Decision of the Supreme People's Court on Revising 18 Intellectual Property-related Judicial Interpretations Including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II)
Decision of the Supreme People's Court on Revising 18 Intellectual Property-related Judicial Interpretations Including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II)
Decision of the Supreme People's Court on Revising 18 Intellectual Property-related Judicial Interpretations Including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II)
Fa Shi [2020] No. 19
December 29, 2020
The Decision of the Supreme People's Court on Revising 18 Intellectual Property-related Judicial Interpretations Including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II), which were adopted at the 1823rd session of the Judicial Committee of the Supreme People's Court on December 23, 2020, is hereby promulgated and shall come into effect as of January 1, 2021.
Decision of the Supreme People’s Court on Revising 18 Intellectual Property-related Judicial Interpretations Including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II)
(Adopted at the 1823rd session of the Judicial Committee of the Supreme People's Court on December 23, 2020 and effective as of January 1, 2021)
In light of the needs of trial practice, as decided at the 1823rd session of the Judicial Committee of the Supreme People's Court, 18 intellectual property-related judicial interpretations including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II) are revised as follows:
I. Revisions to the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II)
1. The Introduction is revised to read:
"With a view to fairly hearing patent infringement cases, the Interpretations are hereby promulgated in accordance with the Civil Code of the People's Republic of China, the Patent Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other relevant laws and regulations and in the light of the judicial practice.”
2. Article 2 is revised to read:
"Where a claim asserted by a patentee in a patent infringement lawsuit is declared invalid by the Patent Administrative Department under the State Council, a people's court adjudicating the patent infringement lawsuit may dismiss the lawsuit brought by the patentee based on the invalidated claim.
Where there is evidence to prove that the decision of declaring the patent right invalid is revoked by an effective administrative ruling, the patentee may file a new lawsuit.
Where the patentee files a new lawsuit, the lawsuit limitation shall start from the delivery date of the aforementioned administrative ruling as stated in Paragraph 2, Article 2 herein.”
3. Article 6 is revised to read:
“A people's court may interpret the claim for the patent right in a dispute by using another patent which has direct divisional application relationships with a patent in dispute, the patent examination files, and the effective written ruling of establishing and granting patent rights.
The patent examination files include the written documents filed by a patent applicant and a patentee in the process of patent examination, re-examination and invalidation, notifications of patent examination, meeting records, oral hearing records, binding decisions of the patent re-examination and invalidation issued by the Patent Administrative Department under the State Council.”
4. Article 21 is revised to read:
"Where a party, knowing that the products are raw materials, equipment, parts or by-products used for an invention, without the licensing of a patentee, supplies such products to a party for the purpose of production and operation and results in patent infringement, if a right holder alleges that the supplier's act constitutes contributory infringement as specified in Article 1169 of the Civil Code, a people's court shall support such allegation.
Where a party that knows that products and methods are granted patent rights, but without the licensing of a patentee, induces others to infringe a patent for the purpose of production and operation, if the patentee alleges that the inducer's act constitutes inducement of the infringing act as specified in Article 1169 in the Civil Code, a people's court shall support such allegation.”
