The person in charge of the Protection Department of the State Intellectual Property Office answers the reporter's questions on the promulgation of the judgment standard for trademark infringement

Q: what is the necessity and significance of the formulation of the standards?

A: in accordance with the requirements of the plan for deepening the reform of the party and state organs and the provisions on the functional allocation, internal organs and staffing of the State Intellectual Property Office, the newly established State Intellectual Property Office is responsible for the business guidance of trademark and patent law enforcement, and is specifically responsible for formulating and guiding the implementation of trademark right, patent right confirmation and infringement judgment standards. Trademark infringement judgment is highly professional, legal and complex. The trademark law has relatively principled provisions on the protection of the exclusive right to use trademarks. In practice, a large number of trademark infringement acts occur at the grass-roots level, and the front-line law enforcement personnel need more operational guidance. The formulation of "standards" is not only needed at the grassroots level, but also concerned by all walks of life. With the development of the Internet economy, the forms of trademark infringement are becoming more and more diversified and complicated. The formulation of the "standard" is conducive to improving the trademark protection rules system, solving new situations and problems in law enforcement practice, providing specific operational guidelines for law enforcement departments, further improving the level of trademark law enforcement protection, and creating high transparency and predictability for market subjects Strong intellectual property rights protect the environment.

Q: what is the basis for the formulation of the standard?

A: the formulation of trademark infringement judgment standards is not only the implementation of the requirements of institutional reform, but also the specific measures to implement the opinions on strengthening the protection of intellectual property rights and its promotion plan. In August 2018, the central office and the state office printed and issued the provisions on the functional allocation, internal institutions and staffing of the State Intellectual Property Office (Ting Zi [2018] No. 71), which stipulates that the State Intellectual Property Office is responsible for "formulating and guiding the implementation of trademark right, patent right confirmation and infringement judgment standards". In November 2019, the office of the CPC Central Committee and the office of the State Council issued the opinions on strengthening the protection of intellectual property rights (ZBF [2019] No. 56), which clearly required "to formulate and improve the judgment standards for trademark and patent infringement in the process of administrative law enforcement". The "2020-2021 implementation plan of the" opinions on strengthening the protection of intellectual property rights "(T.H. [2020] No. 6) of the central office and the state office further put forward the" formulation and promulgation of judgment standards for trademark infringement ".

Q: what is the process of formulating the standard?

A: the Party group of the State Intellectual Property Bureau attaches great importance to this work, and has successively listed the formulation of the standard into the key work of the Party group of the Bureau in 2019 and 2020. We actively promote the formulation of the standard from the following three aspects. First, in-depth investigation and adhere to the problem orientation. To hold seminars and seminars in Jiangsu, Ningxia, Qinghai, Shanghai and other places to understand the local trademark law enforcement needs on the spot; secondly, lay a solid theoretical foundation, strengthen administrative, judicial and comparative research between China and foreign countries, seriously study and absorb relevant achievements in relevant law enforcement practice, entrust academic institutions and trade associations to carry out legal analysis and empirical analysis of trademark infringement; Third, solicit opinions from all parties and open up legislation. Our company has successively consulted the relevant departments inside and outside the Bureau and the intellectual property management departments of the provinces (regions, cities) and Xinjiang production and Construction Corps in written form. Through the website of the State Intellectual Property Office, we have publicly solicited opinions from all walks of life, received the opinions of more than 40 units and relevant experts including domestic and foreign chamber of commerce associations, enterprises, law firms and foreign government agencies. We sorted out and analyzed the relevant opinions one by one.
  On the basis of the above work, after further modification and improvement of the standard (Draft for comments), we organized six symposiums for opinions and suggestions by organizing intellectual property service institutions, enterprises, e-commerce platforms, administrative law enforcement protection personnel, experts and scholars, and representatives of relevant departments within the Bureau. After the research and demonstration, we fully adopt reasonable opinions, modify and improve them in depth, and form the standard on this basis.

Q: what are the main contents of the standard?

A: the standard systematically combs and summarizes the beneficial experiences and practices of trademark administrative protection over the years, and adds innovative provisions in combination with practice. There are 38 articles in the standard, which specify the use of trademarks, the same kind of goods, similar goods, the same trademark, similar trademarks, easy to be confused, sales exemption, conflict of rights, suspension of application, identification of obligees, etc. It mainly includes:

One is about the use of trademarks. This paper clarifies that the use of trademark is usually the prerequisite for judging trademark infringement; further refines the definition of the use of trademark, and lists the specific forms of the use of trademark; and clarifies the principles for judging the use of trademark.

