China’s Trademark Act is further defined by numerous regulations and the judicial rules attached here. These rules create numerous deviations from what you may expect in the United States and Europe. In particular, the central government intervenes in the judicial process which is enforced through the Trademark Office notice provision. Compared to other jurisdictions, Chinese judges also have much more power to freeze assets, but are limited to a one year injunction.
Contents
Court-Ordered Asset-Freezing Injunctions for Registered Trademarks
Jurisdiction and Application of Law in Trademark Adjudications
Judicial Filing System for Famous Trademarks
Jurisdiction for Civil Actions Involving Famous Trademarks
Supreme Court Interpretations on Court-Ordered Asset-Freezing Preliminary Injunctions for Registered Trademarks
(Adopted by the Supreme Court Judicial Committee during the 1144th session on November 22, 2000, and amended by the Supreme Court Decision to Amend 18 Intellectual Property Interpretations Concerning the Application of Law in Patent Infringement Cases (2), adopted during the 1823rd session of the Supreme Court Judicial Committee on December 23, 2020)
The purpose of the following interpretations is to ensure effective enforcement of court-ordered asset-freezing preliminary injunctions on registered trademarks and to prevent duplicative actions:
Section 1 When a court grants an asset-freezing preliminary injunction under the Civil Procedure Act for a registered trademark, it shall issue a Notice of Injunction to the China Trademark Office (the “Trademark Office”). The Notice must specify the trademark name, the registrant, the registration certificate number, the duration of the injunction, and the assistance required by the Trademark Office to enforce the injunction, including prohibiting any assignment, cancellation, registration amendment, and or recording of trademark collateral security interests.
Section 2 A preliminary injunction remains in effect for no more than one year from the date the Trademark Office receives the Notice of Injunction. If an extension to the injunction on the registered trademark is necessary, the court must issue a new Notice of Injunction to the Trademark Office prior to the expiration of the current injunction. Otherwise, the preliminary injunction will be automatically lifted on its expiration date.
Section 3 The court shall not grant a second injunction for any registered trademark already subject to a valid injunction.
Supreme Court Interpretations on the Jurisdiction and Application of Law in Trademark Adjudications
(Adopted by the Supreme Court Judicial Committee during the 1203rd session on December 25, 2001, and amended by the Supreme Court Decision to Amend 18 Intellectual Property Interpretations Concerning the Application of Law in Patent Infringement Cases (2), adopted during the 1823rd session of the Supreme Court Judicial Committee on December 23, 2020)
The Decision of the Standing Committee of the National Congress to Amend the Trademark Act of the People’s Republic of China (hereinafter the “Decision to Amend the Trademark Act”) was adopted during the 24th meeting of the Ninth National Congress and took effect on December 1, 2001. The purpose of the following interpretations on jurisdiction and the application of law in trademark adjudications is to ensure effective trademark adjudication pursuant to the Trademark Act of the People’s Republic of China (hereinafter the “Trademark Act”), Civil Procedure Act of the People’s Republic of China (hereinafter the “Civil Procedure Act”), and the Administrative Procedure Act of the People’s Republic of China (hereinafter the “Administrative Procedure Act”).
Section 1 Courts have jurisdiction over the following types of trademark cases:
a. Administrative proceedings challenging appeal decisions or rulings by the China National Intellectual Property Administration (hereinafter the “Administration”);
b. Proceedings against other trademark administrative decisions made by the Administration;
c. Trademark ownership disputes;
d. Trademark infringement actions;
e. Declaratory judgments for non-infringement trademark disputes;
f. Disputes arising from trademark assignment contracts;
g. Disputes related to trademark licensing contracts;
h. Disputes involving trademark agent contracts;
i. Petitions for preliminary injunctions to stop infringement of exclusive trademark rights;
j. Petitions for preliminary injunctions to stop infringement of exclusive trademark rights with claims for compensatory damages;
k. Petitions for asset-freezing preliminary injunctions;
l. Petitions for temporary restraining orders to preserve evidence;
m. Other trademark proceedings.
Section 2 Proceedings under §1(a) fall under the jurisdiction of intermediate courts designated by the Beijing Municipal Upper Appeal’s Court and authorized by the China Supreme Court.
The jurisdictional trial court for proceedings under §1(b) shall be governed by the Administrative Procedure Act.
Trademark civil actions shall be under the jurisdiction of a lower or upper court of appeals.
Upper appeals courts in major cities may designate up to two district courts to hear civil trademark trials as necessary, subject to approval by the Supreme Court.