II. Revisions to Several Provisions of the Supreme People's Court on Issues concerning the Application of Law in the Trial of Patent Dispute Cases
1. The Introduction is revised to read:
"With a view to correctly trying patent dispute cases, the following provisions are set forth in accordance with the provisions of the Civil Code of the People's Republic of China, the Patent Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China, the Administrative Procedure Law of the People's Republic of China and other laws:”
2. Article 1 is revised to read:
"The people's courts shall accept the following types of patent dispute cases:
1. cases concerning disputes over the ownership of the right to apply for a patent;
2. cases concerning disputes over the ownership of patent rights;
3. cases concerning disputes over patent contracts;
4. cases concerning disputes over the infringement of patent rights;
5. cases concerning disputes over the counterfeiting of any patent owned by another person;
6. cases concerning disputes over invention patent royalties during the temporary protection period;
7. cases concerning disputes over the reward or remuneration payable to the inventor or designer of a service invention-creation;
8. cases concerning disputes over a pre-litigation application for behavior preservation;
9. cases concerning disputes over a pre-litigation application for property preservation;
10. cases concerning disputes over liabilities for damage caused due to an application for behavior preservation;
11. cases concerning disputes over liabilities for damage caused due to an application for property preservation;
12. cases concerning disputes over the right of authorship of the inventor or designer of an invention-creation;
13. cases concerning disputes over the confirmation of non-infringement of patent rights;
14. cases concerning disputes over the refund of fees upon invalidation of patent rights;
15. cases concerning disputes over liabilities for damage caused due to malicious initiation of patent right-related litigation;
16. cases concerning disputes over standard essential patent royalties;
17. cases concerning dissatisfaction with a review decision of the patent administrative department under the State Council upholding the rejection of an application;
18. cases concerning dissatisfaction with a decision of the patent administrative department under the State Council for a request to declare a patent right invalid;
19. cases concerning dissatisfaction with a decision of the patent administrative department under the State Council for compulsory licensing;
20. cases concerning dissatisfaction with a ruling of the patent administrative department under the State Council for a compulsory licensing royalty;
21. cases concerning dissatisfaction with an administrative reconsideration decision of the patent administrative department under the State Council;
22. cases concerning dissatisfaction with other administrative decisions of the patent administrative department under the State Council;
23. cases concerning dissatisfaction with an administrative decision of a department responsible for the administration of patents;
24. cases concerning disputes over confirming whether it falls within the scope of protection of patent rights; and
25. other patent dispute cases.”
3. Article 2, Article 3, Article 4, Article 7, Article 18 and Article 19 are deleted.
4. Article 11 is revised to read:
“In any case accepted by the people's court concerning a dispute over the infringement of the patent right for an invention or a dispute over the infringement of a utility model or design patent right in which the patent right has been upheld following an examination carried out by the patent administrative department under the State Council, where the defendant, during the presentation of its defense, requests that the patent right shall be declared invalid, the people's court may nevertheless continue hearing the case.”
5. Article 16 is revised to read:
“The term ‘legitimate rights’ as referred to in Paragraph 3, Article 23 of the Patent Law shall include the legitimate rights or interests enjoyed in respect of work, trademarks, geographical indications, names, business names, portraits, as well as trade names, packaging and decoration that have some influence.”
6. Article 23 is revised to read:
"The limitation of action for patent right infringement is three years, commencing from the date on which the patentee or any other interested party became or should have become aware of the damage to its rights and the obligator. Where a patentee files a lawsuit after the three-year period has elapsed, and the infringement is still on-going at the time the case is filed, the people's court shall order that the defendant cease infringing the patent right during the period of its validity, and the amount of compensation for loss suffered as a result of the infringement shall be calculated over a period of three years, counting backwards from the date on which the patentee filed the case with the people's court.”
7. The order of articles shall be adjusted accordingly.
III. Revisions to the Interpretations of the Supreme People's Court on the Relevant Issues concerning the Scope of Jurisdiction and of the Scope of Application of Laws for Hearing Trademark Cases
1. Article 1 is revised to read:
“The people's courts may accept the following trademark cases:
1. cases of dissatisfaction with the review decision or ruling made by the China National Intellectual Property Administration;
2. cases of dissatisfaction with other administrative acts carried out by the China National Intellectual Property Administration;
3. cases of disputes over the ownership of trademark rights;
4. cases of disputes over the infringement of trademark rights;
5. cases of disputes over the confirmation of non-infringement of trademark rights;
6. cases of disputes over trademark right assignment contracts;
7. cases of disputes over trademark licensing contracts;
8. cases of disputes over trademark agency contracts;
9. cases of applying for suspension of infringement of the right to the exclusive use of a registered trademark before a lawsuit is filed;
10. cases of liability for damage caused due to an application for suspension of infringement of the right to the exclusive use of a registered trademark;
11. cases of applying for preservation of property before a lawsuit is filed;
12. cases of applying for preservation of evidence before a lawsuit is filed;
13. other trademark cases.”
