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Guide : In this case, we filed an invalidation request against the design patent titled Shop Front (Milk Tea Shop) with a prior trademark right as evidence, which was approved by th...
Guide : In this case, we filed an invalidation request against the design patent titled Shop Front (Milk Tea Shop) with a prior trademark right as evidence, which was approved by th...
The CNIPA issued the Standards for the Judgment on Trademark Infringement


For the purpose of deeply implementing the decision and deployment of the CPC Central Committee and the State Council on strengthening the protection of IP rights, strengthening the guidance of trademark enforcement, unifying the enforcement standards, and strengthening the protection of trademark exclusive rights, a few days earlier the CNIPA issued the Standards for the Judgment on Trademark Infringement (hereinafter referred to as "the Standards").
 
After the latest round of institutional reforms, the central government made it clear that the CNIPA is responsible for the guidance on the work of trademark and patent law enforcement, "formulating and guiding the implementation of standards for affirmation of trademark rights and patent rights and infringement judgment ". The formulation of "the Standards" is a practical need to implement the requirements of institutional reform and strengthen the guidance for trademark enforcement, as well as a specific measure to implement the "Opinions on Strengthening the Protection of IP Rights" and its promotion plan.
 
"The Standards", within the framework of the Trademark Law and based on the function of guiding trademark enforcement, systematically sorts out and summarizes the experience and practices of trademark administrative protection over the years, provides specific operational guidelines for the relevant law enforcement departments for administration according to law, and create an environment of IP protection with high transparency and predictability for market players. "The Standards" consist 38 articles that specified use of trademark, identical goods, similar goods, identical trademark, similar trademark, easy to cause confusion, sales exemption, conflict of rights, application of suspension, identification of right holders, etc.
 
The relevant officer in charge of the Protection Department of the CNIPA stated that the next step would be to do a good job in the policy interpretation of the Standards, increase training and promote the implementation of the Standards, at the same time, to issue guiding cases, typical cases, administrative reply, etc., so as to constantly improve the guiding system, improve the protection level of law enforcement, increase the protection of IP rights, and create a good business environment.
 
 

 
Appendix
 
The Standards for the Judgment on Trademark Infringement
 
Article 1 The Standards is enacted for the purposes of strengthening the guidance of trademark law enforcement, unifying law enforcement standards, enhancing the level of law enforcement, and strengthening the protection of  exclusive right to use trademark, pursuant to the "Trademark Law of the People's Republic of China" (hereinafter referred to as the "Trademark Law"), "Regulations on the Implementation of the Trademark Law of the People's Republic of China" (hereinafter referred to as the “Trademark Law Implementation Regulations”) and related laws, regulations, and departmental regulations.
 
Article 2 The relevant departments of trademark law enforcement shall apply the Standards when handling and investigating trademark infringement cases.
 
Article 3 To determine whether it constitutes trademark infringement, it is generally necessary to determine whether the alleged infringement constitutes the use of a trademark in the sense of the Trademark Law.
 
The use of a trademark refers to the act of using trademark in goods, product packaging, containers, service venues, and trading documents, or in advertising, exhibitions, and other commercial activities to identify the source of goods or services.
 
Article 4 The specific forms of using trademarks in goods, product packaging, containers and goods trading documents include but are not limited to:
 
(1) Directly attaching trademarks to goods, product packaging, containers, labels, etc., through attaching, engraving, imprinting or weaving and other ways, or using on product tags, product manuals, introduction brochures, price lists, etc.;
 
(2) Using trademarks in trading documents related to goods selling, including goods sales contracts, invoices, bills, receipts, goods import and export inspection and quarantine certificates, customs declaration documents, etc.
 
Article 5 The specific forms of using trademarks in service venues and service trading documents include but are not limited to:
 
(1) Directly using trademarks in service venues, including introduction manuals, staff clothing, posters, menus, price lists, business cards, coupons, office stationery, letterhead, and other related items used to provide services;
 
(2) Using trademarks on documents related to services, such as invoices, bills, receipts, remittance documents, service agreements, repair and maintenance certificates, etc.
Article 6 The specific forms of using trademarks in advertising, exhibitions and other commercial activities include but are not limited to:
 
(1) Using trademarks in media such as radio, television, movies, and the Internet, or in publications, or on billboards, postal advertisements, or other advertising carriers;
 
(2) Using trademarks in exhibitions and expositions, including printed matter using the trademarks, booth photos, participation certificates and other materials;
 
(3) Using trademarks on websites, instant messaging tools, social network platforms, application programs and other carriers;
 
(4) Using trademarks on information carriers such as QR codes;
 
(5) And using trademarks on store signboards, store hall decoration.
 