The second is about the same kind of goods and similar goods. The standard stipulates the judgment principle of the same and similar goods, and clarifies the due role of the distinction table in trademark administrative law enforcement.

The third is about the same trademark and similar trademark. On the basis of traditional trademarks, the standard adds the same and similar judgment standards for new trademarks such as three-dimensional trademark, color combination trademark and sound trademark. At the same time, it further clarifies the due role of trademark examination and trial standard in trademark administrative law enforcement.

Fourth, it is easy to confuse. The new trademark law, which was implemented in 2014, put forward the provision of easy confusion for the first time. Based on the study of administrative normative documents and judicial interpretation, the standard defines the two situations of easy confusion and the relevant factors to be considered in determining easy confusion.

Fifth, without the permission of the trademark registrant. In view of the controversial infringement cases in law enforcement practice caused by exceeding the category, term and quantity of the trademark license, the standard clearly stipulates that without the permission of the trademark registrant, including the category, term and quantity of the trademark without permission and exceeding the permission.

Sixth, the specific acts of trademark infringement. Combining with the practice of law enforcement, referring to the relevant administrative reply and judicial interpretation, the standard has made provisions on the application of law of trademark infringement, including changing registered trademarks, using multiple registered trademarks in combination, attaching colors for the purpose of climbing, using infringing goods in the contract of labor and material processing, and giving infringement in sales activities It further clarifies the specific applicable provisions of the trademark law.

Seventh, sales exemption. The standard specifies the relevant elements of the seller's exemption from liability, and makes it clear that it does not belong to the situation that the seller does not know and meets the relevant conditions of the supplier.

The eighth is about the conflict between trademark and other intellectual property rights. The standard stipulates the principles for dealing with the conflicts between trademarks and the above intellectual property rights, and makes it clear that the date of trademark application is the benchmark for comparison.

The ninth is about the defense of prior use of trademark. In order to regulate the use of unregistered trademarks, the standard specifies the trademark with certain influence and the original scope of use.

Ten is about the application of suspension. The standard specifies the circumstances under which suspension can be applied.

Eleven is about trademark infringement twice or more in five years. The standard specifies the second paragraph of Article 60 of the trademark law that "more than two trademark infringements shall be carried out within five years", which clearly means that the same party shall carry out trademark infringement within five years from the date when the administrative penalty or judgment for infringement of the exclusive right to use a registered trademark is effective.

Twelve is about the identification of the obligee. The standard stipulates that the trademark owner shall bear the legal liability for the identification opinions issued by him, and makes it clear that the law enforcement organ shall examine the legality of the subject issuing the identification opinions, the authenticity and relevance of the identification opinions, and the preconditions for the identification opinions to be accepted as evidence.

Q: which departments do the trademark law enforcement departments refer to?

A: according to the relevant laws and regulations, the new "three decisions" of the State Council and the practice of trademark law enforcement, the trademark law enforcement departments stipulated in the standard mainly refer to the market supervision and administration departments and the relevant departments with trademark administrative law enforcement power, as well as the intellectual property management departments with trademark law enforcement power, such as Shanghai Pudong New Area Intellectual Property Office and Changsha Intellectual Property Office.

Q: what are the Innovative Regulations on the use of trademarks?

A: for the use of trademarks, the theoretical and practical circles pay close attention to it. The standard makes it clear that it is generally necessary to judge whether the suspected infringement constitutes the use of trademark in the sense of trademark law. In view of the fact that Article 57 of the Trademark Law of the people's Republic of China stipulates that the act of forging or manufacturing trademark marks without authorization does not involve the judgment of trademark use, the standard adopts the expression of "general". At the same time, the standard further refines the definition of the use of trademarks, increases the service places involved in service trademarks, and lists the specific forms of trademarks used in goods, services, advertising and other commercial activities, especially in view of the characteristics of the Internet era, it adds new expressions such as websites, instant messaging tools, social networking platforms, applications, two-dimensional codes, etc Form. Finally, the standard stipulates the principle of trademark use, that is, to judge whether it is a trademark use, the subjective intention of the user, the way of use, the way of publicity, industry practices, consumer awareness and other factors should be taken into account.

Q: how to apply the differentiation table to determine the similarity of goods?

A: the standard takes the "distinction table" as an important reference for trademark administrative law enforcement to determine the similarity of goods, mainly to maintain the consistency and stability of trademark right confirmation and law enforcement protection standards, and strengthen the predictability and operability of trademark right confirmation. The law enforcement department shall refer to the goods or services with similar groups specified in the differentiation table when judging the similar relationship of goods or services; for the goods or services not included or emerging in the differentiation table, the comprehensive judgment shall be made according to the relevant principles specified in the standard. In practice, law enforcement agencies should report to the State Intellectual Property Office for decision on the necessity and rationality of breaking through the distinction table, so as to coordinate the linkage and consistent protection of law enforcement and right confirmation.