2. Article 3 is revised to read:
"Where a trademark registrant or interested person requests the China National Intellectual Property Administration to settle an infringement of trademark rights, and meanwhile files a lawsuit with the people's court, claiming compensation for its/his damage due to infringement of trademark rights, the people's court shall accept such lawsuit.”
3. Article 4 is revised to read:
"With respect to the cases accepted by the China National Intellectual Property Administration before the Decision on Amending the Trademark Law comes into force, if any party concerned is dissatisfied with a review decision or ruling made after the Decision comes into force, and files a lawsuit with the people's court, the people's court shall accept such lawsuit.”
4. Article 5 is revised to read:
"Unless it is otherwise differently prescribed in this Interpretation, administrative cases in which the party concerned is dissatisfied with the review decision or ruling made by the China National Intellectual Property Administration after the Decision on Amending the Trademark Law comes into force regarding the circumstances listed in Article 4, Article 5, Article 8, Paragraph 1 of Article 9, Items (2) through (4) of Paragraph 1 of Article 10, Paragraph 2 of Article 10, Article 11, Article 12, Article 13, Article 15, Article 16, Article 24, Article 25, and Article 31 of the Amended Trademark Law, which arose before the Decision on Amending the Trademark Law comes into force, and in which the party concerned files a lawsuit with the people's court, shall be examined in accordance with the corresponding provisions of the amended Trademark Law. If any of the other circumstances arise, the cases shall be examined in accordance with the corresponding provisions of the former Trademark Law.”
5. Article 6 is revised to read:
"Where a party concerned is dissatisfied with the ruling made by the China National Intellectual Property Administration regarding a dispute over a registered trademark, which arose when the Decision on Amending the Trademark Law had been effective for one year, and therefore files a lawsuit with the people's court, the case shall be governed by the time limit for filing an application as prescribed in Paragraph 2 of Article 27 of the former Trademark Law. If, when the Decision on Amending the Trademark Law comes into force, the trademark has been registered for less than one year, the case shall be governed by the time limit for filing an application as prescribed in Paragraphs 2 and 3 of Article 41 of the amended Trademark Law.”
6. Article 10 is revised to read:
“Where a case accepted by the people's court regarding a dispute over infringement of trademark rights has been resolved by the administrative department, the people's court shall still examine the facts of the civil dispute between the parties concerned.”
IV. Revisions to the Interpretations of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Civil Cases related to Trademark Disputes
1. The Introduction is revised to read:
“In order to correctly try trademark dispute cases, and in accordance with the provisions of laws such as the Civil Code of the People's Republic of China, the Trademark Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other regulations, the following interpretations are made regarding several issues relating to the application of the law:”
2. Article 1 is revised to read:
“The following acts constitute acts causing other harm to another's exclusive right to use a registered trademark as set out in Item (7) of Article 57 of the Trademark Law:
1. using wording that is identical or similar to another's registered trademark as a business name and displaying it prominently on identical or similar goods, thereby easily causing mistaken recognition on the part of the relevant public;
2. reproducing, imitating or translating another's registered well-known trademark or its main part and using it as a trademark on non-identical or dissimilar goods thereby misleading the public and potentially prejudicing the interests of the registrant of the well-known trademark;
3. registering words that are identical or similar to another's registered trademark as a domain name and using it to carry out electronic commerce business in related goods, thereby easily causing mistaken recognition on the part of the relevant public.”
3. Article 2 is revised to read:
"In accordance with the second paragraph of Article 13 of the Trademark Law, where another's non-PRC-registered well-known trademark or its main part is reproduced, imitated or translated and used as a trademark on identical or similar goods, thereby easily resulting in confusion, civil means to stop the infringement should be undertaken.”