Article 7 When judging whether or not it is the use of a trademark, comprehensive consideration shall be given to the user's subjective intentions, methods of use, methods of publicity, industry practices, consumer perception, and etc.
 
Article 8 The circumstance of without authorization of the trademark registrant includes cases as having no authorization or exceeding the authorized class, duration, quantity, etc.
 
Article 9 Identical goods refer to the goods that are actually produced and sold by the suspected infringer and whose product name is identical with that of the goods on which other's registered trademark is approved to use, or the goods whose product name is different but the function, use, main raw materials, production sector, target consumers, sales channels and other aspects are the same or basically the same that the relevant public generally consider them as same goods.
 
Identical services refer to the service that is actually provided by the suspected infringer and whose service name is identical with that of the service on which other's registered trademark is approved to use, or the service whose name is different but the service purpose, content, method, provider, client, place, etc. is the same or basically the same that the relevant public generally consider them as same service.
 
The goods or services names approved to use refer to the name used for the goods or services by the CNIPA in its trademark registration work, including those listed in the "Classification of Similar Goods and Services " (hereinafter referred to as the Classification) and those that are not listed in the Classification but accepted in the trademark registration.
 
Article 10 Similar goods refer to those with certain commonality in function, use, main raw materials, production sector, target consumers, sales channels, etc.
Similar services refer to those with certain commonality in service purpose, content, method, provider, client, place, etc.
 
Article 11 When judging whether or not it belongs to identical goods or identical service, similar goods or similar service, a comparison shall be made between the goods or services on which the right owner's registered trademark is approved to use and those that are suspected of infringement.
 
Article 12 When determining whether or not the goods or services suspected of infringement constitute identical goods or identical  services, similar goods or similar services to those approved to use by other's registered trademarks, the existing Classification shall be applied for reference.
 
For the goods that are not covered by the Classification, the judgment on whether or not it constitutes identical or similar goods shall be made based on the general understanding of the relevant public, and  overall consideration of the function, use, main raw materials, production sector, target consumers, sales channel and other factors of the goods;
 
For the services that are not covered by the Classification, the judgment on whether or not it constitutes identical or similar services shall be made based on the general understanding of the relevant public, and overall consideration of the purpose, content, manner, provider, client, venues and other factors of the service;
 
Article 13 Trademark that is identical with the registered trademark refers to a trademark suspected of infringement is identical with other’s registered trademark, or a trademark, although is of difference, its visual effect or the auditory perception of a sound trademark is basically the same, making it difficult for the relevant public to distinguish.
 
 
Article 14 When a trademark suspected of infringement is compared with a registered trademark of another person, it can be determined as identical with the registered trademark in any of the following circumstances:
 
(1) Any of the following circumstances for word trademark:
 
 
(2) Figurative trademark basically being indistinguishable in terms of composing elements, representation, etc.;
 
(3) The composing words, appearance of the device, and arrangement and combination of a composition mark combined of word and device basically being the same with the registered trademark in overall visual effect;
 
(4) The distinctive three-dimensional sign in the three-dimensional trademark being the same as , or basically having no difference from the distinctive element of a graphic registered trademark;
 
(5) The color and arrangement of the color combination trademark being the same, or basically having no difference from the registered trademark;
 
(6) The auditory perception and the overall music image of the sound mark being the same, or having no difference from the registered trademark;
 
(7) Other situations that basically having no difference from registered trademarks in terms of visual effects or auditory perception.
 
Article 15 A trademark that is similar to a registered trademark refers to a trademark suspected of infringement has similar font, pronunciation, and meaning when compared with other’s registered trademark , for word trademark; or for device trademark, the composition, color, and shape are similar; or for the trademark composed of word and device, the overall arrangement and combination and shape are similar; or for three-dimensional trademark, the shapes of the three-dimensional sign are similar; or for color combination trademark, the color or combinations are similar; or for sound trademark, the auditory perception or the overall music image are similar.
 
