Enforcement of Intellectual Property Rights
- Judicial
System
-
Administrative Authority for Industry
and Commerce
- Copyright
Administrative Authority
Patent
Enforcement
-
Infringement
- Preliminary
Injunction
- Damages
-
Criminal Sanction
-
Judicial or Administrative Action
-
Jurisdiction
-
Prescription of Action
- Infringement
- Preliminary
Injunction
- Preservation
of Evidence
- Damages
- Criminal
Sanction
-
Judicial or Administrative Action
-
Jurisdiction
-
Prescription of Action
-
Appeal
- Legal
Basis
- Infringement
- Preliminary
Injunction
- Preservation
of Evidence
-
Damages
- Criminal
Sanction
-
Judicial or Administrative Action
- Jurisdiction
- Prescription
of Action
- Burden
of Proof
- Appeal
Customs
Protection of Intellectual Property Rights
-
Legal Basis
- Scope
of Protection
- Recordation
of Intellectual Property Rights
- Seizure
of Suspected Goods
- Actions
Following the Seizure
- Disposal
of Counterfeit Goods
Enforcement of Intellectual Property Rights
A
unique feature of China's intellectual property right enforcement mechanism
is the so-called "double track" system. That is to say, one may bring
an action against the infringer directly in a court, i.e. using judicial
way, or request the competent administrative authority to handle the disputes,
i.e. using administrative way. It is important to note that administrative
resolution is not necessarily a procedure prior to the judicial resolution.
The Chinese judicial system consists of the following
courts at four levels:
1.
Supreme People's Court;
2.
High People's Court (each province, autonomous region
as well as the municipality directly under the authority of the central
government has one High People's Court);
3.
Intermediate People's Court (each major city has one
or two Intermediate People's Court); and
4.
Basic People's Court (each county and each district
of major cities has one Basic People's Court).
The Chinese judicial system adopts "two-instance"
system. In most cases, the first instance courts hearing the intellectual
property related cases are intermediate courts.
- Administrative
Authority for Patent Affairs
It is a distinct feature of the Chinese patent system
that administrative authorities for patent affairs are established under
the local governments in all provinces, autonomous regions, municipalities
and certain cities. The function of the authorities is to administer patent
affairs and handle patent disputes within their jurisdiction. The authorities
are not branches of the State Intellectual Property Office and do not
accept patent applications.
- Administrative
Authority for Industry and Commerce
Administrative authority for industry and commerce is a governmental agency in charge of corporation registration, market supervision, etc. Its branches extend nationwide and reach the township level. Administrative authority for industry and commerce plays an important role in cracking down on trademark infringement.
The China Trademark Office and the Trademark Review
and Adjudication Board are under the administration of the State Administration
for Industry and Commerce.
- Copyright
Administrative Authority
The
National Copyright Administration is a governmental agency responsible
for copyright administration and enforcement nationwide. In local governments
in all provinces, autonomous regions, municipalities and certain cities,
copyright administrative authority are established to administer local
copyright affairs including copyright enforcement
- Infringement
-
making, using, offering to sell, selling or importing
the patented product;
-
using the patented process; or
-
using, offering to sell, selling or importing the product
directly obtained by the patented process.
After the grant of the patent right for a design, a
person will be liable for patent infringement and actions can be brought
against him if he commits, for business purposes, any of the following
acts:
-
making, selling or importing the product incorporating
patented design.
- Preliminary
Injunction
Where it is difficult to determine either the losses
suffered by the patentee or the profits gained by the infringer through
the infringement, the damages should be calculated with reference to the
royalty of a patent license, if there is any. Where there is no such royalty
of a patent license, which can be referred to, or the royalty is obviously
unreasonable, the damages should be assessed within the range of RMB 5,000
to RMB 300,000 (about USD 600 to USD 36,000), not exceeding RMB 500,000
(about USD 60,000), depending on the seriousness of the infringing act.
The court may, upon the request of the patentee, incorporate
reasonable expenses disbursed in investigating and stopping the infringement
into the damages rewarded.