4. Article 3 is revised to read:
"Trademark licences as set out under Article 43 of the Trademark Law include the following three types:
1. ‘exclusive licences’, which means that the trademark registrant licenses a single licensee to use its registered trademark for an agreed period, within a specified territory and in an agreed manner and where the trademark registrant, in accordance with the agreement, may not use the registered trademark;
2. ‘sole licences’, which means that the trademark registrant licenses a single licensee to use its registered trademark for an agreed period, within a specified territory and in an agreed manner and where the trademark registrant, in accordance with the agreement, may use the registered trademark but may not license other parties to use the registered trademark;
3. ‘non-exclusive licences’, which means that the trademark registrant licenses a third party to use its registered trademark for an agreed period, within a specified territory and in an agreed manner and where the trademark registrant can itself make use of the registered trademark and license others to use its registered trademark.”
5. Article 4 is revised to read:
"Materially interested parties under the first paragraph of Article 60 of the Trademark Law include licensees under trademark licensing contracts for registered trademarks, lawful successors to registered trademark property rights, etc.
When the exclusive rights to use a registered trademark are infringed, licensees under exclusive licensing contracts can bring a suit in the people's courts. Licensees under sole licensing contracts can bring a joint suit together with the trademark registrant and can also bring a suit by themselves if the trademark registrant does not bring a suit. Licensees under non-exclusive licensing contracts can bring a suit provided that they have been given clear authorization to do so by the trademark registrant.”
6. Article 6 is revised to read:
"Civil suits that have been brought because of an act of infringement of the exclusive rights to use a registered trademark, shall fall under the jurisdiction of the people's court of the place where an act of infringement under Article 13 or 57 of the Trademark Law has been carried out, of the place where the infringing products are stored, sealed or detained, or of the place where the infringer is domiciled.
The ‘place where the infringing products are stored’ referred to in the preceding paragraph, means the place where large quantities of the infringing products are stored or hidden, or the place where the infringing products are regularly stored or hidden. The place where they are ‘sealed or detained’ means the place where an administrative body, such as the Customs, has sealed up or detained the infringing products.”
7. Article 9 is revised to read:
"The phrase ‘trademark that is identical’ in Items (1) and (2) of Article 57 of the Trademark Law means where the suspected infringing trademark is compared with the plaintiff's registered trademark and the two trademarks essentially have no difference visually.
The phrase ‘trademark that is similar’ under Item (2) of Article 57 of the Trademark Law means where the suspected infringing trademark is compared with the plaintiff's registered trademark and the font, pronunciation or meaning of the words or the composition or coloring of the device is similar, or the overall structure of its combined main elements is similar, or where its three-dimensional shape and combination of colors are similar thereby easily leading the relevant public to mistake the source of the products or to believe that their source has a certain connection to products using the plaintiff's registered trademark.”
8. Article 10 is revised to read:
"Where a people's court makes a determination of whether trademarks are identical or similar in accordance with Items (1) and (2) of Article 57 of the Trademark Law, it shall apply the following principles:
1. using the ordinary powers of observation of the relevant public as the standard;
2. the trademarks should be compared in their entirety and their important elements should also be compared; the comparison should be carried out with the two objects of comparison being kept apart;
3. when considering whether trademarks are similar, the distinctiveness and notoriety of the registered trademark for which protection is being sought should be considered.”
9. Article 11 is revised to read:
“‘Similar goods’ under Item (2) of Article 57 of the Trademark Law means goods that have identical functions, uses, production entities, sales channels, target consumers, etc., or goods that the relevant public would normally consider to have a certain connection and thus easily cause confusion.
‘Similar services’ means services whose purpose, content, method of provision, target users, etc., are identical or services that the relevant public would normally consider to have a certain connection and thus easily cause confusion.
‘Similar goods and services’ means that a certain connection exists between the goods and services that could easily cause the relevant public to be confused.”
10. Article 12 is revised to read:
“Where a people's court determines whether goods or services are similar in accordance with Item (2) of Article 57 of the Trademark Law, it should make an overall determination based on the normal knowledge of the relevant public with regard to the goods or services.
