CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Infringement claims must be brought within three years, starting from the day the right owner or the interested party becomes aware, or should have become aware, of the infringement and the infringer. If the infringement lawsuit is initiated after the expiration of the three-year statute of limitations, and if the infringing act continues at the time the action is initiated, the court will order the defendant to cease the infringement within the validity period of the trade mark’s exclusive right or the copyright. 7.2 Legal Claims for Infringement Lawsuits and Their Standards The legal claims available to a trade mark or copyright owner pursuing infringement include ceasing of the infringement and compensation for losses. The legal claim for an “apology to the rights owner” is often applicable only when personal rights have been harmed. Therefore, in trade mark infringement disputes that solely involve property rights, it is unlikely that this legal claim will be supported. However, in copyright infringement cases, it may be supported. Registered and Unregistered Trade Marks The protections of registered trade marks and unregistered trade marks differ in China. Unregistered trade marks can only be protected under certain circumstances based on “prior use”, and that through “prior use” the unregis - tered trade mark has the function of identifying the origin of goods or services. If the unregis - tered trade mark reaches the “well-known” sta - tus, it could be protected in accordance with the Trademark Law. If it obtains “certain influence”,
It is recommended that a written copyright licence agreement should be signed and reg - istered with the CPCC or competent copyright authorities. A written agreement that is signed and registered will protect both parties’ inter - ests and effectively reduce the risk of disputes caused by misunderstandings. A copyright property right can be licensed through either a sole licence or non-exclusive licence. Normally, the copyright owner can exploit the work even if the copyright has been licensed. The term of a licence should not exceed the validity term of the copyright itself. The details of the licence may be agreed upon by contract between the parties. 6.3 Registration or Recording of an Assignment or Licence The assignment and licence must be record - ed with the CNIPA. If they are not, neither the assignment nor licence can be used against bona fide third parties. After the approval of the assignment or licence by the CNIPA, the CNIPA will publish the assignment or licence in the Trademark Gazette. Only after receiving the approval of the CNIPA is the assignee recognised as the trade mark own - er in China. Before the approval of the CNIPA is obtained, the assignor remains the owner of the mark in China. For copyright, a written agreement and its reg - istration will protect both parties’ interests and effectively reduce the risk of disputes caused by misunderstandings.
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