Article 16 Whether or not a trademark suspected of infringement is similar to other’s registered trademark shall be determined with reference to the guidelines of trademark similarity in the existing "Trademark Examination and Adjudication Standards".
 
Article 17 When judging whether or not a trademark is identical or similar, a comparison shall be made between the registered trademark of the right holder and the trademark suspected of infringement.
 
Article 18 The judgment on whether or not a trademark that is identical with or similar to a registered trademark, the general attention and cognition of the relevant public shall be used as the standard, and the methods of isolated observation, overall comparison and comparison of main parts shall be used for identification.
 
Article 19 When judging trademark infringement, in the case of using similar trademark on identical or similar goods or services, or using identical mark on similar goods or services, it shall also be determined whether confusion is likely to be cased.
 
Article 20 The circumstances where it is easy to cause confusion prescribed in the Trademark Law include:
 
(1) Being sufficient to make the relevant public believe that the goods or services involved are produced or provided by the registered trademark owner;
 
(2) Being sufficient to make the relevant public believe that the provider of the goods or services involved has an investment, license, franchise or cooperation relationship with the registered trademark owner.
 
Article 21 When judging whether it is easy to cause confusion, the relevant departments of trademark law enforcement shall comprehensively consider the following factors and the mutual influence between the factors:
 
(1) Similarity of the trademark;
 
(2) Similarity of the goods or services
 
(3) Distinctiveness and popularity of the registered trademark;
 
(4) Characteristics of the goods or services and manner of trademark use;
 
(5) Degree of attention and awareness of the relevant public;
 
(6) Other relevant factors.
 
Article 22 Where a registered trademark is changed in use by the registrant or the mark in use is a combination of a number of registered trademarks, if it constitutes identical mark with other’s registered trademark on identical goods or service, it shall belong to trademark infringing act stipulated in Paragraph 1 of Article 57 of the Trademark Law.
 
Where a registered trademark is changed in use by the registrant or the make in use is a combination of a number of registered trademarks, if it constitutes similar mark to other’s registered trademark on similar goods or services and is likely to cause confusion, it shall belong to trademark infringing act stipulated in Paragraph 2 of Article 57 of the Trademark Law.
 
Article 23 Where a trade name in an enterprise name is used prominently on identical goods or services, which is identical with other’s registered trademark, it constitutes trademark infringing act stipulated in Paragraph 1 of Article 57 of the Trademark Law.
 
Where a trade name in an enterprise name is used prominently on identical or similar goods or services, which is similar to other’s registered trademark and easily to cause confusion, it constitutes trademark infringing act stipulated in Paragraph 2 of Article 57 of the Trademark Law.
 
Article 24 A registered trademark without claiming color can be used in any color, but if the color is used for the purpose of free riding and is similar to other’s registered trademark on identical or similar goods or services, which is likely to cause confusion, it constitutes trademark infringing act stipulated in Paragraph 2 of Article 57 of the Trademark Law.
 
Where if the registered trademark is well-known, the suspected infringer is in the same industry as the registered trademark owner or an industry with greater relevance, and if there is no legitimate reason to use the same or similar signs as the registered trademark, the suspected infringer should be deemed having intention of free riding.
 
Article 25 Where in the contracting and processing business activities of contracted labor and materials, the contractor's use of goods that violates the exclusive right to use the registered trademark constitutes trademark infringing act stipulated in Paragraph 3 of Article 57 of the Trademark Law.
 
Article 26 Where if an operator offers goods that violate the exclusive right to use a registered trademark as bonus when selling goods, it constitutes trademark infringing act stipulated in Paragraph 3 of Article 57 of the Trademark Law.
 
Article27 Where there is any of the following circumstances, it does not belong to "unknowingly selling the goods that violate the exclusive right to use a registered trademark" as prescribed in the Paragraph 2 of Article 60 of the Trademark Law:
 
(1) The purchase channel does not conform to commercial practice and the price is significantly lower than the market price;
 
(2) the seller refuses to provide accounting documents such as account books, sales records, or the accounting documents provided are fraudulent;
 
(3) The seller transfers or destroys physical evidence after the infringement is carried out, or provides false proof or false information;
 
(4) Those who infringe again after being dealt with in similar illegal circumstances;
 
(5) Others circumstances that can be determined that the parties know or should have known.
 
