CHINA Law and Practice Contributed by: Binxin Li, Guangzhen Shang, Yue He and Lesley Wang, LeanWill Law Firm
6. Other IP Rights 6.1 Trade Marks
• any other circumstance amounting to a wrongful motion. In practice, it is relatively rare for there to be a coun ‑ teraction against wrongful PI action. 5.5 Legal Costs The plaintiff’s reasonable legal costs incurred for the enforcement, including attorney fees, judicial apprais ‑ al fees, notarisation fees, travel expenses, sample pur ‑ chase fees and other disbursements, will be calcu ‑ lated and determined by the court upon the plaintiff’s request, which is normally addressed separately from the calculation of damages. In practice, the court will consider all evidence regarding the costs incurred and determine a reasonable amount of legal costs that the defendant shall compensate to the plaintiff if the infringement is established. Regarding court fees, the court normally would follow the “loser-pays” rule. If the plaintiff prevails, it may recover the court fees pre-paid from the defendant. If the plaintiff partially prevails, the court would allocate the court fees between the parties on a case-by-case standard. If the defendant prevails, the court fees may be borne by the plaintiff. Normally, the judgment will expressly identify the party liable for these costs, state the exact amount, and set a period for payment. If the obliged party does not pay voluntarily, the prevailing party may apply for compulsory enforcement after the judgment becomes effective and the payment period expires. Unfortunately, the plaintiff’s legal costs cannot be claimed in administrative enforcement proceedings. 5.6 Relevance of Claimant/Plaintiff Conduct to Relief Normally, the court will not reduce the reliefs available to a plaintiff on account of its own misconduct (once infringement is established), although such miscon ‑ duct may produce other legal consequences. If the plaintiff has been silent on enforcement and the three-year statute of limitation has expired, the court will dismiss the case upon the statute of limitation defence being raised by the defendant.
Trade mark disputes and enforcement actions are quite common in the life sciences and pharma sector in China. Right-holders enforce their exclusive trade mark rights against infringers under the PRC Civil Law, Criminal Law, Trade Mark Law, Implementation Regu ‑ lations and relevant judicial interpretations – a legal framework that applies equally across all sectors. In addition, there are certain requirements regarding the use of pharmaceutical trade marks due to the high regulation of products in the sector. Registration and Registrability of Pharmaceutical Trade Marks The current Trade Mark Law and Drug Administra ‑ tion Law do not require drugs to carry registered trade marks for market launch in China. However, the Administrative Provisions on Pharmaceutical Package Inserts and Labels mandate that any trade mark used on package inserts and labels must be registered. In addition, the Guideline for Acceptance and Review of Chemical Drug Registration (Trial) and the Guide ‑ line for Acceptance and Review of Biological Prod ‑ uct Registration (Trial), both promulgated in February 2025 and collectively referred to as the “Guidelines”, require submission of a trade mark registration certifi ‑ cate if the drug name is to be used on the product. In such cases, pharmaceutical companies should care ‑ fully plan the timing of their trade mark applications to ensure that the trade mark registration is completed prior to filing the product with the NMPA. Under the PRC Trade Mark Law, a mark shall not be registered if it: • consists solely of the generic name, device or model of the goods; • is merely descriptive or otherwise lacks distinctive features; • is misleading or has other negative meanings; or • conflicts with prior third-party trade marks or other rights. Therefore, the drug names listed in national drug standards are not registrable as trade marks. To secure exclusive trade mark protection for a drug
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