When facing trademark infringement in China, brand owners must be well-informed about trademark enforcement and have a robust strategy for protecting their trademark rights. This guide addresses common queries brand owners have, offers detailed answers, and suggests specific actions to take at various stages of the process, alongside the relevant legal principles.
Confirming Infringing Actions
Evidence Collection: Ensure comprehensive and accurate evidence to substantiate claims.
Determining Damages: Understand the methods to calculate damages and avoid unrealistic claims.
Pre-litigation Protection Measures: Explore legal options to safeguard rights before filing a lawsuit.
Trademark Rights and Fair Use
Trademark Rights to be Cited: Identify which trademarks are relevant and necessary to cite in the lawsuit.
Fair Use: Understand what constitutes fair use and how it may affect the infringement case.
Legal Action Entities and Limitations
Who Can Bring Legal Action: Ensure that the entity bringing the case is properly qualified.
Limitation Periods: Be aware of the statute of limitations for filing claims.
Prior Use Evidence and Legitimate Source
Prior Use: Consider whether there is any prior use of the trademark that could impact the case.
Legitimate Source: Verify if the infringing products are obtained from legitimate sources to counter potential defences.
Relevant Legal Framework
Trademark Law
Anti-Unfair Competition Law
Trademark enforcement is vital to protect a brand's reputation and consumer trust. Brand owners have two primary routes: administrative complaints to the Market Supervision Administration or judicial litigation in courts. Each has its advantages and disadvantages in terms of speed, cost, and potential for damages.
Confirming Infringing Actions: In trademark infringement cases, it’s essential to accurately document and categorise the infringing actions. Different types of trademark use by the infringer can impact the legal strategy and evidence required.
Evidence Collection: Proper evidence collection is crucial. This includes proving trademark ownership, documenting infringement, calculating damages, and understanding the infringer's details. Evidence must be collected legally and be consistent to be effective in court.
Determining Damages: Compensation for trademark infringement can be challenging to calculate. The Trademark Law allows for up to 5 million yuan in statutory compensation, but brand owners should base claims on realistic evidence and avoid excessive demands.
Pre-litigation Protection Measures: Before initiating legal proceedings, brand owners can seek pre-litigation measures to preserve evidence and prevent further damage.
Trademark Rights to be Cited: Infringement cases may involve multiple trademarks. Only those necessary to support the claim should be cited to avoid unnecessary complexity.
Fair Use: Understand what constitutes fair use under the Trademark Law, as it may affect the outcome of the case.
Legal Action Entities and Limitations: Ensure that only qualified entities bring legal action and be mindful of the two-year statute of limitations from the date of awareness of the infringement.
Prior Use Evidence and Legitimate Source: Evaluate any prior use of similar trademarks and ensure that infringing products are not defensibly sourced from legitimate channels.
This guide provides a comprehensive overview of the considerations and steps brand owners should take when facing trademark infringement in China.
Woodburn Accountants & Advisors is one of China’s most trusted business setup advisory firms.
Woodburn Accountants & Advisors is specialized in inbound investment to China and Hong Kong. We focus on eliminating the complexities of corporate services and compliance administration. We help clients with services ranging from trademark registration and company incorporation to the full outsourcing solution for accounting, tax, and human resource services. Our advisory services can be tailor-made based on the companies’ objectives, goals and needs which vary depending on the stage they are at on their journey.
Talk to an expert
Schedule a 30-mins complimentary, no-obligation call to see how Woodburn can help you. Book a call with our Head of Business Advisory - Kristina Koehler-Coluccia.
Topics we can advise on include:
Company Registration
Cloud Accounting & Financial Reporting
Cloud Payroll Services
Tax & Audit Services
Recruitment
Employer-of-Record
Visa Application
Trademark Registration
Switch to Woodburn
Partner with Woodburn (cross referral)
Our calls are automatically scheduled via Zoom - or via Teams, WeChat or WhatsApp upon direct request.
Our advisory calls are available from Monday-Friday from 8am to 5pm CEST and Wednesday until 9pm CEST.