CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Infringement claims must be brought within three years, starting from the day the right owner or the interested party becomes aware, or should have become aware, of the infringement and the infringer. If the infringement lawsuit is initiated after the expi - ration of the three-year statute of limitations, and if the infringing act continues at the time the action is initiated, the court will order the defendant to cease the infringement within the validity period of the trade mark’s exclusive right or the copyright. 7.2 Legal Claims for Infringement Lawsuits and Their Standards The legal claims available to a trade mark or copy - right owner pursuing infringement include ceasing of the infringement and compensation for losses. The legal claim for an “apology to the rights owner” is often applicable only when personal rights have been harmed. Therefore, in trade mark infringement dis - putes that solely involve property rights, it is unlikely that this legal claim will be supported. However, in copyright infringement cases, it may be supported. Registered and Unregistered Trade Marks The protections of registered trade marks and unreg - istered trade marks differ in China. Unregistered trade marks can only be protected under certain circumstances based on “prior use”, where through “prior use” the unregistered trade mark has the function of identifying the origin of goods or ser - vices. If the unregistered trade mark reaches the “well- known” status, it could be protected in accordance with the Trademark Law. If it obtains “certain influ - ence”, it could be protected in accordance with the Anti-Unfair Competition Law as product name, pack - aging or decoration. Registered or Unregistered Copyright Unlike with trade mark rights, once a work is created, the author automatically obtains copyright without the need for registration. Therefore, the claims are the same for registered or unregistered copyright. Types
of infringement include direct infringement, indirect infringement, contributory infringement, and others. The Differences Between Trade Mark and Copyright Infringement In China, trade mark infringement refers to the use of an identical or similar trade mark on the same or similar goods, which may cause confusion. Copyright infringement involves the unauthorised use of some - one else’s work, violating the rights of the copyright owner. To successfully claim trade mark or copyright infringement, the corresponding elements need to be proven, bearing in mind that the elements may vary for different types of infringement. A trade mark owner can bring claims for dilution or cyber-squatting. Claims for dilution can be brought when a trade mark owner requests the court to rec - ognise that a trade mark has reached well-known sta - tus. Cyber-squatting is regulated in the Interpretation of the Supreme People’s Court on the Application of Laws in the Trial of Civil Disputes Over Domain Names of Computer Networks. Copyright Management Information The Copyright Law in China protects electronic infor - mation related to copyright management, but it does not provide a clear definition of what constitutes cop - yright management information. In Article 26 of the Regulations on the Protection of the Right to Informa - tion Network Transmission, “electronic right manage - ment information” is defined as “information that indi - cates the work and its author, the performance and its performer, the recording and video products and their creators, information about the rights-holders of the works, performances, and recording and video prod - ucts, information about the conditions of use, and the digital or coded representation of the aforementioned information”. This definition draws on the wording of relevant provisions in the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. As a member country of these two international treaties, China’s positioning of rights management information aligns with the requirements of the treaties. 7.3 Factors in Determining Infringement The factors for determining trade mark infringement include:
72 CHAMBERS.COM
Powered by FlippingBook