......
Fa Shi [2020] No. 19
December 29, 2020
The Decision of the Supreme People's Court on Revising 18 Intellectual Property-related Judicial Interpretations Including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II), which were adopted at the 1823rd session of the Judicial Committee of the Supreme People's Court on December 23, 2020, is hereby promulgated and shall come into effect as of January 1, 2021.
Decision of the Supreme People’s Court on Revising 18 Intellectual Property-related Judicial Interpretations Including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II)
(Adopted at the 1823rd session of the Judicial Committee of the Supreme People's Court on December 23, 2020 and effective as of January 1, 2021)
In light of the needs of trial practice, as decided at the 1823rd session of the Judicial Committee of the Supreme People's Court, 18 intellectual property-related judicial interpretations including the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II) are revised as follows:
I. Revisions to the Interpretations of the Supreme People's Court on Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II)
1. The Introduction is revised to read:
"With a view to fairly hearing patent infringement cases, the Interpretations are hereby promulgated in accordance with the Civil Code of the People's Republic of China, the Patent Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other relevant laws and regulations and in the light of the judicial practice.”
2. Article 2 is revised to read:
"Where a claim asserted by a patentee in a patent infringement lawsuit is declared invalid by the Patent Administrative Department under the State Council, a people's court adjudicating the patent infringement lawsuit may dismiss the lawsuit brought by the patentee based on the invalidated claim.
Where there is evidence to prove that the decision of declaring the patent right invalid is revoked by an effective administrative ruling, the patentee may file a new lawsuit.
Where the patentee files a new lawsuit, the lawsuit limitation shall start from the delivery date of the aforementioned administrative ruling as stated in Paragraph 2, Article 2 herein.”
3. Article 6 is revised to read:
“A people's court may interpret the claim for the patent right in a dispute by using another patent which has direct divisional application relationships with a patent in dispute, the patent examination files, and the effective written ruling of establishing and granting patent rights.
The patent examination files include the written documents filed by a patent applicant and a patentee in the process of patent examination, re-examination and invalidation, notifications of patent examination, meeting records, oral hearing records, binding decisions of the patent re-examination and invalidation issued by the Patent Administrative Department under the State Council.”
4. Article 21 is revised to read:
"Where a party, knowing that the products are raw materials, equipment, parts or by-products used for an invention, without the licensing of a patentee, supplies such products to a party for the purpose of production and operation and results in patent infringement, if a right holder alleges that the supplier's act constitutes contributory infringement as specified in Article 1169 of the Civil Code, a people's court shall support such allegation.
Where a party that knows that products and methods are granted patent rights, but without the licensing of a patentee, induces others to infringe a patent for the purpose of production and operation, if the patentee alleges that the inducer's act constitutes inducement of the infringing act as specified in Article 1169 in the Civil Code, a people's court shall support such allegation.”
