CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
ing or distribution of copyrighted content without the permission of the rights holder. The proce - dures and remedies against copyright infringe - ment could therefore be applied to bootlegging. 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 intellectual property cases, but most first instance trade mark and copyright infringe - ment 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. Technical 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 disqualification of a judge, court clerk, interpret - ers, identification or evaluation expert, or sur - veyor, either verbally or in writing. 8.2 Effect of Registration Facilitating Infringement Litigation In China, holding a trade mark or copyright reg - istration 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 situ - ations. In the case of a registered trade mark,
the trade mark owner can file a litigation against infringement directly, while for an unregistered trade mark, evidence proving the “prior use” and reputation of the trade mark need to be submit - ted. Copyright protection in China arises auto - matically upon the creation of an original work. However, registering copyrights with the CPCC or other recognised copyright registration insti - tutions can provide evidence of ownership and facilitate infringement litigation. 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 com - paratively 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, manu - facturing sector, distribution channels, and con - sumers. “Similar services” refer 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 investigation fees, notarisation fees, translation fees paid to the qualified translation firm (if documents in for - eign languages are involved), attorneys’ fees and expenses, and court fees.
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