The “Judging Criteria for Trademark Infringement” has be implemented from June 15, 2020
The “Trademark Law” provides principles for the protection of trademark exclusive rights. The enforcement agencies do not have a consistency on handling similar cases. Therefore, the CNIPA released the “Judging Criteria for Trademark Infringement” (“Judging Criteria”) on June 15, 2020. The Judging Criteria provide specific judgment standards and requirements for enforcement agencies, and the main contents are as follows:
1.The judging criteria on the “identical goods” and “similar goods”
The “identical goods” refers to the name of goods actually produced and sold by the suspected tortfeasor is the same as the name of commodity of others approved to use the registered trademark; or the two names are different but are identical or almost identical in functions, purpose, main raw materials, production department, consumer targets, sales channel and other aspects, and the relevant public generally considers them to be identical goods. The “similar goods” refers to goods with certain commonalities in terms of functions, purposes, main raw materials, production sectors, target consumers, sales channels, etc.
To determine whether they are the same or similar goods, a comparison should be made between goods for which the right holder has been approved to use the registered trademark and those goods that are suspected of infringement.
To determine whether the suspected infringing goods and the goods for which the right holder has been approved to use the registered trademark are the same or similar type of goods, the applicable Table shall be referred to for the identification.
For commodities not covered by the Table, common sense of the general public shall be based on. To determine whether or not they are the same or similar goods, the functions, purposes, main raw materials, production departments, target consumers, sales channels and other factors of the commodities shall be comprehensively considered.
2.The judging criteria on “identical” and “similar”
A trademark that is identical with a registered trademark” means a suspected infringing trademark is identical with a registered trademark of others; or although it has some difference but there is no fundamental difference in visual effects or in auditory perception (in case of auditory trademark), and the general public can hardly tell the difference.
When comparing a suspected infringing trademark with a registered trademark of others, under the following circumstances, the trademark may be deemed identical to the registered trademark:
(I) A text trademark is in any of the following circumstances:
1.The formation and arrangement of texts are the same;
2.Having made change in the font, capital/lower case, and horizontal and vertical arrangements of the texts of the registered trademark, but there is no fundamental difference from the registered trademark;
3. Having made change in the space between texts, letters and numbers of the registered trademark, but there is no fundamental difference from the registered trademark;
4.Having made change in colour of the registered trademark, not affecting the manifestation of the distinctive features of the registered trademark;
5.Adding to a registered trademark such contents as the generic commodity name, graphics or model that lack any distinctive feature, not affecting the manifestation of the distinctive features of the registered trademark;
(II) Graphic trademarks are basically visually indistinguishable in terms of composition elements, expression forms, etc.;
(III) In the case of text-graphics combination trademarks, if the text composition, graphic appearance, and the arrangement and combination of the text and graphics are the same, the overall vision is basically indistinguishable.
A trademark that is similar to a registered trademark” means comparing a suspected infringing trademark with a registered trademark of others, (1) in the case of a text trademark: the shape, pronunciation and meaning of the texts are similar; (2) in the case of a graphic trademark: the design, colouring, and shape are similar; (3) in the case of a text-graphic combination trade mark: the overall arrangement or combination and appearance are similar; and etc..
To determine whether trademarks are identical or similar, a comparison shall be made between the registered trademark of the rights holder and the suspected infringing trademark.
In addition, the Judging Criteria has explained how to identify identical and similar related to three-dimensional trademark, colour combination trademark and sound trademark.
3.The judging criteria on the circumstances those are likely to cause confusion.
It shall have two categories: (I) It is sufficient to make the relevant public believe that the suspected infringing products or services are produced or provided by the owner of the registered trademark; and (II) It is sufficient to make the relevant public deem that there exists a relationship of investment, licensing, alliance or cooperation between the provider of the suspected infringing products or services and the owner of the registered trademark.
In addition, several factors shall be taken into consideration: (I) Similarity of the trademarks; (II) Similarity of the commodity or services; (III) The conspicuousness and popularity of the registered trademark; (IV) The characteristics of the goods or services and the manner in which the trademark is used; (V) The degree of awareness of the relevant public; and (VI) Other relevant factors.
4.To list several infringement behaviors.
The Judging Criteria has listed several infringement behaviors, such as:
(I) Alteration without authorization of a registered trademark which is similar to the registered trademark of others on the same or similar type of commodities or similar services, or easily causes confusion.
(II) Alteration without authorization of a combined use of multiple registered trademarks which is similar to the registered trademark of others on the same type of commodities or similar services, or easily causes confusion.
(III) Prominent use of the trade name in an enterprise name for the same type of goods or services which is identical to a registered trademark of others.
(IV) The purpose of attachment of color is cheating by causing similarity to the registered trademark of others for the same or similar goods or services; or if a party uses “commodities infringing the exclusive right to use a registered trademark in the business activities of contracting labor and materials for processing.
(V) Business operators who attach “commodities infringing the exclusive right to use a registered trademark” as gift in the sale of other commodities.
(VI) A market organizer, an exhibition organizer, a counter lessor, an e-commerce platform has helped the tortfeasor.
(VII) Using texts identical or similar to the registered trademark of to register a domain name, and through such domain name carrying out e-commerce transactions of related goods.
5.Details in the exceptions for the liabilities of the sale party
The judging Criteria has further stipulated the details in the exceptions for the liabilities of the sale party, such as the details related to prove the sale party is unknown about the infringement; the sale party could prove it obtained the goods in a legal way; and the sale part could report the provider of the goods.
In addition, the Judging Criteria has further explained the “trademark that has a certain influence”, the circumstances related to the original scope of use, the determination on “having committed trademark infringements for more than two times within five years”, the identification opinions of the trademark right owner.