In order to further strengthen guidance in trademark enforcement, unify enforcement standards, improve the level of enforcement and strengthen the protection of trademark rights, the State Intellectual Property Office formulated the Trademark Infringement Determination Standards on June 15, 2020. The Trademark Infringement Determination Standards are intended to resolve overly principle-based protection provisions in the Trademark Law by adding infringement determination guidance for new situations and issues that have since emerged in judicial practice, thereby improving the level of enforcement. This article briefly introduces the highlights of the Trademark Infringement Determination Standards.
The Trademark Infringement Determination Standards enumerate in detail the criteria and considerations regarding trademark use for determining whether there is infringement. Trademark use includes (1) the use of the trademark on goods, packaging, containers and their transaction documents, (2) the use of the trademark in service locations and service transaction documents, and (3) the use of the trademark in advertising, exhibitions and other commercial activities. In addition, the user’s subjective intent, the manner of use, the manner of promotion, the industry practice, consumer perceptions and other factors shall also be considered.
The Trademark Infringement Determination Standards clarify the element of confusion under the Trademark Law, including the following two circumstances where the use (1) is sufficient to cause the relevant public to believe that the goods or services in question are produced or provided by the owner of the registered trademark or to (2) is sufficient to cause the relevant public to believe that the provider of the goods or services in question and the owner of the registered trademark have an investment, licensing, franchise or cooperative relationship.
The following circumstances are now considered to not fall under Article 60(2) of the Trademark Law on “unknowingly selling infringing goods”: (1) the purchasing channel do not conform to commercial practices and has prices that are clearly lower than the market prices; (2) the refusal to provide accounting books, sales records and other documents, or that those documents are falsified; (3) transfer or destruction of physical evidence, or providing falsified proof or reports; (4) committing a repeat offense after the previous similar illegal activity has been handled; and (5) other circumstances where the party can be presumed to be aware or should have been aware.
Lastly, the Trademark Infringement Determination Standards stipulates new model trademark infringement activities: (1) unilateral change of a registered trademark or use of a combination of several registered trademarks so that it is identical or similar to the registered trademark of another person for the same or similar goods or services to an extent likely to cause confusion, (2) a mark that is registered without a specific designation for color can be freely attached to any color but nevertheless attaches to a color specifically for harnessing the fame of a registered trademark to the extent that is likely to cause confusion with such other registered trademark of another person for the same or similar goods or services; (3) a contractor’s use of goods that are infringing on a registered trademark in the course of contract performance involving materials and labor; (4) an operator engaging in sale of goods with giveaway goods that are infringing; (5) negligence of a market organizer, exhibition organizer, counter lessor, e-commerce platform and other operators in failing to stop the trademark infringing act of any operators in the market, exhibitors, counter lessees, or operators in the e-commerce platform even with knowledge or presumed knowledge of such infringement; or failure, in spite of a lack of knowledge, to take necessary measures to stop the infringement despite notification from a relevant trademark enforcement agency or the trademark rights holder in possession of an effective administrative or judicial instrument; and (6) the registration of a text identical or similar to the registered trademark of another person as a domain name where the trading of goods and services conducted in such domain is likely to cause confusion to the relevant public.