CNIPA Invites Comments on Criteria for Determining Trademark Infringement
On December 18, the China National Intellectual Property Administration (CNIPA) published the Criteria for Determining Trademark Infringement (For-Comment Draft) to invite public comments.
The eight-chapter, 58-article Draft attempts to further prescribe a suite of rules for testing trademark infringement, including trademark use, determination of infringement, exceptions, suspension of application and conflict of rights, offering workable tools for trademark enforcement agencies to deal with trademark infringement cases.
Under the Draft, the first step taken by trademark enforcement agencies when determining whether a trademark is infringed is to evaluate whether the alleged infringing act constitutes the 'trademark use' as provided in the Trademark Law. Evaluating whether the trademarks in question are identical or similar is to compare the registered trademark of the right holder and the alleged infringing trademark (compare their key portions that have the function of identification) rather than the right holder's trademark in actual use and the alleged infringing trademark. When evaluating 'a trademark identical with the registered trademark' or 'a trademark similar with the registered trademark', trademark enforcement agencies shall assume the eyes and brains of the relevant public who has general knowledge and experience toward the merchandise (service) in question and who lends a normal attention when selecting merchandise (service). The trademarks in question shall be looked at separately, compared as a whole, and compared in key portions while factoring in their pronunciations, shapes of their characters, meanings and arrangements.
In addition, the Draft puts market owners, exhibition organizers, sales counter landlords and e-commerce platforms on the chopping block if they are negligent in performing their oversight duty. If they know or shall have known the respective businesses in their markets, exhibitors, counter tenants, businesses on the platforms infringe trademarks and fail to stop such acts; or they have no knowledge of the infringing acts, but fails to stop such acts after being reminded by trademark enforcement agencies, their non-performance will be deemed as trademark infringing acts under Paragraph 6, Article 57 of the Trademark Law.
The broader intent of this document is to execute the decisions of the Party and the State Council on enhancing IP protection, bolster trademark protection, ensure the legitimate rights and interests of consumers, manufacturers, businesses and foster a sound climate to do business. Professionals and the public are invited to submit their comments via email, fax and letters prior to January 18, 2020.