Unify law enforcement standards! Standard for judging trademark infringement

After the reform of the party and state institutions in 2018, the central government made clear that the State Intellectual Property Office was responsible for the business guidance of trademark patent law enforcement, "formulating and guiding the implementation of trademark rights, patent rights confirmation and infringement judgment standards". The formulation of the standards is not only the practical need to implement the requirements of institutional reform and strengthen the guidance of trademark law enforcement, but also the specific measures to implement the opinions on strengthening the protection of intellectual property rights and its promotion plan.

Within the framework of trademark law and based on the guiding function of trademark law enforcement, standards systematically combs and summarizes the beneficial experience and practice of trademark administrative protection over the years, provides specific operation guidance for relevant trademark law enforcement departments to administrate according to law, and creates a transparent and predictable intellectual property protection environment for market subjects. There are 38 articles in the standard, which specify the use of trademarks, the same commodity, similar commodity, the same trademark, similar trademark, easy to confuse, sales exemption, right conflict, suspension of application, identification of obligees, etc.

The person in charge of the Protection Department of the State Intellectual Property Office said that the next step would be to do a good job in the policy interpretation of the standards, increase training efforts and promote the implementation of the standards. At the same time, we will do a good job in guiding cases, typical cases, administrative replies, etc., constantly improve the business guidance system, improve the level of law enforcement protection, strengthen the protection of intellectual property rights, and create a good business environment.

Notice of the State Intellectual Property Office on printing and distributing the trademark infringement judgment standard

                                                                  Guo Zhi FA Bao Zi [2020] No. 23 

Intellectual Property Office of each province, autonomous region, municipality directly under the central government and Xinjiang production and Construction Corps (intellectual property management department):

In order to thoroughly implement the decision-making and deployment of the CPC Central Committee and the State Council on strengthening the protection of intellectual property rights, strengthen the guidance of trademark law enforcement, unify the standards of law enforcement, improve the level of law enforcement, and strengthen the protection of the exclusive right to use trademarks, the trademark infringement judgment standards are formulated in accordance with the relevant provisions of the trademark law and the regulations for the implementation of the trademark law. It is hereby printed and distributed. Please comply with it. Please report the new situation and problems encountered in the implementation in time.

                                                                                                                                                  State Intellectual Property Office

                                                                                                                                                   June 15, 2020

                                                                 Judgment standard of trademark infringement

Article 1

This standard is formulated in accordance with the Trademark Law of the people's Republic of China (hereinafter referred to as the Trademark Law), the regulations for the implementation of the Trademark Law of the people's Republic of China (hereinafter referred to as the regulations for the implementation of the Trademark Law) and relevant laws, regulations and departmental rules in order to strengthen the guidance of trademark law enforcement, unify the law enforcement standards, improve the level of law enforcement and strengthen the protection of the exclusive right to use trademarks.

Article 2

This standard is applicable to trademark law enforcement departments when handling and investigating trademark infringement cases.

Article 3

To judge whether it constitutes trademark infringement, it is generally necessary to judge whether the suspected infringement constitutes the use of trademark in the sense of trademark law.

The use of a trademark refers to the use of a trademark in commodities, commodity packaging, containers, service places and trading documents, or in advertising, exhibitions and other commercial activities to identify the source of commodities or services.

Article 4

The specific forms of expression of trademarks used in commodities, commodity packaging, containers and commodity transaction documents include but are not limited to:

（1） The trademark shall be directly attached, engraved, branded or woven to commodities, commodity packages, containers, labels, etc., or used to attach labels, product manuals, introduction manuals, price lists, etc. to commodities;

（2） Trademarks are used in the transaction documents related to commodity sales, including commodity sales contracts, invoices, bills, receipts, import and export inspection and quarantine certificates, customs declaration documents, etc.