Section 3 The courts shall hear claims for compensatory damages filed as part of a trademark infringement lawsuit after a trademark registrant or interested party files a complaint with the Administration.
Section 4 Courts shall accept cases contesting decisions or rulings made by the Administration on appeals heard prior to the implementation of the Decision to Amend the Trademark Act, provided the litigation is filed after the Decision’s effective date.
Section 5 Unless otherwise provided in the Interpretations, courts shall adjudicate administrative proceedings challenging Administration decisions or rulings on appeals filed before the implementation of the Decision to Amend the Trademark Act that fall under §§4, 5, 8, 9(a), 10(a)(2), 10(a)(3), 10(a)(4), 10(b), 11, 12, 13, 15, 16, 24, 25, and 31 of the amended Trademark Act pursuant to the amended Act. All other cases shall be adjudicated under the Trademark Act as it existed prior to its amendment.
Section 6 The deadline for a party to file a challenge to an Administration decision regarding a trademark registered for more than one year before the effective date of the Decision to Amend the Trademark Act shall be governed by § 27(b) of the pre-amendment Trademark Act. For trademarks registered for less than one year, the filing deadline shall be governed by §§41(b) and 41(c) of the amended Trademark Act.
Section 7 Petitions for preliminary injunctions to stop trademark infringement or for temporary restraining orders to preserve evidence filed after the implementation of the Decision to Amend the Trademark Act shall be governed by §§57 and 58 of the amended Trademark Act if the alleged infringement occurred prior to the Decision’s implementation.
Section 8 The court shall adjudicate trademark infringement cases that occurred prior to the implementation of the Decision to Amend the Trademark Act pursuant to §56 of the amended Trademark Act, provided no judgment had been issued before the Decision’s implementation.
Section 9 Unless otherwise provided in the Interpretations, civil trademark infringement cases filed with the court after the effective date of the Decision to Amend the Trademark Act shall be adjudicated under the pre-amendment Trademark Act for conduct occurring prior to the amendment. Cases involving conduct occurring after the Decision’s implementation shall be governed by the amended Trademark Act. For conduct that began before and continued after the implementation, the pre-amendment Trademark Act shall apply to the earlier conduct, and the amended Trademark Act shall apply to the later conduct.
Section 10 The court shall independently adjudicate disputed facts in civil trademark infringement proceedings regardless of any prior decisions made by the regulatory agency.
Supreme Court Circular on Creating a Filing System for Judicial Determinations of Famous Trademarks
(November 12, 2006, Circular No. 8 [2006])
To the High Courts of all provinces, autonomous regions, and municipalities, the Military Court of the People’s Liberation Army, and the Xinjiang Uygur Autonomous Region Production and Construction Corps Court under the High Court:
In recent years, courts across the country have issued a significant number of famous mark determinations while adjudicating civil actions involving trademark infringement under the Trademark Act of the People’s People’s Republic of China (hereafter the “Trademark Act”) and applicable judicial interpretations. The Supreme Court has therefore decided to implement a filing system for judicial determinations of famous trademarks in order to improve judicial proceedings and effectively oversee and analyze conditions and issues related to such determinations. The directives are as follows:
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- Within two months of the issuance of this notice, each Upper Appeals Court must submit all adjudication documents and accompanying statistical data tables related to famous trademark determinations issued prior to this Circular to the Supreme Court’s Intellectual Property Division.
- For all famous trademark determinations made after the issuance of this Circular, each Upper Appeals Court must submit all relevant adjudication documentation and statistical data tables to the Supreme Court’s Intellectual Property Division within 20 days of the effective date of the determination.
Supreme Court Notice on Jurisdiction for Civil Actions Involving Famous Trademark Determinations
Supreme Court [2009] No. 1
To the High Courts of all provinces, autonomous regions, and municipalities, the Military Court of the People’s Liberation Army, and the Xinjiang Uygur Autonomous Region Production and Construction Corps Court under the High Court:
Effective immediately, civil actions involving determinations of famous trademarks shall fall under the jurisdiction of intermediate courts located in provincial and autonomous region capitals, home rule cities, and municipalities under the central government. This directive is intended to strengthen judicial protection of famous marks, improve judicial processes, standardize adjudication practices, reinforce judicial authority and credibility, safeguard fair market competition, and support broader national economic development goals.
Intermediate courts outside the designated jurisdictions may only hear such cases with prior authorization from the Supreme Court. Courts lacking this authorization may no longer accept these cases.
Compliance with this Notice is mandatory.