II. Revisions to Several Provisions of the Supreme People's Court on Issues concerning the Application of Law in the Trial of Patent Dispute Cases
1. The Introduction is revised to read:
"With a view to correctly trying patent dispute cases, the following provisions are set forth in accordance with the provisions of the Civil Code of the People's Republic of China, the Patent Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China, the Administrative Procedure Law of the People's Republic of China and other laws:”
2. Article 1 is revised to read:
"The people's courts shall accept the following types of patent dispute cases:
1. cases concerning disputes over the ownership of the right to apply for a patent;
2. cases concerning disputes over the ownership of patent rights;
3. cases concerning disputes over patent contracts;
4. cases concerning disputes over the infringement of patent rights;
5. cases concerning disputes over the counterfeiting of any patent owned by another person;
6. cases concerning disputes over invention patent royalties during the temporary protection period;
7. cases concerning disputes over the reward or remuneration payable to the inventor or designer of a service invention-creation;
8. cases concerning disputes over a pre-litigation application for behavior preservation;
9. cases concerning disputes over a pre-litigation application for property preservation;
10. cases concerning disputes over liabilities for damage caused due to an application for behavior preservation;
11. cases concerning disputes over liabilities for damage caused due to an application for property preservation;
12. cases concerning disputes over the right of authorship of the inventor or designer of an invention-creation;
13. cases concerning disputes over the confirmation of non-infringement of patent rights;
14. cases concerning disputes over the refund of fees upon invalidation of patent rights;
15. cases concerning disputes over liabilities for damage caused due to malicious initiation of patent right-related litigation;
16. cases concerning disputes over standard essential patent royalties;
17. cases concerning dissatisfaction with a review decision of the patent administrative department under the State Council upholding the rejection of an application;
18. cases concerning dissatisfaction with a decision of the patent administrative department under the State Council for a request to declare a patent right invalid;
19. cases concerning dissatisfaction with a decision of the patent administrative department under the State Council for compulsory licensing;
20. cases concerning dissatisfaction with a ruling of the patent administrative department under the State Council for a compulsory licensing royalty;
21. cases concerning dissatisfaction with an administrative reconsideration decision of the patent administrative department under the State Council;
22. cases concerning dissatisfaction with other administrative decisions of the patent administrative department under the State Council;
23. cases concerning dissatisfaction with an administrative decision of a department responsible for the administration of patents;
24. cases concerning disputes over confirming whether it falls within the scope of protection of patent rights; and
25. other patent dispute cases.”
3. Article 2, Article 3, Article 4, Article 7, Article 18 and Article 19 are deleted.
4. Article 11 is revised to read:
“In any case accepted by the people's court concerning a dispute over the infringement of the patent right for an invention or a dispute over the infringement of a utility model or design patent right in which the patent right has been upheld following an examination carried out by the patent administrative department under the State Council, where the defendant, during the presentation of its defense, requests that the patent right shall be declared invalid, the people's court may nevertheless continue hearing the case.”
5. Article 16 is revised to read:
“The term ‘legitimate rights’ as referred to in Paragraph 3, Article 23 of the Patent Law shall include the legitimate rights or interests enjoyed in respect of work, trademarks, geographical indications, names, business names, portraits, as well as trade names, packaging and decoration that have some influence.”
6. Article 23 is revised to read:
"The limitation of action for patent right infringement is three years, commencing from the date on which the patentee or any other interested party became or should have become aware of the damage to its rights and the obligator. Where a patentee files a lawsuit after the three-year period has elapsed, and the infringement is still on-going at the time the case is filed, the people's court shall order that the defendant cease infringing the patent right during the period of its validity, and the amount of compensation for loss suffered as a result of the infringement shall be calculated over a period of three years, counting backwards from the date on which the patentee filed the case with the people's court.”
7. The order of articles shall be adjusted accordingly.
III. Revisions to the Interpretations of the Supreme People's Court on the Relevant Issues concerning the Scope of Jurisdiction and of the Scope of Application of Laws for Hearing Trademark Cases
1. Article 1 is revised to read:
“The people's courts may accept the following trademark cases:
1. cases of dissatisfaction with the review decision or ruling made by the China National Intellectual Property Administration;
2. cases of dissatisfaction with other administrative acts carried out by the China National Intellectual Property Administration;
3. cases of disputes over the ownership of trademark rights;
4. cases of disputes over the infringement of trademark rights;
5. cases of disputes over the confirmation of non-infringement of trademark rights;
6. cases of disputes over trademark right assignment contracts;
7. cases of disputes over trademark licensing contracts;
8. cases of disputes over trademark agency contracts;
9. cases of applying for suspension of infringement of the right to the exclusive use of a registered trademark before a lawsuit is filed;
10. cases of liability for damage caused due to an application for suspension of infringement of the right to the exclusive use of a registered trademark;
11. cases of applying for preservation of property before a lawsuit is filed;
12. cases of applying for preservation of evidence before a lawsuit is filed;
13. other trademark cases.”
