CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special provisions for lawsuits in trade mark or copyright proceedings. In China, there are specialised intellectual property courts to handle intel - lectual property cases, but most first instance trade mark and copyright infringement cases are handled in the primary level court. Trade mark and copyright infringement litigations are handled in accordance with the Civil Procedure Law of the PRC. These cases are determined by a collegial bench, which may be formed of judges and jurors, or only of judges. Techni - cal judges are not required in these cases. There must be an odd number of members on a collegial bench. Civil cases tried by simplified procedures are tried by a single judge. Generally, the parties do not have any influence on who is the decision-maker. However, under certain circumstances, the parties could request disqualifica - tion of a judge, court clerk, interpreters, identification or evaluation expert, or surveyor, either verbally or in writing. 8.2 Effect of Registration Facilitating Infringement Litigation In China, holding a trade mark or copyright regis - tration can provide certain litigation benefits to the rights-holder. The trade mark law protects registered trade marks, and unregistered trade marks are under protection only in special situations. In the case of a registered trade mark, the trade mark owner can file a litigation against infringement directly; for an unreg - istered trade mark, evidence proving the “prior use” and reputation of the trade mark need to be submit - ted. Copyright protection in China arises automati - cally upon the creation of an original work. However, registering copyrights with the CPCC or other recog - nised copyright registration institutions can provide evidence of ownership and facilitate infringement liti - gation. Protection Against Cancellation/Invalidation After obtaining trade mark registration, the trade mark owner should keep using the trade mark, otherwise
the trade mark might be cancelled for “non-use” over three consecutive years. With regard to an invalidation procedure, a trade mark registered for more than five years is comparatively stable and a third party would need to prove that the registration is in bad faith in order to invalidate it. “Similar Goods” and “Similar Services” “Similar goods” refers to goods that are identical or similar in terms of function, purpose, manufacturing sector, distribution channels, and consumers. “Similar services” refers to services that are similar in terms of purpose, content, method, and target customer. The important factor is that the use of a similar mark creates a likelihood of confusion among consumers regarding the source of the goods or services. 8.3 Costs of Litigating Infringement Actions The typical costs include: • translation fees paid to the qualified translation firm (if documents in foreign languages are involved); • attorneys’ fees and expenses; and • court fees. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement There are procedural defences and substantive defences. Procedural Defences For procedural defences, the alleged infringer could file opposition against jurisdiction, challenge the quali - fication of the plaintiff, prove the legitimate sources of the allegedly infringing goods, etc. Substantive Defences • investigation fees; • notarisation fees; Substantive defences include “fair use” or “prior use”. The alleged infringer could also try to prove that the mark in question is not used as a “trade mark” as it does not have the function of “distinguishing the origin of the goods/services”. The alleged infringer could also challenge the effectiveness of the trade
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