CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
tual property rights holder who fails to initiate a lawsuit within a reasonable period. A potential defendant in a trade mark case can initiate trade mark cancellation or invalida - tion action with the CNIPA against a registered trade mark involved in a trade mark dispute. The potential defendant may prepare evidence prov - ing 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 procedure is suitable for civil cases characterised by clear facts, well- defined rights and obligations, and minor dis - putes 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 the evidence pre - sented before them. Trade Mark Infringement Actions 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 invalidation of a registered trade mark, the exclusive right to use such registered trade mark will be deemed void at its inception. The plain - tiff 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 holder 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 suspected to be a criminal offence, it will be transferred to the judicial authorities. If the party involved is dissatisfied with the decision made by the copyright administrative department, they can apply for administrative reconsideration or file an administrative lawsuit in accordance with the law. 7.9 Counterfeiting and Bootlegging A counterfeit mark is an unauthorised mark identical with or substantially similar to a regis - tered trade mark, and copyright counterfeiting refers to the unauthorised reproduction, distri - bution or public display of copyrighted works. The procedures and remedies against counter - feiting include administrative enforcement, civil litigation and criminal liability. Criminal liability can be imposed on a party for counterfeiting. 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 infringe - ment act. This involves the unauthorised copy -
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