CHINA Law and Practice Contributed by: Chuanhong Long, Huiqing Wang, Yingying Shen and Fan Li, CCPIT Patent and Trademark Law Office
8.6 Enforcement and Remedies Across Multiple IP Rights China permits claims based on different intellectual property rights to be asserted in a single proceeding. A set of rules issued by the Supreme People’s Court already allows a single lawsuit to involve two or more legal relationships. In judicial practice, however, indi- vidual courts may respond differently depending on the particular circumstances of each case. Proceedings For example, where a defendant’s counterfeiting of a particular product infringes trade mark rights while simultaneously constituting unfair competition through the use of similar packaging or decoration – Chinese courts will generally consolidate such claims and hear them together in a single proceeding. Where claims arise from distinct acts of intellectual property infringement, courts generally prefer to dock- et such cases separately. It is worth noting, however, when the claims are of the same type – for instance, where an infringer has posted different works owned by the same rights-holder online without authorisa- tion, giving rise to multiple claims under copyright law – courts typically assign each claim a separate case number while nevertheless hearing them together at a single trial. This results in a form of de facto con- Under Chinese law, remedies for IP infringement are categorised into civil, administrative, and criminal measures. This discussion focuses exclusively on civil remedies. The primary civil remedies for IP infringement include injunctive relief (ordering the cessation of the infringing act), the elimination of adverse effects, and monetary damages. In cases where a single product infringes upon multiple overlapping IP rights, Chinese courts will issue an injunction covering all such rights. However, when calculating monetary damages, courts strictly prohibit double recovery. Grounded in the foundational compensatory principle of Chinese civil law (often referred to as the “make-whole” principle), baseline damages are designed solely to compensate solidation. Remedies
three-dimensional trade marks. Accordingly, if a rights- holder succeeds in registering a product’s appearance as a three-dimensional trade mark, that appearance will enjoy protection under the Trademark Law. In practice, however, registering a three-dimensional trade mark in China remains relatively difficult, and the number of successful registrations is not large. Additionally, trade dress protection is also available to product shapes or packaging, which become commercial indicia that possess distinctive features capable of distinguishing the source of goods and that have attained a certain degree of influence. 8.5 Copyright and Trade Marks Under Chinese legal practice, logos, artistic elements, and branding may enjoy protection under both cop- yright and trade mark law, provided they qualify as “works” under the Copyright Law and satisfy the reg- istrability criteria under the Trademark Law. Based on the discussion under 3.2 Requirements for Copyright Protection , for logos, artistic elements, or branding, the most critical requirement is originality. In practice, cases in which logos and artistic elements are protected through copyright are not rare. The bar for logos, artistic elements and branding to be regis- tered as trade mark is comparatively higher. The core requirements include being distinctive, lawful and not conflicting with prior rights of others. Limitations Between Trade Mark Rights and Copyright Given that China’s trade mark and copyright laws function as distinct, parallel legal regimes, there are relatively few direct limitations imposed by one upon the other. A critical intersection, however, concerns the require- ment that a trade mark must not conflict with prior existing rights, including prior copyrights. If a copy- right owner can demonstrate that: (i) the design quali- fies as a protectable “work” under copyright law; (ii) the subsequent trade mark applicant had access to said work; and (iii) the subsequent trade mark is sub- stantially similar to the prior work, the copyright owner may seek to have the later trade mark declared invalid.
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