CHINA Law and Practice Contributed by: Chuanhong Long, Bin Zhang, Cuicui Liang and Lei Fu, CCPIT Patent and Trademark Law Office
extent of the infringement, the harm caused to the plaintiff, the infringer’s bad faith, etc. The calculation of damages in trade mark or copyright cases may be based on factors such as the actual losses suffered by the rights holder or the profits the infringer has earned due to the infringement, or the appropriate royalty rate. If the damages cannot be calculated based on these three factors the court may grant com - pensation, in trade mark infringement cases, not exceeding CNY5 million, according to the circumstances of the act of infringement. For copyright infringement cases, the court may grant compensation ranging from CNY500 to CNY5 million. If the infringement is committed in bad faith and is serious, the plaintiff may request punitive damages, which could be up to five times the amount determined using the aforesaid method. The amount of the damages must also include the reasonable expenses of the rights holder incurred in stopping the infringement. 10.3 Attorneys’ Fees and Costs The plaintiff could request that the defendant bear the reasonable costs of the litigation. If the plaintiff wins the case, the judge could request that the defendant bear a certain amount of the reasonable costs, including the attorneys’ fees and the court fees. The amount to be reimbursed will be determined at the judge’s discretion, based on the evidence submitted by the plaintiff. 10.4 Ex Parte Relief The trade mark or copyright owner could seek relief without notifying the defendant. Notice is not required. If the trade mark or copyright owner sends a warning letter to the infringer and the infringer refuses to stop the infringing act, the warning letter could be used as evidence to
prove the infringer’s bad faith in continuing the infringement with full awareness. 10.5 Customs Seizures of Counterfeits or Parallel Imports Counterfeits The Chinese legal system provides for customs seizure of counterfeits. For the purpose of cus - toms protection, the owner of intellectual prop - erty rights (IPRs) – which might include trade marks, patents and copyrights already approved, granted or registered by the competent state authorities – should record its IPRs with the China General Administration of Customs on the basis of a certificate for each recordation. The trade mark registration certificate issued by the CNIPA or a certified copyright registration certifi - cate is required in order to record the trade mark right or copyright in the General Administration of Customs (GAC). If a designated IPR has been successfully recorded with the GAC, the information on the IPR will be added to the official computer sys - tem of the GAC to be shared by every customs office within Chinese territory. When customs officers carry out routine inspections of imported or exported goods, they will pay more attention to goods bearing the recorded IPRs. If the cus - toms office suspects some goods have infringed the recorded IPR, it will notify the IPR owner and, upon application filed by the IPR owner with remittance of the required security bond, customs will detain the suspected goods. The security bond will be based on the value of the suspected goods. Parallel Imports Regarding parallel imports, if the products involved in “parallel imports” are genuine, in their original packaging with a reasonable indi - cation of the origin of the products that will not
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