Article 5

The specific forms of expression of trademarks used in service places and service transaction documents include but are not limited to:

（1） The trademark is directly used in the service place, including the introduction manual, staff clothes, posters, menus, price lists, business cards, lotteries, office stationery, letterhead and other related articles used to provide services;

（2） The trademark is used on the documents related to the service, such as invoice, bill, receipt, remittance document, service agreement, maintenance certificate, etc.

Article 6

The specific forms of expression of trademarks used in advertising, exhibitions and other commercial activities include but are not limited to:

（1） Trademarks are used in the media such as radio, television, film, Internet, or in public publications, or in billboards, mail advertisements or other advertising carriers;

（2） The use of trademarks in exhibitions and expositions, including the printing materials, booth photos, exhibition certificates and other materials provided in exhibitions and expositions;

（3） Trademarks are used on websites, instant messaging tools, social networking platforms, applications and other carriers;

（4） Trademark is used on information carriers such as QR code;

（5） The trademark is used on the shop signboard and shop decoration.

Article 7

To judge whether a trademark is used or not, the subjective intention of the user, the way of use, the way of publicity, the industry practice, the consumer cognition and other factors shall be taken into consideration.

Article 8

The circumstances without the permission of the trademark registrant include the category, time limit and quantity of the goods or services without the permission or beyond the permission.

Article 9

The same kind of commodity refers to the commodity with the same name actually produced and sold by the suspected infringer as that approved by the registered trademark of others, or the commodity names of the two are different, but they are the same or basically the same in function, purpose, main raw materials, production department, consumption object, sales channel, etc., which is generally considered to be the same kind of commodity by the relevant public.

The same service refers to the service whose name actually provided by the suspected infringer is the same as the service name approved for use by another registered trademark, or the two service names are different, but they are the same or basically the same in terms of service purpose, content, method, provider, object, place, etc., and the relevant public generally believes that they are the same kind of service.

The approved names of goods or services refer to the names used by the State Intellectual Property Office in trademark registration, including the names of goods or services listed in the differentiation table of similar goods and services (hereinafter referred to as the differentiation table) and the names of goods or services not listed in the differentiation table but accepted in trademark registration.

Article 10

Similar commodities refer to commodities with certain commonality in function, purpose, main raw materials, production departments, consumption objects, sales channels, etc.

Similar services refer to services with certain commonality in purpose, content, mode, provider, object, place, etc.

Article 11

To judge whether it belongs to the same kind of goods or services, similar goods or services, a comparison shall be made between the goods or services approved for use by the obligee's registered trademark and the goods or services suspected of infringement.

Article 12

To judge whether the goods or services suspected of infringement constitute the same goods or services, similar goods or similar services, and whether the goods or services approved for use by another person's registered trademark constitute the same goods or services, it shall be determined with reference to the current table of distinctions.

For the commodities not covered in the differentiation table, whether they constitute the same or similar commodities shall be determined based on the general understanding of the relevant public and the comprehensive consideration of the functions, uses, main raw materials, production departments, consumers, sales channels and other factors of the commodities;

For the services not covered by the differentiation table, it shall be determined whether they constitute the same or similar services based on the general understanding of the relevant public and the comprehensive consideration of the purpose, content, mode, provider, object, place and other factors of the services.

Article 13

The same trademark as the registered trademark refers to the trademark suspected of infringement is the same as the registered trademark of others, and the trademark with different visual effect or sound perception is basically the same, which is difficult to be distinguished by the relevant public.

Article 14

When a trademark suspected of infringement is compared with a registered trademark of another person, it can be determined that the same circumstances as a registered trademark include:

（1） Any of the following circumstances occurs to a literal trademark:

1. The composition and order of words are the same;

2. Change the font, letter case, horizontal and vertical arrangement of the registered trademark, which is basically the same as the registered trademark;

3. Change the space between the words, letters, numbers, etc. of a registered trademark, which is basically the same as the registered trademark;

4. Changing the color of a registered trademark does not affect the distinctive features of the registered trademark;

5. Only adding the general name, figure and model of the goods to the registered trademark without obvious characteristics, which does not affect the expression of the obvious characteristics of the registered trademark;