Article 28 “Providing supplier’s information” prescribed in Paragraph 2 of Article 60 of the Trademark Law refers to a situation  that the suspected infringer voluntarily provides the supplier’s name, business address, contact information and other accurate information or clues.
 
Where if the supplier cannot be found due to the false or unverifiable information provided by the alleged infringer, it shall not be regarded as "providing supplier’s information ".
 
Article 29 Where if the suspected infringer unknowingly sells the goods that violate the exclusive right to use the registered trademark as prescribed in Paragraph 2 of Article 60 of the Trademark Law, the infringing goods shall be stopped from selling, the supplier shall be investigated or the clues of the case shall be transferred to the relevant trademark enforcement department with jurisdiction to investigate.
 
Where if the infringer sells the infringing goods that have been stopped from selling again, they shall be investigated and dealt with according to law.
 
Article 30 It shall belong to trademark infringing act stipulated in Paragraph 6 of Article 57 of the Trademark Law, where the market organizers, exhibition organizers, counter lessors, e-commerce platforms and other operators know or should know that the market operators, exhibitors, counter lessees, e-commerce operators on the platform carrying out trademark infringing act, but are slack in performing their management duties and stop them, or fail to take  necessary measures to stop the trademark infringing act after being notified by the relevant department of trademark law enforcement or notified by the trademark owner with an effective administrative or judicial document.
 
Article 31 Where if a party registers the word that is identical with or similar to other’s registered trademark as a domain name, and conducts related e-commerce of goods or service transactions through the domain name, which is likely to cause misunderstanding among the relevant public, it constitutes the trademark infringing act prescribed in Paragraph 7 of Article 57 of the Trademark Law.
 
Article 32 When investigating and handling trademark infringement cases, the lawful prior rights shall be protected.
 
Where if the design patent right and the copyright of the work are used to defend against the exclusive right to other’s registered trademark, if the application date for the registered trademark is prior to the application date of the design patent or the completion date of the creation of the copyrighted work proved by evidence, the trademark law enforcement department may investigate the trademark infringement case.
 
Article 33 “Trademark with certain influence” specified in Paragraph 3 of Article 59 of the Trademark Law refers to an unregistered trademark used earlier in China and known to the relevant public within a certain range.
 
The determination of “trademark with certain influence” should be comprehensively made by considering the factors such as duration of use, sales volume, turnover, advertising and other factors of the trademark.
 
If the user has any of the following circumstances, it shall not be deemed as continuous use within the original scope of use:
 
(1) expand specific goods or services used by the trademark;
 
(2) change the trademark's designs, word, color, structure, writing method, etc., except for the purpose of distinguishing from other's registered trademark;
 
(3) Other circumstances beyond the original scope of use.
 
Article 34 “Performing two or more trademark infringing acts within five years” stipulated in Paragraph 2 of Article 60 of the Trademark Law refers to the situation where trademark infringing act is performed again within five years from the effective date of the administrative punishment or judgment in which trademark infringing act against the exclusive right to use a registered trademark is determined by the relevant trademark law enforcement department or people’s court.
 
Article 35 The following cases being examined by CNIPA or heard in the litigation proceeding by people's court may apply the provisions on "suspension" stipulated in Paragraph 3 of Article 62 of the Trademark Law:
 
(1) The registered trademark is in the proceeding of invalidation;
 
(2) The registered trademark is in the grace period of renewal;
 
(3) Other circumstances of dispute over the registered trademark ownership.
 
Article 36 In the process of investigating and handling trademark infringement cases, the relevant departments of trademark law enforcement may require the right holders to issue written identification statement on whether the goods in question are produced by the right holders or are licensed to produce. The right holder shall bear corresponding legal responsibility for his identification statement.
 
The relevant department of trademark law enforcement shall review the qualification of person who issues the identification statement and the authenticity of the identification statement. If the suspected infringer has no contrary evidence to overturn the identification statement, the relevant trademark enforcement department shall adopt the identification statement as evidence.
 
Article 37 This standard is interpreted by the CNIPA.
 
Article 38 This standard shall be implemented as of the date of promulgation.
 
 
 

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