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On December 16, 2011, the Supreme People's Court of China
issued the Opinions on Exerting the Function of Intellectual
Property Rights Judgment to Facilitate Socialist Cultural
Development and Prosperity and Promote Independent and Coordinated
Economic Development (the
"Opinions"). The Opinions provide
several guidelines on the trial of trademark infringement cases,
which mainly touch upon the following issues:
Deliberate plagiarism in bad faith. To
determine whether an alleged infringer has acted in bad faith, the
trial court shall adopt comprehensive criteria by taking into
account the reputation and distinctiveness of trademarks,
similarities between trademarks and designated goods, and whether
the applicant/registrant has the intention to use the mark and the
improper use of the marks, such as trademark squatting and
free-riding activities.
Determination of similar trademarks. It shall
be decided on a case-by-case basis whether two marks are similar.
In general, if relevant marks have similar component elements, they
can be determined as similar trademarks. Where the component
elements of relevant trademarks are not similar on the whole, two
marks could still be considered as similar trademarks if 1) the
prominent parts of mentioned marks are similar and 2) the
plaintiff's mark is far more famous than the accused mark.
Provided that trademarks concerned are both of certain fame or they
have co-existed under special conditions, the actual use status in
the market, history of use and public awareness of both trademarks
as well as the intention of the users should also be weighed when
deciding the similarities between the two marks.
Relatedness of goods. The Classification of
Goods and Services can be deemed as the reference when deciding the
similarities of goods/services, however, the market status is a
vital factor in each specific case. In particular, elements
including function and use, manufacturing sources, sales channels,
target consumers of goods and other factors that may affect the
knowledge of the relevant public should also be taken into
consideration. Relevance of goods should be fully taken into
consideration when a prior mark enjoys prior reputation through
use. Under certain circumstances, those goods that are generally
considered as similar from the view of common knowledge and average
business awareness of the relevant public should be deemed as
similar.
Well-known trademarks. Stricter standards
should be adopted in recognizing well-known trademarks. With
respect to the trademarks that are widely known to the general
public in actual use, the trademark owners' burden of proof
could be reduced regarding the recognition of a well-known
trademark.
Defense to trademark infringement. Identical
or similar trademarks in use are the basis for trademark
infringement. The defense by the genuine trademark owner who does
not possess any prior trademark registration but is accused of
infringing upon another's registered trademark right should be
supported if the registered mark is a copy, imitation or
translation of the genuine owner's unregistered well-known
trademarks, or the trademark registration was applied/registered by
an agent or representative of the genuine trademark owners, or the
registered trademark was plagiarized from the accusing party's
mark that had been used and acquired certain fame.
For more information about the above issue, please refer to:
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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