Any person who, for business purposes, uses or sells
a patented product or a product that was directly obtained by using a
patented process, without knowing that it was made and sold without the
authorization of the patentee, shall not be liable to compensate the damages
the patentee suffers if he can prove that he obtains the product from
a legitimate source.
- Criminal
Sanction
- Judicial
or Administrative Action
In case of passing off, the administrative authority
for patent affairs may confiscate the illegal gains of the infringer,
and impose on the infringer a penalty of up to three times of the illegal
gains or RMB 50,000 (about USD 6,000), if there are no illegal gains.
- Jurisdiction
The courts of first instance hearing the patent infringement cases are
selected intermediate courts.
For administrative resolution, the request should be filed with the administrative
authority for patent affairs in the place where the infringer has his
domicile or where the infringement takes place.
Where the patentee or any interested party initiates a lawsuit against
infringer after the expiration of the prescription of action, i.e. two
years counted from the date on which the patentee obtains or should have
obtained the knowledge of the infringing act, and when the legal proceedings
are initiated, the infringing act is continuously taking place and the
patent right is still valid, the court shall make a judgment to order
the infringer to stop the infringing act. However, in determining the
damages, only the losses suffered by the patentee or the profits gained
by the infringer through the infringement within the last two years, counted
from the date on which the patentee initiates the lawsuit, can be taken
into consideration.
- Burden
of Proof
Where the infringement relates to a patent for
utility model, the court or the administrative authority for patent affairs
may ask the patentee to furnish a search report made by the State Intellectual
Property Office.
- Suspension
of Legal Proceedings
- the search report made by the State Intellectual Property Office upon request of the patentee of a patent for utility model shows that there is no prior art document destroying novelty or inventiveness of the patent;
- the evidence provided by the defendant is sufficient to prove that the technology used is publicly known; or
- the evidence and the reason used by the defendant to file the invalidation request is obviously insufficient.
For
the patent infringement cases wherein patent for invention is involved,
the court may not suspend the legal proceedings even if the defendant
files a request to the Patent Re-examination Board to declare the patent
right invalid within the prescribed time limit for the defendant to submit
a defense.
The decision of the administrative authority for patent affairs can be
appealed to the court having jurisdiction within 15 days from receipt
of the notification, if any party is not satisfied with the decision.
The judgment of the court can be appealed again to the court at higher
level.
- Infringement
-
to change a registered trademark and put goods bearing
the changed trademark on market without authorization of the owner of
the registered trademark;
-
to use a trademark which constitutes
a reproduction, an imitation, or a translation of a well-known trademark
of another person not registered in China and is likely to create confusion,
in respect of goods which are identical with or similar to the goods to
which the well-known trademark applies;
-
to use a trademark which constitutes a reproduction,
an imitation, or a translation of a well-known trademark of another person
already registered in China and is likely to mislead the public and damage
the interests of the owner of the registered well-known trademark, in
respect of goods which are not identical with or similar to the goods
to which the well-known trademark applies; or
-
to cause, in other respects, prejudice to the exclusive
right of another person to use a registered trademark.
- Preservation
of Evidence
The court shall make a decision within 48 hours from receipt of the application.
Where the court decides to preserve the evidence, the decision shall be
executed immediately.
Where the applicant fails to institute legal proceedings
within 15 days counted from the date on which the court undertakes the
preservative measures, the court shall revoke the measures.
Where it is difficult to determine either the profits gained by the infringer
through the infringement or the losses suffered by the owner of a registered
trademark, the damages should be assessed not exceeding RMB 500,000 (about
USD 60,000), depending on the seriousness of the infringing act.
The court may, upon the request of the owner of a registered trademark,
incorporate reasonable expenses disbursed in investigating and stopping
the infringement into the damages rewarded.
Any person unknowingly sells goods that infringing the exclusive right
of another person to use a registered trademark shall not be liable to
compensate the damages the owner of a registered trademark suffers if
he can prove that he obtains the goods lawfully and can identify the supplier.
- Criminal
Sanction
Any person who counterfeits or makes, without authorization, representations
of a registered trademark of another person, or sells such representations,
in case a crime is constituted, shall be prosecuted for his criminal liabilities
in addition to compensating the damages that the owner of a registered
trademark suffers.