Q: for similar trademarks, are the criteria for determining the links of law enforcement and right confirmation consistent?

A: in the process of trademark law enforcement and the confirmation of power, the principle and standard for judging the approximation of trademarks are consistent. The Trademark Review and trial standard is an important reference for law enforcement departments to determine whether the trademarks are similar. In law enforcement practice, the use of trademarks is more complex, and law enforcement departments pay more attention to the actual use of trademarks, that is, to compare the approved registered trademark with the trademark actually used by the suspected infringer.

Q: what are the situations of the same trademark?

A: the same trademark includes the following situations: the composition and order of words of the trademark are the same; changing the font, letter case and text vertical and horizontal arrangement of the registered trademark basically has no difference with the registered trademark; changing the space between the words, letters and numbers of the registered trademark basically has no difference with the registered trademark; changing the color of the registered trademark does not affect the expression of the trademark Only the general name, figure and model of the commodity are added to the registered trademark, which lacks the content of distinctive features and does not affect the embodiment of the distinctive features of the registered trademark.

The graphic trademark has no difference in composition elements and forms of expression; the text composition, graphic appearance and arrangement of the text graphic combination trademark are the same, but the trademark has no difference in calling and overall vision; the significant three-dimensional signs and significant plane elements in the three-dimensional trademark are the same, or basically no difference; the color and arrangement of the color combination trademark are the same The way is the same, or basically no difference; the auditory perception of sound trademark is the same as the overall music image, or basically no difference.

The standard refers to and absorbs the relevant judicial interpretations of the supreme law, the Supreme People's Procuratorate and the Ministry of public security, and only adds the general name, figure, model, etc. of the goods on the registered trademark, which lacks the content of distinctive features. It does not affect the situation of reflecting the distinctive features of the registered trademark, and also clearly stipulates that it is the same trademark, which is convenient for the public security organs, procuratorates, courts and other departments to maintain the consistency in the later "convergence of the two laws" The standards are consistent.

Q: what situations are easily confused and how to judge?

A: the trademark law, which was implemented in 2014, for the first time put forward provisions that are easy to cause confusion. Based on the research and analysis of administrative normative documents and judicial interpretations, the standard stipulates that there are two situations that are easy to cause confusion: one is sufficient to make the relevant public think that the goods or services involved in the case are produced or provided by the registered trademark obligee; the other is sufficient to make the relevant public feel that the goods or services involved are produced or provided by the registered trademark obligee It is considered that the supplier of the goods or services involved in the case has investment, license, franchise or cooperation relationship with the registered trademark owner.

Before that, in the judicial interpretation and practice, trademark examination and trial, and administrative law enforcement practice, the factors that are easy to confuse the relevant public have been considered when judging similar goods and similar trademarks, namely, similar confusion and similar confusion. In order to further clarify the relationship between similar goods, similar trademarks and easy confusion, the standard takes similar goods and similar trademarks as the factors to be considered in determining easy confusion, so as to solve the problem of repeated determination. Many factors need to be taken into account in the judgment of confusion, including the similarity of trademarks; the similarity of goods or services; the significance and popularity of registered trademarks; the characteristics of goods or services and the way of using trademarks; the degree of attention and cognition of the relevant public; and other relevant factors.

Q: what are the circumstances included without the permission of the trademark registrant?

A: the standard clearly stipulates that without the permission of the trademark registrant, it includes the category, term and quantity of the trademark that has not been licensed or exceeded. For those beyond the geographical scope of the license contract, the relevant provisions of the contract law shall apply.

Q: what legal application of trademark infringement is included in the standard?

Answer: in view of the trademark infringement that is frequently and easily distributed in practice, the standard specifies the legal application of relevant acts. The standard mainly includes the following legal application of trademark infringement:

One is to change the registered trademark or use multiple registered trademarks together, which belongs to the trademark infringement act stipulated in Article 57 (1) and (2) of the trademark law.

Second, the prominent use of the trade name in the name of an enterprise in the same kind of goods or services is a trademark infringement act stipulated in Article 57 (1) and (2) of the trademark law.。

Third, a registered trademark that does not specify a color may freely attach a color, but if the color is attached for the purpose of climbing, which is similar to another person's registered trademark on the same or similar goods or services and is easy to cause confusion, it belongs to trademark infringement as stipulated in Item (2) of Article 57 of the trademark law.

