CHINA ESQUIRE

Brad Luo at Chinese Business Law Blog recently did a translation from Chinese of a decision from the PRC Supreme People’s Court. The decision, dated 2/18/2008, sets forth basic provisions regarding trademark law and damages. It takes effect on 3/1/2008.

Here is his translation:

Article One Provided that requirements under Article 108 of the PRC Civil Procedure Law are met, People’s Court should accept cases filed by plaintiffs on the basis that defendants’ use of letters, graphics in defendants’ registered mark violated Plaintiffs’ existing copyright, patent right in packaging design, rights in business names, etc.

Where Plaintiff brings a lawsuit on the ground that another’s registered mark used in approved categories goods/services are similar or identical to her mark, People’s court should refer plaintiff to relevant administrative bodies for resolution, in accordance with Article 111 (3). However, where plaintiff bring a lawsuit on the grounds that another’s use of its registered mark is beyond the categories of goods/services registered for, or where another uses a registered mark by transforming its distinctive features, disassembling it or re-configuring it, the people’s court shall accept such cases.

Article Two Where Plaintiff brings lawsuits, pursuant to PRC Anti Unfair Competition Law Article 5 (3), on the ground that another’s use of a business name is same or similar to her prior existing business name, which use is sufficient to cause consumer confusion as to the source of the goods/service, the people’s courts should accept such cases.

Article Three The people’s court shall, in accordance with the plaintiff’s claim and the nature of controversial legal relationship under civil law, and in accordance with the Civil Causes of Action (Provisional), ascertain the cause of the conflict in civil disputes between registered trademarks or enterprises and prior existing civil rights, and apply appropriate law accordingly.

Article Four Where the use enterprise name complained of infringe on the exclusive right of registered marks, or constitute unfair competition, the people’s court, in accordance with the plaintiff’s petition and specific circumstances of the case, may assign civil liabilities, such as enjoining defendant from using such name, correcting such use, etc.

So in more plain English, here is what is actually set forth.

Art I. There are different standards for trademark infringment depending on whether the infringing mark is within the scope of the goods and services that the registered mark covers. In other words, there is a difference between infringing on mark X if: (1) mark X is registered only for international class 29 (wine) and the counterfeit is also wine, and (2) mark X is wine and the counterfeit is frozen tuna. My thoughts: frankly, this does not tell me much that is revolutionary. I figured such things were discernable with a good head on your shoulders.

Art II. Courts should accept cases where an potentially infringing business name is confusing.

Art III. Courts should determine the applicable law depending on plaintif’f’s claim and the nature of the controversy. Honestly, I am not sure why either of these was an issue either. It seems common-sensical to me that this should be the case. However, note that Article 3 appears to expand the Chinese court’s power in equity to fashion a remedy and determine applicable law. This will prove interesting, as good lawyers should be able to exploit this.

Art IV. In the case of infringement, courts can grant injunctive relief. Again, this is not a surprise. In fact, its probably the only reliable source of damages you will get as Chinese courts will not grant lost profits. (see this post)

So what does this do for you ultimate? Not much, sadly. I don’t think the Supreme Court did much for anyone with this pronoucement. (except if you are trying to learn Chinese or English legal translation, it is good to look at Brad’s full post)

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