CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement There are procedural defences and substantive defences. Procedural Defences For procedural defences, the alleged infringer could file opposition against jurisdiction, chal - lenge the qualification of the plaintiff, prove the legitimate sources of the allegedly infringing goods, etc. Substantive Defences Substantive defences include “fair use” or “prior use”. The alleged infringer could also try to prove that the mark in question is not used as a “trade mark” as it does not have the function of “distin - guishing the origin of the goods/services”. The alleged infringer could also challenge the effec - tiveness of the trade mark right, as the status of the trade mark right might be influenced by official decisions. If the trade mark is cancelled or invalidated during the litigation, this will influ - ence the result of the litigation against trade mark infringement. “Non-Infringement” Defences Defences against trade mark infringement also include “non-infringement” defences, claiming both the trade marks and the goods involved are not identical or similar, and/or no confusion would likely be caused due to the use of the mark in question. The alleged infringer could also challenge the use status of the trade mark involved. If the trade mark registrant cannot prove their use of the trade mark within the three years prior to the infringement litigation being filed, the alleged infringer will not bear liability for compensation.
9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) In China, the concept of fair use exists in both the Trademark Law and Copyright Law. The Trademark Law regulates that the rights holder cannot prohibit the legitimate use of generic names, designs, or models of goods, or direct indications of the quality, main raw materials, functions, uses, weight, quantity, and other fea - tures of goods, or the place name in the trade mark. The Copyright Law provides for specific circumstances where certain uses of copy - righted works may be permitted without the owner’s consent, such as for the purposes of news reporting, teaching, scientific research, or personal study. The Copyright Law does not recognise an exception to copyright infringement based on satire or parody. It is still controversial whether parody should enjoy copyright protection. For satire, it might be considered an independent subject of copyright, but as it incorporates ele - ments of the original copyrighted work, there may be infringement risks. There is no statutory exception to trade mark or copyright infringement based on the right to free speech or information. 9.3 Exhaustion In China, the Trademark Law and Copyright Law do not have explicit provisions for “exhaustion of rights”. The first sale of a product bearing a trade mark can exhaust the owner’s rights to that spe - cific item, however, meaning that the trade mark owner has no right to prohibit others from resell - ing or transferring the product in the market. Regarding copyright exhaustion, China fol - lows the principle of “exhaustion of distribu - tion rights”, which means that once the original
78
CHAMBERS.COM
Powered by FlippingBook