CHINA Law and Practice Contributed by: Chuanhong Long, Huiqing Wang, Yingying Shen and Fan Li, CCPIT Patent and Trademark Law Office
have been readily conceivable by a person skilled in the art without inventive effort. Indirect infringement is generally addressed through the framework of joint tort liability. Article 1169 of the PRC Civil Code pro- vides that a person who instigates or assists another in committing a tort shall bear joint and several liability with the primary actor. The Supreme People’s Court’s Interpretation (II) on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases further clarifies that a person may be held liable for contributory infringement by knowingly providing materials, equipment, components, inter- mediates, or other items specially used for practising a patent to another for infringing activities, or for induce- ment by knowingly encouraging or inducing another to commit patent infringement. Common defences include prior art or prior design, prior use, exhaustion, experimental use, the Bolar exemption, lawful source, and, in SEP cases, FRAND-related defences. 1.6 Patent Enforcement and Remedies In China, patent protection follows a dual-track system, under which judicial enforcement and administrative handling coexist. Civil patent infringement disputes are generally heard at first instance by a competent intermediate people’s court, an intellectual property court, or a designated intellectual property tribunal. Appeals in technically complex patent cases are, as a matter of principle, centralised before the Intellec- tual Property Tribunal of the Supreme People’s Court. As to territorial jurisdiction, such cases are generally heard by the court at the place where the infringement occurred or where the defendant is domiciled. The place of infringement includes the place where the alleged acts of manufacturing, using, offering for sale, selling, or importing took place, as well as the place where the result of the infringement occurred. Patent infringement litigation and patent invalidation proceedings may proceed in parallel. Whether the court will stay the infringement action depends on the patent type, the procedural posture of the case, and the circumstances of the individual matter. In utility model and design patent cases, the court may also require the patentee to submit a patent evaluation report. Under Chinese law, both pre-action and in- action behaviour preservation measures are available, and in urgent circumstances the court shall issue a
ruling within 48 hours. That said, in technically com- plex invention patent cases or other technical dis- putes involving difficult issues of claim construction, infringement comparison, or patent stability, obtaining such injunctive relief is often not easy in practice. Available remedies include injunctions, damages, and reasonable expenses incurred by the right-holder for stopping the infringement. In cases of intentional infringement with serious circumstances, punitive damages of between one and five times the damages base may also be awarded. Recoverable reasonable expenses may include attorneys’ fees, notarisation fees, and appraisal fees, subject to the court’s review based on the supporting evidence. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Governing Laws The main laws are the Trademark Law of the People’s Republic of China (2019 Revision) and Regulations for the Implementation of the Trademark Law. Protectable Signs According to Article 8 of the Chinese Trademark Law, any sign capable of distinguishing the goods or ser- vices 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. Scent marks are not registrable in China. Unregistered/Common Law Trade Marks China follows a registration-based system of trade mark protection. Unregistered trade marks may be protected if they have been used previously and have acquired a certain degree of influence, or if they qual- ify as unregistered well-known trade marks. 2.2 Requirements for Trade Mark Protection Essential Elements Distinctiveness, lawfulness, non-functionality, no con- flict with prior rights, and capability of distinguishing
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