Fourth, the use of goods infringing the exclusive right of trademark by the contractor in the processing and contracting business activities of contracted labor and materials belongs to the trademark infringement act stipulated in Item (3) of Article 57 of the trademark law.

Fifthly, when a business operator sells a commodity, he gives a commodity infringing the exclusive right to use a registered trademark, which belongs to the trademark infringement act stipulated in Item (3) of Article 57 of the trademark law.

Sixth, market organizers, exhibition organizers, counter lessors, e-commerce platforms and other operators are negligent in performing their management duties, knowing or should know that the operators in the market, exhibitors, counter lessees, and e-commerce operators in the platform have committed trademark infringement and do not stop it; or, although they do not know, they have been notified by relevant trademark law enforcement departments or registered by trademark right holders If, after being informed by effective administrative or judicial documents, no necessary measures have been taken to stop trademark infringement, it is a trademark infringement as stipulated in Article 57 (6) of the trademark law.

7. The e-commerce that registers the same or similar words as other people's registered trademarks as domain names and carries out relevant goods or services transactions through the domain names, which is easy to make the relevant public misunderstand, belongs to the trademark infringement act stipulated in Item (7) of Article 57 of the trademark law.

Q: what are the conditions for the seller to be exempted from liability?

Answer: to exempt the seller from liability, the following three requirements should be met: first, the seller does not know that the goods sold infringe the exclusive right to use the trademark; second, the seller can prove that the goods are legally obtained by himself; third, the seller can explain the supplier of the goods. The "standard" details the situation that does not belong to the situation that sales do not know, including: the purchase channel does not conform to commercial practices, and the price is significantly lower than the market price; refuses to provide accounting documents such as accounts and sales records or practices fraud; transfers and destroys material evidence after the crime, provides false proof and false situation; similar illegal situations are dealt with and committed again. The seller's ability to explain the supplier of goods means that the parties involved in the case voluntarily provide accurate information or clues such as the name, business address and contact information of the supplier. Where the provider cannot be found due to the false or unverifiable information provided by the parties involved in the case, it shall not be regarded as indicating the provider.

Q: how to judge the unregistered trademarks that have certain influence, and what situations are not included in the original scope of use?

A: if there is a certain impact, we should make a comprehensive judgment by considering such factors as the duration of the trademark's use, sales volume, business volume, advertising and so on.

The user shall not be deemed to continue to use the trademark within the original scope of use under the following circumstances: increasing the specific goods or services used by the trademark; changing the graphics, characters, colors, structure, writing methods, etc. of the trademark, except for the purpose of distinguishing it from the registered trademark of others.

Q: how to deal with the conflicts between trademarks and other intellectual property rights?

A: the exercise of rights by intellectual property rights holders should conform to commercial practices, abide by the principle of good faith, and use them reasonably and in good faith within the scope of their rights without harming the interests of others and the public. When exercising the right, the obligee maliciously damages the rights and interests of the trademark registrant and causes the relevant public to confuse the real source of goods or services. Therefore, the scope and manner of exercising the right should be restricted or prohibited to prevent the abuse of the right. In order to effectively deal with the conflict between trademark right, design patent right and copyright, the standard stipulates the principle of protecting the legal prior right. If the application date of registered trademark is earlier than the application date of design patent or the completion date of the work with evidence, the trademark law enforcement department can deal with trademark infringement We have the right to investigate and deal with such acts.

Q: how to deal with the conflict between trademark and enterprise name and how to apply the law?

A: a trademark is a sign that distinguishes different sources of goods or services. An enterprise name is a sign that distinguishes different market entities, and an enterprise name is the main sign that distinguishes different enterprises. The conflict between trademark and enterprise name is a difficult problem for law enforcement departments. Trademark exclusive right and enterprise name are rights confirmed by legal procedures, which are respectively protected by trademark laws and regulations and enterprise name registration management laws and regulations. The acquisition of the exclusive right of trademark and the right of enterprise name shall follow the principle of good faith, and shall not take advantage of the reputation of others' trademark or enterprise name to engage in unfair competition. Article 58 of the current "trademark law" specifies that the use of another person's registered trademark as a trade name in an enterprise name, which misleads the public and constitutes an act of unfair competition, shall be dealt with in accordance with the "Anti Unfair Competition Law". In the practice of administrative law enforcement, there are two main uses of enterprise font: one is to highlight the use of enterprise font by changing the font and color of enterprise font; the other is to keep the font, color and writing style consistent with other characters in the enterprise name. In view of the first situation, which has constituted the use of trademark in the sense of trademark law, the standard specifies to investigate and deal with it in accordance with the relevant provisions of the trademark law. In the second case, it belongs to unfair competition and shall be dealt with in accordance with the anti unfair competition law.

