Trade Marks & Copyright 2025 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 signatory of the 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 these 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, such as, 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 among 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.

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 Regulations of the Chinese Trademark Law, a registered trade mark can be used on goods, packaging of goods, illustrative books or other attachments. It can be denoted as a “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 models;
• 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 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 about this in academic circles.

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 must 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 created, provided that the exercise of such copyright does not infringe upon the copyright in the joint work as a whole.

According to the 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; and
• the right of performance; etc.

Among these, 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 the copyright.

Moral right is an important aspect 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.

Copyright protection starts from the creation 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, this 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. In the case of 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 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.

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.

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

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 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 an application has been 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.

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.

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

• the name and address of the applicant;
• a clear trade mark sample in electronic form with high resolution;
• the class and goods/services of the items covered;
• a 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 addition to the CNY 270.

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 notice.

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.

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 (ie, incorrect name or address) due to negligence, 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 a 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.

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 will have to re-designate the international registration into China.       

An opposition can be filed within three months after the publication of a trade mark. 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 the trade mark’s publication by the WIPO, which is also non-extendable. Supplementary evidence can be filed within three months from the filing of opposition.

If the revocation/cancellation is based on an absolute reason, there is no limitation to file. If the revocation/cancellation is based on relative reasons, it must be filed within five years from the date of registration. 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.

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

An opposition or revocation/cancellation 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 or revocation can also be filed based on prior rights, such as a prior trade mark right, a well-known trade mark, prior-use right, prior copyright, prior trade name right, etc. There is no explicit provision regarding dilution.

Regarding copyright, there is no independent action to cancel it.

There is no expungement or re-examination procedure.

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

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

The official fee is CNY450 for filing an opposition, CNY675 for filing revocation/cancellation, and CNY450 for filing cancellation. 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. Usually the CNIPA will make a decision in about one year.

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.

Regarding revocation/cancellation, this differs from opposition in that there is an evidence-exchange procedure. Usually the CNIPA will make a decision in about one year.

The opposition and invalidation must be filed with the CNIPA. This can be filed against partial goods.

After the decision on opposition is made, only the opposed party is allowed to file an appeal to the appeal board, whereas both parties are allowed to file litigation before the Beijing Intellectual Property Court if dissatisfied with the revocation/cancellation decision.

Since this is an administrative procedure, no award is involved.

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) that is 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 a 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 must 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 trade mark 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 misunderstandings. 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 a licence 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 assignment and licence must 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 is the assignee recognised as 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 misunderstandings.

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’s exclusive right or the copyright.

The legal claims available to a trade mark or copyright owner pursuing infringement include ceasing of the infringement and compensation for losses. 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 differ in China.

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 trade mark 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 that the elements may vary for different types of infringement.

A trade mark owner can bring claims for dilution or cyber-squatting. 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. Cyber-squatting 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:

• an infringer using someone else’s work;
• the use of a work 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.

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 to prove that the mark had 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 uncertain as to 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 court 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. The trade mark should preferably be registered in China. However, 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 will still be protected under certain circumstances, such as if there is a copyright agreement between the author’s home country or country of permanent residence and China, or if the works are protected under an international treaty to which both countries are signatories, etc.

An alleged trade mark or copyright infringer can initiate a lawsuit requesting confirmation of non-infringement. The lawsuit for confirmation of non-infringement may be filed by a specific party which is warned of infringement by an intellectual property rights holder who fails to initiate a lawsuit within a reasonable period.

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

The small claims procedure may 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.

Trade Mark Infringement Actions

Regarding trade marks, the CNIPA’s decisions that have influence on the registration status of registered trade marks will have an influence on infringement actions. If the CNIPA issues a decision to cancel a registered trade mark, the exclusive right to use such registered trade mark will be terminated from the date of publication of the decision. The decision might not influence a pending litigation suing infringement acts that occurred before the trade mark cancellation date. If the CNIPA issues a decision to declare the invalidation of a registered trade mark, the exclusive right to use such registered trade mark will be deemed void at its inception. The plaintiff will have lost the legal basis for initiating the infringement lawsuit, or will 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 involves the unauthorised copying or distribution of copyrighted content without the permission of the rights holder. The procedures and remedies against copyright infringement could therefore 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 on 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 rights 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.

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.

There are procedural defences and substantive defences.

Procedural 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

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 trade mark infringement.

“Non-Infringement” Defences

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 rights 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.

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.

Regarding non-fungible tokens (NFTs), in a recent judgment the court denied that the trading of NFT digital works was subject to the control of the distribution right and did not apply the “exhaustion of distribution rights” to NFTs. This decision was 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.

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 the relevant laws.

The application for prohibiting infringement could be filed with the court on 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 damage will be caused to the plaintiff’s legitimate rights and interests.

The application for preserving the assets could be filed with the court on 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/preservation 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/preservation measure, otherwise the people’s court will remove the measures.

Grounds for Overturning an Injunction

The defendant may apply to the people’s court for reconsideration of a 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 to impose 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 rights holder or the profits the infringer has earned due to the infringement, or the appropriate royalty rate. If the damages cannot be calculated based on these three factors the 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 using the aforesaid method. The amount of the damages must also include the reasonable expenses of the rights holder incurred in stopping the infringement.

The plaintiff could request that the defendant bear the reasonable costs of the litigation. If the plaintiff wins the case, the judge could request that the defendant bear a certain amount of the reasonable costs, including the attorneys’ fees and the court fees. The amount to be reimbursed will be determined at the judge’s discretion, 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 trade mark registration certificate issued by the CNIPA or a certified copyright registration certificate is required in order to record the trade mark 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 the customs office 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 imports” are genuine, in their original packaging with a reasonable indication of the origin of the products that will not mislead consumers and will not damage the function of the trade mark, and the goods have been imported through legal customs channels into China, the sale of these products will not be regarded as trade mark infringement.

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 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.

Punitive Damages and Bad-Faith Registrations

“Punitive damages” in trade mark infringement cases are receiving attention. Some provincial courts have 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 a 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 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 internet service providers (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 suffered the infringement 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 the rights holder claims are infringing, the ISP or platform operator may require trade mark registration certificates as proof of trade mark rights. While a copyright registration certificate is not mandatory, having such a certificate can provide clearer evidence of ownership and expedite the takedown process.