（2） There is no visual difference in the composition elements and expression forms of graphic trademarks;

（3） The composition, appearance, arrangement and combination of words and figures of a combination of words and figures are the same, and the overall vision of a trademark is basically the same;

（4） In the three-dimensional trademark, the prominent three-dimensional mark is the same as the prominent plane element, or there is basically no difference;

（5） In a color combination trademark, the combination of colors and the arrangement are the same, or there is basically no difference;

（6） The auditory perception of the sound trademark is the same as the overall music image, or there is basically no difference;

（7） There is no difference in visual effect or auditory perception between other trademarks and registered trademarks.

Article 15

A trademark similar to a registered trademark refers to a trademark suspected of infringement that has similar font, pronunciation and meaning, or similar composition, coloring and shape of a graphic trademark, or similar overall arrangement and shape of a graphic composite trademark, or similar shape and shape of a three-dimensional trademark, or similar color composite trademark, compared with a registered trademark of another person The color or combination of the subject is similar, or the auditory perception of the sound trademark or the overall musical image is similar, etc.

Article 16

Whether the trademark suspected of infringement is similar to the registered trademark of others shall be judged by referring to the provisions on trademark similarity in the current Trademark Review and trial standard.

Article 17

To judge whether a trademark is the same or similar, a comparison shall be made between the registered trademark of the obligee and the trademark suspected of infringement.

Article 18

When judging a trademark that is the same or similar to a registered trademark, the general attention and cognitive ability of the relevant public shall be taken as the standard, and the methods of isolation observation, overall comparison and main part comparison shall be adopted for identification.

Article 19

In the judgment of trademark infringement, in the case of using similar trademarks on the same goods or services, or using the same or similar trademarks on similar goods or services, it is also necessary to judge whether it is easy to cause confusion.

Article 20

The trademark law provides that the following circumstances are likely to lead to confusion:

（1） Enough to make the relevant public think that the goods or services involved in the case are produced or provided by the obligee of the registered trademark;

（2） It is enough to make the relevant public think that the provider of goods or services involved in the case has investment, license, franchise or cooperation relationship with the obligee of the registered trademark.

Article 21

The relevant trademark law enforcement departments shall comprehensively consider the following factors and the mutual influence among them when judging whether it is easy to cause confusion:

（1） Approximation of trademarks;

（2） Similar situation of goods or services;

（3） The significance and popularity of the registered trademark;

（4） The characteristics of the goods or services and the way in which the trademarks are used;

（5） The degree of attention and cognition of the relevant public;

（6） Other relevant factors.

Article 22

Where a registered trademark is changed by itself or used in combination with several registered trademarks, which are the same as the registered trademarks of others in the same goods or services, it shall be a trademark infringement act as prescribed in the first paragraph of Article 57 of the trademark law.

Where a registered trademark is changed on its own or used in combination with several registered trademarks, which is similar to a registered trademark of another person in the same or similar goods or services, and which is likely to cause confusion, it shall belong to Article 57 of the trademark law

Article 23

In the same kind of goods or services, the prominent use of the trade name in the enterprise name, which is the same as the registered trademark of others, is a trademark infringement act stipulated in the first paragraph of Article 57 of the trademark law.

In the same or similar goods or services, the prominent use of the trade name in the enterprise name, which is similar to the registered trademark of others and easy to cause confusion, belongs to the trademark infringement act specified in the second paragraph of Article 57 of the trademark law.

Article 24

A registered trademark that does not specify a color may freely adhere to the color, but if it adheres to the color for the purpose of clinging and is similar to a registered trademark of another person on the same or similar goods or services, which is likely to cause confusion, it shall be an infringement of the trademark rights as prescribed in the second paragraph of Article 57 of the trademark law.

Where a registered trademark has a high visibility, the suspected infringer and the registered trademark obligee are in the same industry or have a relatively large relevance, and they use the same or similar marks with the registered trademark without any justifiable reason, they shall be deemed to have the intention of climbing.

