CHINA Trends and Developments Contributed by: Qiang Ma, Yi Xu and Lei Wu, Jingtian & Gongcheng
governing trade mark registration, management and protection. The main points of the amendment include the following. • Conditions for trade mark registration – A new chapter disapproves applications that exceed normal business needs, such as full-class or multi-class purely defensive registrations. It also prohibits trade mark registration through deception or improper means, laying down a legal foundation for addressing these issues during opposition and invalidation processes. • Extended protection – The amendment removes the limitation on protecting unregistered trade marks for dissimilar goods, previously reserved for registered well-known trade marks, thus allowing more brands to gain recognition and safeguard against infringement. • Administrative penalties – New measures deline - ate consequences for registered trade marks that mislead or cause adverse effects. Initially, a correc - tion will be required; failing compliance within the deadline results in a CNY50,000 fine, and serious cases may lead to trade mark revocation. This aims to prevent misleading alterations or combinations of trade marks after registration. • Shorter opposition period – The period for oppos - ing trade mark registrations is reduced from three months to two months. • Dynamic trade mark protection – The amendment introduces protections for dynamic trade marks in alignment with international standards. The CNIPA is also conducting research into integrat - ing a coexistence consent system as a potential sup - port for the amendment, which could still play a role in China’s trade mark legal framework. Three Major Trends in China’s Judicial Protection of Trade Marks Rational demarcation of protection boundaries of well-known trade marks The Beike case clarifies the conditions for cross- class protection of well-known trade marks. The court established a four-factor standard: • reputation; • stability of use;
• promotional investment; and • prior protection records.
This standard helps prevent overgeneralisation while upholding the principle of preventing public confu - sion and protecting trade mark goodwill. The court found that the “Beike” mark’s use in decoration ser - vices infringed on real estate services due to poten - tial consumer confusion. It also ruled that changing an enterprise name does not negate prior trade mark rights, holding the infringer liable. Adapting to challenges of new business forms The courts have clarified the responsibilities of plat - forms regarding trade mark infringement by live streamers in live commerce. When a platform is aware of infringing activities and fails to act, it faces joint and several liabilities. For example, courts can impose punitive damages of up to three times the profits from selling counterfeit goods, as seen in a case where CNY1.1 million was awarded for such sales in live streaming. Furthermore, trade mark infringement is also rec - ognised in virtual scenarios, such as in the George Patton Virtual Scenario Case, where the court ruled that virtual cars in games are akin to real vehicles. An unauthorised use of a trade mark in *Game for Peace* resulted in a CNY1 million damages award. Compensation standards Courts are awarding punitive damages based on fac - tors such as the infringer’s malicious intent, the scale and profits of the infringement, and the reasonable expenses incurred in protecting trade mark rights. In Changxiulin v Changshulin , regarding trade mark simi - larity infringement in the pharmaceutical industry, the court awarded CNY60 million in damages, setting a record in Jiangsu Province. These trends reflect a legal landscape in China that is becoming more attuned to the complexities of modern commerce and the challenges faced by trade mark holders.
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