CNIPA Issued the Criteria’s on Determining Trademark Infringement

On 17 June 2020, the China National Intellectual Property Administration (CNIPA) issued the Judging Criteria for Trademark Infringement (Criteria). The Criteria includes thirty-eight articles specifying on the use of trademarks, the identical product, similar products, likelihood of confusion, sales exemption, conflict of rights, suspension of application, identification of the right holder, etc. The major details are as follows.

1. Trademark use
The Criteria clarify that the first step in determining whether there is a trademark infringement is to determine whether the alleged infringement actions constitute a “trademark use” under the PRC Trademark Law. The Criteria refine the definition of trademark use on goods, lists the specific forms of use of trademarks and clarifies the principles for determining the use of trademarks

2. Identical and similar goods
The Criteria stipulates the judgment principle of the identical and similar goods, and clarifies the role of the Classification of Similar Goods and Services issued by the CNIPA in the administrative enforcement of trademarks.

3. Regarding identical or similar trademark
Criteria for new forms of trademarks such as three-dimensional trademarks, color combination trademarks and sound trademarks have been introduced. In addition, it further clarifies the role of the Trademark Examination and Trial Standards in trademark administrative enforcement.

4. Likelihood of confusion
The Criteria clarified two situations where confusion is likely to be caused, and the factors for determining the confusion.

5. Lack of permission of the trademark registrant
In view of the disputed infringement caused by going beyond designated classes, deadlines and quantity as permitted, the Criteria clearly stipulates the situations of unauthorized permission.

6. Specific acts of trademark infringement
The Criteria specifies trademark infringement activities including self-change of registered trademarks, the use of multiple registered trademark combinations, and purposes such as the use of attached colors, the use of infringing commodities in the contracting of contracted materials, the infringing commodities included in sales activities, and assistance in infringement.

7. Seller’s liability exemption
The Criteria specifies detailed requirements for sellers to be exempted from liability, clarifying situations that are not regarded as a seller should not know.

8. Dealing with conflicts between trademarks and other intellectual property rights
The Criteria stipulates the principle of dealing with the conflict between trademarks and the above-mentioned intellectual property rights, and clarifies the date of trademark application as the benchmark for comparison.

9. Trademark defense on prior use of trademark
In order to regulate the use of unregistered trademarks that were previously used, the Criteria provide detailed regulations on the influential trademarks and the original scope of use.

10. Application of suspension
The Criteria specifies the circumstances in which suspension can be applied.

11. Two or more trademark infringements committed within five years
The Criteria specifies the "committed trademark infringement on two or more occasions within five years" stipulated in the second paragraph of Article 60 of the Trademark Law.

12. Recognition of rights holders
The Criteria stipulates that trademark right holders shall bear legal responsibility for their identification opinions, and clarifies that law enforcement agencies should review the legitimacy, authenticity and relevance of the identification opinions and the identification opinions adopted as evidence prerequisites.