CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants An alleged trade mark or copyright infringer can initiate a lawsuit requesting confirmation of non-infringement. The lawsuit for confirmation of non-infringement may be filed by a specific party that is warned of infringe - ment by an intellectual property rights-holder who fails to initiate a lawsuit within a reasonable period. A potential defendant in a trade mark case can initi - ate trade mark cancellation or invalidation action with the CNIPA against a registered trade mark involved in a trade mark dispute. The potential defendant may prepare evidence proving: • its “fair use” of the relevant trade mark; • the “non-infringement defence”; or • the “prior use” defence. 7.7 Small Claims The small claims procedure may be applied to resolve small trade mark or copyright claims. It is applicable in first-instance cases and can be applied by a primary people’s court or its detached tribunal. This proce - dure is suitable for civil cases characterised by clear facts, well-defined rights and obligations, and minor disputes resulting in a one-instance final judgment. It cannot be applied if a foreign party is involved. 7.8 Effect of Trade Mark and Copyright Office Decisions The decisions of the trade mark or copyright office can have some influence on infringement actions, but civil courts are not bound by these decisions and have the authority to make their own determinations based on Regarding trade marks, the CNIPA’s decisions that have influence on the registration status of registered trade marks will have an influence on infringement actions. If the CNIPA issues a decision to cancel a registered trade mark, the exclusive right to use such registered trade mark will be terminated from the date of publication of the decision. The decision might not influence a pending litigation suing infringement acts that occurred before the trade mark cancellation date. If the CNIPA issues a decision to declare the invalida - the evidence presented before them. Trade Mark Infringement Actions
tion of a registered trade mark, the exclusive right to use such registered trade mark will be deemed void at its inception. The plaintiff will have lost the legal basis for initiating the infringement lawsuit, or will not be supported in the pending lawsuit. Copyright Infringement Actions For copyright infringement actions, the copyright hold - er can file a complaint with the copyright office in the jurisdiction where the infringement occurred or where the infringing results have taken place. Upon receiving the complaint, the copyright office will investigate the alleged infringement and could impose administrative penalties on the infringer. If the infringement is sus - pected to be a criminal offence, it will be transferred to the judicial authorities. If the party involved is dissatis - fied with the decision made by the copyright admin - istrative department, they can apply for administra - tive reconsideration or file an administrative lawsuit in accordance with the law. 7.9 Counterfeiting and Bootlegging A counterfeit mark is an unauthorised mark identi - cal with or substantially similar to a registered trade mark, and copyright counterfeiting refers to the unau - thorised reproduction, distribution or public display of copyrighted works. The procedures and remedies against counterfeiting include administrative enforce - ment, civil litigation and criminal liability. Criminal liability can be imposed on a party for counterfeit - ing. The Criminal Law of China includes provisions on constituting crimes for counterfeiting trade marks or copyright under certain circumstances. Bootlegging is one kind of copyright infringement act. This involves the unauthorised copying or distribution of copyrighted content without the permission of the rights-holder. The procedures and remedies against copyright infringement could therefore be applied to bootlegging.
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