Any person who knowingly sells goods that bear a counterfeited registered
trademark, in case a crime is constituted, shall be prosecuted for his
criminal liabilities in addition to compensating the damages that the
owner of a registered trademark suffers.
The infringer may be subject to a maximum of seven years' imprisonment.
- Judicial
or Administrative Action
In comparison with court proceedings, the administrative proceedings are
more efficient and cost-effective. If damages are sought, however, judicial
proceedings are highly recommended.
The said penalty should be up to three times of the illegal turnover of
the infringer or RMB 100,000 (about USD 12,000), if it is difficult to
calculate the illegal turnover.
- Jurisdiction
The courts of first instance hearing the trademark infringement cases
are intermediate courts or courts at higher level and selected basic courts.
For administrative resolution, the request should be filed with the administrative
authority for industry and commerce in the place where the infringement
takes place.
Where the owner of a registered trademark or any interested party initiates
a lawsuit against infringer after the expiration of the prescription of
action, i.e. two years counted from the date on which the owner of a registered
trademark obtains or should have obtained the knowledge of the infringing
act, and when the legal proceedings are initiated, the infringing act
is continuously taking place and the trademark right is still valid, the
court shall make a judgment to order the infringer to stop the infringing
act. However, in determining the damages, only the profits gained by the
infringer through the infringement or the losses suffered by the owner
of a registered trademark within the last two years, counted from the
date on which the owner of a registered trademark initiates the lawsuit,
can be taken into consideration.
- Appeal
The decision of the administrative authority for industry and commerce
can be appealed to the court having jurisdiction within 15 days from receipt
of the notification, if any party is not satisfied with the decision.
The judgment of the court can be appealed again to the court at higher
level.
Copyright
Enforcement
- Legal
Basis
China became a member of the World Intellectual Property Organization
(WIPO) on June 3,1980. On March 19, 1985, China acceded to the Paris Convention
for the Protection of Industrial Property (Stockholm Act). China became
party to Universal Copyright Convention on October 30, 1992, Berne Convention
for the Protection of Literary and Artistic Works (Berne Convention) on
October 15, 1992, and Convention for the Protection of Producers of Phonograms
Against Unauthorized Duplication of Their Phonograms on April 30, 1993.
1.
publishing a work without the permission of the copyright
owner;
3.
having one's name mentioned in connection with a work
created by another, in order to seek personal fame and gain, where one
has not taken part in the creation of the work;
4.
distorting or mutilating a work created by another;
5.
plagiarizing a work of another person;
6.
exploiting by exhibition, film production or any analogous
method of film production, or by adaptation, translation, annotation,
or by other means, without the permission of the copyright owner, unless
otherwise provided in the Copyright Law;
7.
exploiting a work created by another person without
paying remuneration as prescribed by regulations;
8.
rending a work, sound recording or video recording,
without the permission of the copyright owner of a cinematographic work,
a work created by virtue of an analogous method of film production, computer
software, sound recording or video recording or the owner of a copyright-related
right, unless otherwise provided in the Copyright Law;
9.
exploiting the typographic arrangement of a book or
periodical without the permission of the publisher;
10.
broadcasting live a performance or communicating the
live performance to the public, or recording his performance without the
permission of the performer; or
11.
committing any other act of infringement of copyright
and of other rights and interests relating to copyright.
Anyone who commits any of the following acts of infringement
shall bear such civil liability as ceasing the infringing act, eliminating
the effects of the act, making an apology or paying damages, depending
on the circumstances and may, in addition, be subjected by a copyright
administrative authority to such administrative penalties as ceasing the
infringing act, confiscating gains obtained from the infringement, confiscating
and destroying infringing reproductions and imposing a fine; where the
circumstances are serious, the copyright administrative authority may
also confiscate the materials, tools, and equipment mainly used for making
the infringing reproductions; and if the act constitutes a crime, the
infringer shall be prosecuted for his criminal liability:
1.