2. Article 3 is revised to read:
"Where a trademark registrant or interested person requests the China National Intellectual Property Administration to settle an infringement of trademark rights, and meanwhile files a lawsuit with the people's court, claiming compensation for its/his damage due to infringement of trademark rights, the people's court shall accept such lawsuit.”
3. Article 4 is revised to read:
"With respect to the cases accepted by the China National Intellectual Property Administration before the Decision on Amending the Trademark Law comes into force, if any party concerned is dissatisfied with a review decision or ruling made after the Decision comes into force, and files a lawsuit with the people's court, the people's court shall accept such lawsuit.”
4. Article 5 is revised to read:
"Unless it is otherwise differently prescribed in this Interpretation, administrative cases in which the party concerned is dissatisfied with the review decision or ruling made by the China National Intellectual Property Administration after the Decision on Amending the Trademark Law comes into force regarding the circumstances listed in Article 4, Article 5, Article 8, Paragraph 1 of Article 9, Items (2) through (4) of Paragraph 1 of Article 10, Paragraph 2 of Article 10, Article 11, Article 12, Article 13, Article 15, Article 16, Article 24, Article 25, and Article 31 of the Amended Trademark Law, which arose before the Decision on Amending the Trademark Law comes into force, and in which the party concerned files a lawsuit with the people's court, shall be examined in accordance with the corresponding provisions of the amended Trademark Law. If any of the other circumstances arise, the cases shall be examined in accordance with the corresponding provisions of the former Trademark Law.”
5. Article 6 is revised to read:
"Where a party concerned is dissatisfied with the ruling made by the China National Intellectual Property Administration regarding a dispute over a registered trademark, which arose when the Decision on Amending the Trademark Law had been effective for one year, and therefore files a lawsuit with the people's court, the case shall be governed by the time limit for filing an application as prescribed in Paragraph 2 of Article 27 of the former Trademark Law. If, when the Decision on Amending the Trademark Law comes into force, the trademark has been registered for less than one year, the case shall be governed by the time limit for filing an application as prescribed in Paragraphs 2 and 3 of Article 41 of the amended Trademark Law.”
6. Article 10 is revised to read:
“Where a case accepted by the people's court regarding a dispute over infringement of trademark rights has been resolved by the administrative department, the people's court shall still examine the facts of the civil dispute between the parties concerned.”
IV. Revisions to the Interpretations of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Civil Cases related to Trademark Disputes
1. The Introduction is revised to read:
“In order to correctly try trademark dispute cases, and in accordance with the provisions of laws such as the Civil Code of the People's Republic of China, the Trademark Law of the People's Republic of China, the Civil Procedure Law of the People's Republic of China and other regulations, the following interpretations are made regarding several issues relating to the application of the law:”
2. Article 1 is revised to read:
“The following acts constitute acts causing other harm to another's exclusive right to use a registered trademark as set out in Item (7) of Article 57 of the Trademark Law:
1. using wording that is identical or similar to another's registered trademark as a business name and displaying it prominently on identical or similar goods, thereby easily causing mistaken recognition on the part of the relevant public;
2. reproducing, imitating or translating another's registered well-known trademark or its main part and using it as a trademark on non-identical or dissimilar goods thereby misleading the public and potentially prejudicing the interests of the registrant of the well-known trademark;
3. registering words that are identical or similar to another's registered trademark as a domain name and using it to carry out electronic commerce business in related goods, thereby easily causing mistaken recognition on the part of the relevant public.”
3. Article 2 is revised to read:
"In accordance with the second paragraph of Article 13 of the Trademark Law, where another's non-PRC-registered well-known trademark or its main part is reproduced, imitated or translated and used as a trademark on identical or similar goods, thereby easily resulting in confusion, civil means to stop the infringement should be undertaken.”
