may only provide searching or linking services without providing content, and they may have to prove that they did not have actual knowledge of or had no reason to know about infringing content. Additionally, ISPs must promptly take the necessary action to remove or disable access to infringing content upon receiving a notice from the rights holder.

ISPs are required to establish a notice-and-takedown system, allowing rights holders to submit notices requesting the removal or disconnection of infringing content. ISPs must implement necessary measures such as content filtering and monitoring, etc, to discourage and address infringing activities.

In China, the Trademark Law and Copyright Law do not have explicit provisions for “exhaustion of rights”. The first sale of a product bearing a trade mark can exhaust the owner’s rights to that specific item, however, meaning that the trade mark owner has no right to prohibit others from reselling or transferring the product in the market.

Regarding copyright exhaustion, China follows the principle of “exhaustion of distribution rights", which means that once the original or copies of a work have been sold or lawfully transferred, the new owner of the original or copies can resell or give away the same original or copies without the need for permission from the copyright holder regarding the distribution right.

For NFTs (non-fungible tokens), a recent judgment shows that the court denies that the trading of NFT digital work is subject to the control of the distribution right and does not apply the “exhaustion of distribution rights” to NFTs. This decision is based on the statutory principles of the Chinese Copyright Law that the distribution right in China is limited to the transfer of tangible carriers that are attached to the work.

According to Article 24 of the Copyright Law, libraries, archives or similar institutions, are permitted to use a published work for the purposes of display or preservation of a copy of the work, without the permission of the copyright holder or the need to pay remuneration. It is necessary for the user to indicate the author’s name or pseudonym, and the name of the work, and their use should not impede the normal use of the work or unreasonably harm the legitimate rights and interests of the copyright holder.

Application for an Injunction

Trade mark or copyright holders have access to injunctive relief measures to protect their rights. A judge has discretion in ordering remedies based on the specific circumstances of the case. Application for a preliminary injunction can be filed with the competent court before instituting legal proceedings or in the middle of legal proceedings, requesting measures prohibiting infringement or preserving the assets in accordance with relevant laws.

The application for prohibiting infringement could be filed with the court under the condition that the plaintiff has evidence proving that another party is engaged in (or will soon engage in) an act of infringement and that (unless they are stopped in a timely manner) irreparable damages will be caused to the plaintiff’s legitimate rights and interests.

The application for preserving the assets could be filed with the court under the condition that the plaintiff has evidence proving that another party might conceal its property or the illegal profits obtained from infringement, and that even if the plaintiff wins the lawsuit, there is no property for enforcement.

Timeline

The applicant may be ordered by the court to provide a bond. After accepting the application, the people’s court must issue a ruling within 48 hours in urgent situations; if it rules to take a preliminary injunction/preservative measure, the measure will be executed immediately. For an application filed before the institution of legal proceedings, the applicant must initiate an action or apply for arbitration in accordance with the law within 30 days after the people’s court has executed the preliminary injunction/preservative measure, otherwise the people’s court will remove the measures.

Grounds for Overturning the Injunction

The defendant may apply for reconsideration with the people’s court against the preliminary injunction within five days of receipt of the ruling. The grounds could be that the plaintiff is not qualified to apply for an injunction, the preserved property does not belong to the defendant, the amount of the preserved property exceeds the amount included in the ruling, and there is no urgency or necessity for imposing the injunction.

The available monetary remedies for trade mark or copyright owners include actual damages, the account of profits derived from the infringement, enhanced damages and statutory damages. Judges have discretion in ordering remedies and will take into consideration factors such as the extent of the infringement, the harm caused to the plaintiff, the infringer’s bad faith, etc.

The calculation of damages in trade mark or copyright cases may be based on factors such as the actual losses suffered by the right holder or the profits the infringer has earned because of the infringement, or the appropriate royalty rate. If the damages cannot be calculated based on these three factorsthe court may grant compensation, in trade mark infringement cases, not exceeding CNY5 million, according to the circumstances of the act of infringement. For copyright infringement cases, the court may grant compensation ranging from CNY500 to CNY5 million.

If the infringement is committed in bad faith and is serious, the plaintiff may request punitive damages, which could be up to five times the amount determined in the aforesaid ways. The amount of the damages must also include the reasonable expenses of the right-holder incurred in stopping the infringing act.

The plaintiff could request that the defendant bear the reasonable costs of the litigation. If the plaintiff wins the case, the judge could request the defendant to bear a certain amount of the reasonable costs, including the attorneys’ fees, as well as the court fees. It is at the judge’s discretion to decide the amount of reimbursement based on the evidence submitted by the plaintiff.

The trade mark or copyright owner could seek relief without notifying the defendant. Notice is not required. If the trade mark or copyright owner sends a warning letter to the infringer and the infringer refuses to stop the infringing act, the warning letter could be used as evidence to prove the infringer’s bad faith in continuing the infringement with full awareness.