reproducing, distributing performing, showing, broadcasting,
compiling or communicating to the public on an information network a work
created by another person, without the permission of the copyright owner,
unless otherwise provided in the Copyright Law;
2.
publishing a book where the exclusive right of publication
belongs to another person;
3.
reproducing and distributing a sound recording to video
recording of a performance, or communicating to the public his performance
on an information network without the permission of the performer, unless
otherwise provided in the Copyright Law;
4.
reproducing and distributing or communicating to the
public on an information network a sound recording or video recording
produced by another person, without the permission of the producer, unless
otherwise provided in the Copyright Law;
5.
broadcasting and reproducing a radio or television program
produced by a radio station or television station without the permission
of the radio station or television station, unless otherwise provided
in the Copyright Law;
6.
intentionally circumventing or destroying the technological
measures taken by a right holder for protecting the copyright or copyright-related
rights in his work, sound recording or video recording, without the permission
of the copyright owner, or the owner of the copyright-related rights,
unless otherwise provided in laws or administrative regulations;
7.
intentionally deleting or altering the electronic right
management information of a work, sound recording or video recording,
without the permission of the copyright owner or the owner of a copyright-related
right, unless otherwise provided in laws or administrative regulations;
or
8.
producing or selling a work where the signature of another
is counterfeited.
- Preservation
of Evidence
The court shall make a decision within 48 hours from receipt of the application.
Where the court decides to preserve the evidence, the decision shall be
executed immediately.
The court may order the applicant to provide security. If no security
is provided, the court shall reject the application.
Where the applicant fails to institute legal proceedings within 15 days
counted from the date on which the court undertakes the preservation measures,
the court shall revoke the measures.
When it is difficult to determine either the losses suffered by the owner
of copyright or a copyright-related right or the profits gained by the
infringer through the infringement, the damages should be assessed not
exceeding RMB 500,000 (about USD60, 000), depending on the seriousness
of the infringing act.
The court may, upon the request of the owner of copyright or a copyright-related
right, incorporate reasonable expenses disbursed in investigating and
stopping the infringement into the damages rewarded.
- Criminal
Sanction
The infringer shall be subject to a maximum of seven years' imprisonment.
- Judicial
or Administrative Action
Where the copyright infringement damages the public interests, the copyright
administrative authority may impose a penalty of up to three times of
the illegal turnover of the infringer or RMB 100,000 (about USD 12,000),
if it is difficult to calculate the illegal turnover.
- Jurisdiction
The courts of first instance hearing the copyright infringement cases
are intermediate courts or courts at higher level and selected basic courts.
For administrative resolution, the request should be filed with the copyright
administrative authority in the place where the infringement takes place.
Where the owner of copyright or a copyright-related right initiates a
lawsuit against infringer after the expiration of the prescription of
action, i.e. two years counted from the date on which the owner of copyright
or a copyright-related right obtains or should have obtained the knowledge
of the infringing act, and when the legal proceedings are initiated, the
infringing act is continuously taking place and the copyright is still
valid, the court shall make a judgment to order the infringer to stop
the infringing act. However, in determining the damages, only the losses
incurred to the owner of copyright or a copyright-related right or the
profits gained by the infringer through the infringement within the last
two years, counted from the date on which the owner of copyright or a
copyright-related right initiates the lawsuit, can be taken into consideration.
- Burden
of Proof
Where publishers or producers of duplicated can not prove the legal authorization
of their publication or production, or where issuers of duplicates or
lessors of duplicates of cinematographic works or works created in ways
similar to the making of cinematographic works, computer software, audio
recording or video recording can not prove the legal source of the duplicates
they have issued or leased, they shall bear legal responsibility.
The decision of the copyright administrative authority can be appealed
to the court having jurisdiction within 15 days from receipt of the notification,
if any party is not satisfied with the decision. The judgment of the court
can be appealed again to the court at higher level.
Customs Protection
of Intellectual Property Rights
- Legal
Basis
The Regulations of the People's Republic of China on Customs Protection
of Intellectual Property Rights were promulgated by the State Council
on July 5, 1995 and revised on December 26, 2003. The revised Regulations
entered into force on March 1, 2004.
- Scope
of Protection