4. Article 3 is revised to read:
"Trademark licences as set out under Article 43 of the Trademark Law include the following three types:
1. ‘exclusive licences’, which means that the trademark registrant licenses a single licensee to use its registered trademark for an agreed period, within a specified territory and in an agreed manner and where the trademark registrant, in accordance with the agreement, may not use the registered trademark;
2. ‘sole licences’, which means that the trademark registrant licenses a single licensee to use its registered trademark for an agreed period, within a specified territory and in an agreed manner and where the trademark registrant, in accordance with the agreement, may use the registered trademark but may not license other parties to use the registered trademark;
3. ‘non-exclusive licences’, which means that the trademark registrant licenses a third party to use its registered trademark for an agreed period, within a specified territory and in an agreed manner and where the trademark registrant can itself make use of the registered trademark and license others to use its registered trademark.”
5. Article 4 is revised to read:
"Materially interested parties under the first paragraph of Article 60 of the Trademark Law include licensees under trademark licensing contracts for registered trademarks, lawful successors to registered trademark property rights, etc.
When the exclusive rights to use a registered trademark are infringed, licensees under exclusive licensing contracts can bring a suit in the people's courts. Licensees under sole licensing contracts can bring a joint suit together with the trademark registrant and can also bring a suit by themselves if the trademark registrant does not bring a suit. Licensees under non-exclusive licensing contracts can bring a suit provided that they have been given clear authorization to do so by the trademark registrant.”
6. Article 6 is revised to read:
"Civil suits that have been brought because of an act of infringement of the exclusive rights to use a registered trademark, shall fall under the jurisdiction of the people's court of the place where an act of infringement under Article 13 or 57 of the Trademark Law has been carried out, of the place where the infringing products are stored, sealed or detained, or of the place where the infringer is domiciled.
The ‘place where the infringing products are stored’ referred to in the preceding paragraph, means the place where large quantities of the infringing products are stored or hidden, or the place where the infringing products are regularly stored or hidden. The place where they are ‘sealed or detained’ means the place where an administrative body, such as the Customs, has sealed up or detained the infringing products.”
7. Article 9 is revised to read:
"The phrase ‘trademark that is identical’ in Items (1) and (2) of Article 57 of the Trademark Law means where the suspected infringing trademark is compared with the plaintiff's registered trademark and the two trademarks essentially have no difference visually.
The phrase ‘trademark that is similar’ under Item (2) of Article 57 of the Trademark Law means where the suspected infringing trademark is compared with the plaintiff's registered trademark and the font, pronunciation or meaning of the words or the composition or coloring of the device is similar, or the overall structure of its combined main elements is similar, or where its three-dimensional shape and combination of colors are similar thereby easily leading the relevant public to mistake the source of the products or to believe that their source has a certain connection to products using the plaintiff's registered trademark.”
8. Article 10 is revised to read:
"Where a people's court makes a determination of whether trademarks are identical or similar in accordance with Items (1) and (2) of Article 57 of the Trademark Law, it shall apply the following principles:
1. using the ordinary powers of observation of the relevant public as the standard;
2. the trademarks should be compared in their entirety and their important elements should also be compared; the comparison should be carried out with the two objects of comparison being kept apart;
3. when considering whether trademarks are similar, the distinctiveness and notoriety of the registered trademark for which protection is being sought should be considered.”
9. Article 11 is revised to read:
“‘Similar goods’ under Item (2) of Article 57 of the Trademark Law means goods that have identical functions, uses, production entities, sales channels, target consumers, etc., or goods that the relevant public would normally consider to have a certain connection and thus easily cause confusion.
‘Similar services’ means services whose purpose, content, method of provision, target users, etc., are identical or services that the relevant public would normally consider to have a certain connection and thus easily cause confusion.
‘Similar goods and services’ means that a certain connection exists between the goods and services that could easily cause the relevant public to be confused.”
10. Article 12 is revised to read:
“Where a people's court determines whether goods or services are similar in accordance with Item (2) of Article 57 of the Trademark Law, it should make an overall determination based on the normal knowledge of the relevant public with regard to the goods or services.
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