Counterfeits

The Chinese legal system provides for customs seizure of counterfeits. For the purpose of customs protection, the owner of intellectual property rights (IPRs) – which might include trade marks, patents and copyrights already approved, granted or registered by the competent state authorities – should record its IPRs with the China General Administration of Customs on the basis of a certificate for each recordation. The trademark registration certificate issued by the CNIPA or a certified copyright registration certificate is required in order to record the trademark right or copyright in the General Administration of Customs (GAC).

If a designated IPR has been successfully recorded with the GAC, the information on the IPR will be added to the official computer system of the GAC to be shared by every customs office within Chinese territory. When customs officers carry out routine inspections of imported or exported goods, they will pay more attention to goods bearing the recorded IPRs. If customs suspects some goods have infringed the recorded IPR, it will notify the IPR owner and, upon application filed by the IPR owner with remittance of the required security bond, customs will detain the suspected goods. The security bond will be based on the value of the suspected goods.

Parallel Imports

Regarding parallel imports, if the products involved in “parallel import” are genuine, in their original packaging with a reasonable indication of the origin of the products that will not mislead consumers about the origin of the products and will not damage the function of the trade mark, and the goods have been imported through the legal customs channels into China, the sale of these products will not be regarded as trade mark infringement.

Settlement discussion and mediation are voluntary procedures and can occur at any stage of the case, depending on the willingness of the parties to reach an agreement. Court mediation is a formal mechanism available to parties involved in civil disputes. Mediation can take place before or during the trial process. The pre-trial mediation starts after the court accepts the case and before the trial. It has its own case number and, generally, it should be finished within 30 days. If no settlement is reached within this period, the case will go to trial. For mediation during the trial, the court may suspend the proceedings to wait for the result.

When a people’s court conducts court mediation, it may be conducted by one judge or by the collegial bench, and the mediation will be conducted on the spot, as much as possible. When a mediation agreement is reached, the people’s court will prepare a consent judgment. A consent judgment will state the claims, facts of the case, and results of the mediation. The judges and court clerk will affix their signatures and the people’s court will affix its seal to the consent judgment, which will be served on both sides. Once a consent judgment is signed by both sides, it becomes legally binding.

If the parties in a civil action reach a settlement by themselves, they may also regulate that the plaintiff or appellant directly withdraws the case, and the court could issue a ruling granting the withdrawal. 

Alternative dispute resolution (ADR) is not a compulsory element of settling a trade mark or copyright infringement case. As indicated in 12.1 Options for Settlement, mediation is a commonly used ADR process in China. Arbitration can be initiated by agreement between the parties, either before or after a dispute arises; therefore disputes can be handled/resolved through arbitration, if agreed by the opposing parties. Other ADR methods, such as negotiation, may also be utilised to resolve trade mark or copyright disputes. In accordance with the Trademark Law, when a trade mark infringement dispute arises, the parties concerned may resolve the dispute through negotiation; if they are reluctant to resolve the dispute through negotiation or the negotiation fails, the trade mark registrant or an interested party may initiate a civil litigation in a people’s court or request the administration for market regulation to handle the dispute.

According to the law, if the current cases depend on the results of the trial of another case which has not been concluded, the current cases will be suspended. In the meantime, the collegial bench of the current proceeding has the right to decide whether to suspend the current case to wait for the result of another proceeding.

A pending invalidation action against a registered trade mark may be reason for the defendant to file an application for suspension of a trade mark infringement litigation. However, the court may not accept this as a strong reason for suspension.

Decisions of the Administration

In trade mark or copyright infringement decisions made by the administration for market regulation or copyright administrative departments, if the parties involved are dissatisfied, they can apply for administrative reconsideration or file an administrative lawsuit in accordance with the law.

Decisions of the Court

In trade mark or copyright infringement judgments made by the first instance court, appeals are typically filed with a higher level court. The appeal process involves submitting a written appeal petition, presenting arguments and evidence, and attending court hearings. The appellate court will review the case, assess the arguments and evidence, and make a decision based on the appeal.

If any party is dissatisfied with the judgment or ruling of the first instance court, they have the right to file an appeal with the higher level people’s court within 15 days from the date of receiving the written judgment, or within ten days from the date of receiving the written ruling. (Parties that are not domiciled within the territory of the PRC have the right to appeal against a first instance judgment or ruling within 30 days.) Upon receiving a written appeal, the original trial court must serve copies of the appeal to the opposing parties within five days. The opposing parties then have 15 days to submit their written statements of defence. (Parties not domiciled within the territory of the PRC have 30 days to submit their statement of defence). The trial of the case will proceed unaffected if the statement of defence is not filed within the specified time.

