CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
• the use of a mark as a trade mark for identifying the origin of the goods or service; • the use of an identical or similar trade mark; • the use of the same or similar goods/service; • the likelihood of confusion; and • the absence of exemption of infringement. The factors for determining copyright infringement include: • an infringer using someone else’s work; • the use of a work without the permission of the copyright owner; and • the absence of fair use and exemption of infringe - ment. Meanwhile, after the examination of the essential ele - ments of the right, a specific review of the infringing acts will be conducted, which may involve the appli - cation of the “access and substantial similarity” rule. These factors are established by statute. 7.4 Prerequisites and Restrictions to Filing a Lawsuit For trade mark infringement cases, it is suggested that the plaintiff initiates trade mark infringement litigation based on a registered trade mark or an unregistered trade mark with sufficient evidence to prove that the mark had reached the well-known status. For copy - right infringement cases, the plaintiff needs to submit evidence proving their ownership of the copyright or neighbouring rights. The evidence may include: • drafts; • original works; • legally published materials; • copyright registration certificates; • certificates issued by certification authorities; • contracts establishing rights; • administrative permits; and • legally effective judgments determining the rights- holder. Some rights-holders may abuse their rights by send - ing infringement warnings to their competitors, with - out filing a lawsuit or taking any legal action in a rea - sonable time, leaving the accused party uncertain
as to whether infringement has been constituted. In such cases, the accused party has the right to file a lawsuit for a declaration of non-infringement, seeking clarification on the existence of any infringement and eliminating the state of uncertainty.
7.5 Lawsuit Procedure Courts With Jurisdiction
The first instance of trade mark or copyright infringe - ment cases is generally handled by a primary people’s court. The second instance is handled by the people’s court at the next level. The party who deems that an effective judgment or ruling is erroneous may file a petition for retrial with the people’s court at the next higher level. Civil and administrative cases involv - ing recognition of well-known trade marks fall under the original jurisdiction of IP courts and intermediate people’s courts; and may also fall under the original jurisdiction of a basic people’s court upon approval by the Supreme People’s Court. Costs Incurred The costs incurred before filing a trade mark or copy - right lawsuit are mainly fees rendered during evidence collection, which are investigation fees, notarisation fees, translation fees, etc. The parties in trade mark or copyright litigation are not required to be represented by a lawyer. The parties may retain one or two litiga - tion representatives, who could be lawyers or legal service workers, close relatives or staff members and citizens recommended by the community, or an entity related to a party or citizens recommended by a rel - evant social group. Foreign Trade Mark or Copyright Owners Foreign trade mark or copyright owners can bring infringement claims in China. The trade mark should preferably be registered in China. However, if the trade mark is not registered, it may still be protected under certain circumstances. Copyright registration is not required for foreign copyright owners in China. The work will still be protected under certain circumstanc - es, such as if there is a copyright agreement between the author’s home country or country of permanent residence and China, or if the works are protected under an international treaty to which both countries are signatories, etc.
73 CHAMBERS.COM
Powered by FlippingBook