CHINA Trends and Developments Contributed by: James Luo and Angie Guo, Lawjay Partners
jective intent and the objective severity of the circumstances, in addition to a definitive deter- mination of the base amount for compensation, such as the actual loss of the rights-holder, profits derived from the infringement, or licens- ing fees. It is imperative for the rights-holder to actively seek the application of punitive dam- ages. Rights-holder’s claim for punitive damages To initiate the claim for punitive damages, the rights-holder must explicitly articulate this demand at the outset of the legal proceedings. It is essential that the rights-holder not only specifies the intention to seek punitive dam- ages but also presents a clear methodology for calculating the amount prior to the conclusion of court arguments. The rights-holder needs to prove the existence of the infringing act, the infringer’s intentional conduct, the seriousness of the infringement, and a reasonable base for The rights-holder is tasked with presenting com- pelling evidence to establish that the infringer deliberately engaged in the act of infringement. Based on established judicial precedents, typi- cal situations where the infringer is deemed to have acted intentionally include: calculating punitive damages. Proof of the infringer’s intent • persisting in infringing behaviour after warn- ings or penalties: continuing the infringing activities after receiving formal notices from the rights-holder, after incurring administrative penalties, or following a judicial ruling against the infringing activities; • unauthorised registration and use of well- known trade marks: unauthorised registra- tion of a well-known trade mark belonging to the rights-holder, or continued use of such
a trade mark after rejection of a trade mark application due to similarity; • business relationships providing access to intellectual property: engaging in business transactions or other relationships that afford access to and awareness of the infringed intellectual property; • counterfeiting registered trade marks: repro- ducing the rights-holder’s registered trade mark by using an identical mark on identical goods; and • destruction or fabrication of evidence: fabri- cating or destroying evidence pertaining to the infringement in an effort to evade legal accountability. In each of these instances, the evidence must conclusively illustrate the infringer’s conscious and deliberate actions to violate the rights-hold- er’s intellectual property rights, thereby warrant- ing the imposition of punitive damages. Severity of the infringement In legal proceedings, the severity or gravity of infringement is evaluated by establishing the presence of significant infringing characteristics, which include but are not limited to the following scenarios: • Recurrent and large-scale infringement: The infringer has engaged in multiple instances of infringement, adopting such activities as their principal commercial endeavour. The infringe- ment is considerable in scale, extends across broad geographic regions, and is perpetu- ated over an extended duration, indicating a high degree of subjective malice and market disruptiveness. • Comprehensive and multifaceted infringe- ment: The infringer’s actions transcend mere imitation of the rights-holder’s trade mark; they extend to registering similar business
308 CHAMBERS.COM
Powered by FlippingBook