Article 25

In the processing and contracting business activities of contracted labor and contracted materials, if the contractor uses the goods infringing the exclusive right to use the registered trademark, it shall be a trademark infringement as stipulated in Item 3, Article 57 of the trademark law.

Article 26

When a business operator sells a commodity, it shall be deemed as a trademark infringement as provided for in Item 3, Article 57 of the trademark law.

Article 27

Under any of the following circumstances, it does not belong to the "sale of goods that are not known to infringe the exclusive right to use a registered trademark" stipulated in the second paragraph of Article 60 of the Trademark Law:

（1） The purchase channel does not conform to the commercial practice, and the price is obviously lower than the market price;

（2） Refusing to provide accounting documents such as accounts and sales records, or falsifying accounting documents;

（3） Transferring or destroying material evidence, or providing false certificates or false information after the crime;

（4） Those who commit crimes again after being dealt with in similar illegal circumstances;

（5） Other things that can be determined that the party knows or should know.

Article 28

The term "explanation provider" as stipulated in the second paragraph of Article 60 of the Trademark Law refers to the information or clue provided by the suspected infringer, such as the name, business address, contact information, etc.

Where a provider cannot be found due to the false or unverifiable information provided by the suspected infringer, it shall not be regarded as "explaining the provider".

Article 29

If the suspected infringer is a commodity whose sale as stipulated in the second paragraph of Article 60 of the trademark law does not know that it infringes the exclusive right to use a registered trademark, he shall be ordered to stop the sale of the infringing commodity, and the supplier shall be put on file for investigation or the case clue shall be transferred to the trademark law enforcement department with jurisdiction for investigation and treatment.

If the infringer sells the infringing goods again, he shall investigate and deal with them according to law.

Article 30

Market organizers, exhibition organizers, counter lessors, e-commerce platforms and other operators are slack in performing their management duties, knowing or should have known that operators in the market, exhibitors, counter lessees, and e-commerce operators in the platform carry out trademark infringement and do not stop them; or, although they do not know, they are notified by the relevant trademark law enforcement departments or the trademark rights holders have taken effect Where necessary measures are not taken to stop the trademark infringement after the administrative or judicial documents are informed, it shall be deemed as the trademark infringement as stipulated in Item 6, Article 57 of the trademark law.

Article 31

Where an e-commerce that registers the same or similar words as a registered trademark of another person as a domain name and trades related goods or services through the domain name is likely to mislead the relevant public, it belongs to the trademark infringement act specified in Item 7, Article 57 of the trademark law.

Article 32

In the investigation and handling of trademark infringement cases, the legal prior rights shall be protected.

If the application date of the registered trademark is earlier than the application date of the design patent or the completion date of the creation of the copyrighted work as evidenced, the relevant trademark law enforcement departments may investigate and deal with the trademark infringement cases.

Article 33

The term "trademark with certain influence" as stipulated in the third paragraph of Article 59 of the Trademark Law refers to the unregistered trademark which is used first in China and known to the relevant public within a certain range.

For the identification of a trademark with certain influence, the factors such as the duration of use, sales volume, business volume, advertising and publicity of the trademark shall be taken into consideration for comprehensive judgment.

If the user has any of the following circumstances, it shall not be deemed to continue to use within the original scope of use:

(1) to increase the specific goods or services used by the trademark;

（2） To change the graphics, characters, colors, structures, writing methods and other contents of the trademark, except for the changes for the purpose of distinguishing it from other registered trademarks;

（3） Other circumstances beyond the original scope of use.

Article 34

"Two or more trademark infringements within five years" as stipulated in the second paragraph of Article 60 of the Trademark Law refers to that the same party commits another trademark infringement within five years from the effective date of the administrative penalty or judgment of the relevant trademark law enforcement department or the people's court that infringes the exclusive right of another party to use a registered trademark.

Article 35

The provisions on "suspension" in the third paragraph of Article 62 of the trademark law may be applied to the following cases that are being tried by the State Intellectual Property Office or the people's Court:

(I)