Q: which cases are applicable to the provisions of the Trademark Law on suspension?

A: the third paragraph of Article 62 of the trademark law stipulates that in the process of investigating and handling trademark infringement cases, if there is a dispute over the ownership of the trademark or the obligee brings a trademark infringement lawsuit to the people's court at the same time, the administrative department for Industry and commerce can suspend the investigation and handling of the case. After the reasons for suspension are eliminated, the case investigation procedure shall be resumed or terminated. According to Article 81 of the regulations for the implementation of the trademark law, if the ownership dispute of the registered trademark involved in the case is being tried by the Trademark Office of the State Administration for Industry and commerce, the Trademark Review and Adjudication Board or the people's court, and the result of the case may affect the nature of the case, it belongs to the "trademark ownership dispute" stipulated in the third paragraph of Article 62 of the current trademark law of China. In the practice of law enforcement, the instability of the registered trademark right will have a significant impact on the legitimacy of the conclusion of trademark administrative law enforcement. The standard has detailed provisions on the circumstances that can be applied to the suspension, including that the registered trademark is in the invalidation procedure; the registered trademark is in the extension period; and there are other disputes about the ownership of the registered trademark. The case handling organ can, rather than should, suspend the handling of the case, and it has the discretion.

Q: how to calculate the number of trademark infringements committed twice or more in five years?

A: the standard specifies the second paragraph of Article 60 of the trademark law that "more than two trademark infringements shall be carried out within five years", which clearly means that the same party shall carry out trademark infringement within five years from the date when the administrative penalty or judgment for infringing the exclusive right of another person's registered trademark is confirmed by the relevant trademark law enforcement departments and the people's court.

Q: what are the requirements for the identification of obligees and what are the prerequisites for the adoption of identification opinions as evidence?

A: it is very important for the obligee to issue identification opinions to investigate and deal with trademark infringement. At the same time, in order to prevent the abuse of the obligee's rights, the standard stipulates that the trademark obligee shall bear legal liability for the identification opinions issued by him, and makes it clear that the law enforcement organ shall examine the legality of the subject issuing the identification opinions, the authenticity and relevance of the identification opinions, and the adoption of the identification opinions as evidence According to the premise of the law.

The identity of trademark obligee as the infringed person affects the objectivity of his / her identification opinion. In order to make up for the above deficiencies, the rules of reinforcing evidence should be applied. The identification opinion cannot be used as the basis for trademark infringement alone, and must be mutually verified with other evidence involved, such as the source channel, price, account book of the involved person, communication record and relevant statement of the commodity involved, so as to form a complete evidence chain. Meanwhile, the opinions of the parties shall be heard for identification. If the parties have any objection, the law enforcement organ shall investigate them. According to the investigation results, if there is evidence to the contrary that it does not constitute infringement and has strong proof, the law enforcement organ shall adopt it. Only when the parties involved cannot provide the opposite evidence to overturn the identification opinion, the administrative law enforcement organ can adopt the identification opinion as evidence.

Q: Why are there no provisions on well-known trademarks, parallel imports and OEM in the standard?

A: well known trademarks. The standard mainly regulates the protection of the exclusive right of registered trademark. According to Article 56 of the trademark law, the exclusive right to use a registered trademark is limited to the trademark approved for registration and the commodity approved for use. The infringement of the exclusive right to use a trademark stipulated in Article 57 of the trademark law does not include the infringement of the rights and interests of a well-known trademark. Well known trademarks are mainly protected in accordance with the provisions of Articles 13 and 14 of the trademark law in respect of different goods or services. In November 2019, the State Intellectual Property Office issued the notice on strengthening the work related to the protection of well-known trademarks in the investigation of trademark violations, which made specific provisions on the identification and law enforcement protection of well-known trademarks in the investigation of trademark violations. In addition, the department regulation "provisions on the recognition and protection of well-known trademarks" has been revised.

On the licensing processing, parallel import. We have studied the relevant issues. In view of the absence of relevant provisions in the trademark law, regulations on the implementation of the trademark law and other upper laws, the standard does not cover the above contents.

Q: what will be the next step in promoting the implementation of the standard?

A: we will strengthen the publicity and interpretation of the standard through case explanation and expert interpretation; strengthen business training, organize and carry out national training courses to improve the ability of intellectual property protection, list the interpretation of the standard as the training content, and train local key personnel to deepen their understanding of the standard. At the same time, we will continue to do a good job in publishing typical cases, guiding cases and administrative responses, constantly improve the business guidance system, and strengthen the protection of intellectual property rights.