According to the Civil Procedure Law, a people’s court must complete the trial of an appeal case against a judgment within three months after the appeal is accepted. Any extension of this period under special circumstances requires the approval of the chief justice of the people’s court.

For an appeal case against a ruling, a people’s court must issue a final ruling within 30 days after the appeal is accepted.

The appellate procedure of a trade mark or copyright proceeding is generally the same as the appellate procedure for other civil proceedings.

The people’s court of the second instance will review both the facts of the case and the application of the law in relation to the claims in the appeal.

The people’s court of the second instance will not refer to issues that are not included in the party’s claims, unless the first-instance judgment violates the prohibition of the law, or harms the national interest, the public interest, or the legitimate rights and interests of others.

The rights of publicity or personality are not explicitly regulated in Chinese law. Instead, they are recognised and protected through various legal provisions, including civil rights protection, unfair competition laws, and provisions related to personal rights and reputation. As the rights of publicity or personality include the protection of a person’s name, image, or likeness, they may interact with trade mark and copyright rights in certain situations.

For example, there is no special regulation on using one’s own surname (or name) as a mark. However, it is regulated that in certain domains using the name of a public figure to file a trade mark application would be regarded as “having any other adverse effect” – which is prohibited from registration in accordance with Article 10 of the Trademark Law.

In the sense of copyright law, celebrities may obtain copyright protection for their photos or other creative works.

In the PRC, the Anti-unfair Competition Law can have an impact on trade marks or copyrights. It is generally recognised that under certain conditions, unregistered trade marks can be protected in accordance with the Anti-unfair Competition Law. The Anti-unfair Competition Law also provides protection of other marks such as product names that have a certain influence in the Chinese market, trade names, and domain names. Additionally, the law also covers product packaging or decoration, which may be considered as works under the Copyright Law.

The Anti-unfair Competition Law provides a “supplementary protective role” and it may not contradict the regulations in the specialised intellectual property laws. In areas that are exhaustively regulated by specialised intellectual property laws, the Anti-unfair Competition Law does not provide additional protection.

Punitive Damages and Bad-Faith Registrations

“Punitive damages” in trade mark infringement cases are receiving attention. Some provincial courts issued further explanations on the implementation of “punitive damages” which is regulated in the 2013 Trademark Law. Another key issue is the prevention of bad faith registration. It is regulated in the 2019 Trademark Law that no application for trade mark registration may infringe upon the existing prior rights of others, and that bad-faith registrations by illicit means of a trade mark with a certain reputation already used by another party will be prohibited.

Artificial Intelligence

As for artificial intelligence with respect to copyright laws, in a judgment issued by the Beijing Internet Court in November 2023, the court determined that the plaintiff had copyright over the disputed image which was generated by the plaintiff using AI. The court considered that, based on the criteria for a “work” under the Copyright Law, the disputed image exhibited the plaintiff’s original intellectual input and was recognised as a work, with the related copyright belonging to the plaintiff. The judgment also emphasised that whether content generated using AI constitutes a work requires a case-by-case assessment and cannot be generalised. The court was of the view that the Copyright Law only protects “creations by natural persons”, and that AI models cannot be considered “authors” under the Chinese Copyright Law. The judgment further confirmed that, in general, the rights to images generated using AI belong to the person utilising the AI software. Additionally, the case emphasised that relevant parties should indicate the use of AI technology or models they employ for the creation of an image.

The liabilities of ISPs in China are regulated by the Civil Code and the E-Commerce Law. If an ISP infringes upon the civil rights or interests of another party through its network, it is responsible for the infringement. In cases where network users utilise the network’s services to commit infringements, the party that has been infringed upon has the right to notify the ISP to take necessary action, such as deleting, blocking, or disconnecting links.

To request the removal of infringing material from online marketplaces or platforms, rights holders typically need to provide a notice to the ISP or platform operator. This notice should contain specific information about the infringing material and evidence of ownership or authorisation. If the ISP or platform operator fails to take timely action after receiving the notice, they will be jointly and severally liable with the network user for the additional damages caused.

In order to remove goods that are claimed by the right holder to be infringing, the ISP or platform operator may require trade mark registration certificates as proof of trademark rights. While a copyright registration certificate is not mandatory, having such a certificate can provide clearer evidence of ownership and expedite the takedown process.

Generally speaking, trade mark registration is not mandatory for a company engaged in manufacturing products. However, there is regulation that some products must bear a registered trade mark. For example, cigarettes, cigars and packed cut tobacco may not be produced and sold before obtaining a registered trade mark to be used on the products.

Although copyright protection arises automatically in China upon the creation of an original work, registering copyrights with the CPCC or other recognised copyright registration institutions can provide evidence of ownership and facilitate enforcement actions in case of infringement.

It is suggested that business entities consider trade mark and copyright registration in China to obtain better protection, although this is also not mandatory.