China

1. TRADE MARK

1.1. Sources of law

In the People's Republic of China, the principal sources of trade mark related law and regulation include international treaties, laws, regulations, administrative rules, judicial interpretations, administrative interpretations, and others, such as local regulations, judicial replies, administrative replies, and so on.

In the event of a conflict, the provision of the international treaty prevails over the national laws, except those on which the People's Republic of China has announced reservation; and the law in force supersedes the regulations, rules, judicial interpretations and administrative interpretations. Judicial and administrative interpretations are of parallel legal force, but implemented by the courts and administrations respectively.

1.2. Substantive Law

The 2013 Trade Mark Law of the People's Republic of China distinguishes well-known trade marks and trade marks with a reputation, but does not refer to famous trade marks. 

For a well-known trade mark which is not registered in the People's Republic of China, in identical or similar goods or services, it could prohibit registration and use of a trade mark which is a reproduction, an imitation or a translation of it, if it is liable to create confusion. To a well-known trade mark which has been registered in the People's Republic of China, in non-identical or dissimilar goods or services, it could prohibit registration and use of a trade mark which is a reproduction, an imitation or a translation of it if it misleads the public and the interests of the registrant of the well-known trade mark are likely to be damaged by such use. 

As to the trade marks with reputation, it could prevent registration of an identical or similar trade mark in identical and similar goods or services which is applied for registration in bad faith. 

Trade marks belonging to the "luxury industry" do not enjoy a broader range of protection apart from that provided by law. The "aura of luxury" surrounding these trade marks does not play a role when it comes to enforcing them. 

1.3. Enforcement

To establish that a trade mark has become well-known in the People's Republic of China and is entitled to broader protection, factors that shall be taken into consideration include:

  • the degree of awareness of the trade mark among the relevant public; 
  • the duration of use of the trade mark; 
  • the duration, extent and geographical scope of all publicity operations carried out for the trade mark; 
  • records of protection provided for the trade mark as a well-known trade mark; and
  • others relating to the trade mark's well-known status. 

Oral testimony or an affidavit do not have high probative force unless made by an official organization such as a professional or trade association, government offices, or such like. External evidence is better, for example, favorable decisions or judgments made by the China Trade Mark Office, Trade Mark Review and Adjudication Board, or courts; an auditing report concerning advertisements and sales of the products bearing the well-known trade marks; official receipts; contracts; and so on.

In addition, the evidence should form a chain to prove the trade mark has been used and advertised extensively in the People's Republic of China and has obtained great fame among the relevant public.

To get broader protection as a well-known trade mark, the owner of a well-known trade mark should prove the trade mark has been used in the People's Republic of China for at least 3 years before registration or use of the trade mark in question.

To get broader protection as a trade mark with reputation, it is only necessary to prove that the trade mark has been used with reputation before registration or use of the later trade mark. There is no requirement for how long it has been used. However, it is necessary to prove the bad faith of the later trade mark owner.

In the People's Republic of China, when there is a conflict between different kinds of right like trade mark, domain name and trade name, the basic principle is to protect the prior right. The protection of trade mark is stronger than other rights like domain name and trade name.

According to 2013 Trade Mark Law of the People's Republic of China and relevant judicial interpretations, a registered trade mark could be enforced against a domain name when the domain name is identical with or similar to the prior registered trade mark and the domain name is being used to conduct electronic commerce on the trading of the goods or services relevant to those of the registered trade mark (which is liable to cause misidentification among the relevant public). A well-known trade mark could be enforced against a domain name which is an imitation, copy, translation or transliteration of the well-known trade mark. A registered trade mark could be enforced against a trade name if the trade name is identical with, or similar to, the prior registered trade mark and the trade name is being used for identical or similar goods or services prominently (which is liable to cause misidentification among the relevant public). 

The 2013 Trade Mark Law of People's Republic of China introduced Article 58 which states that "whoever constitutes unfair competition by using a registered trade mark or an unregistered well-known trade mark of another party as the trade name in its enterprise name to mislead the public shall be dealt with in accordance with Anti unfair Competition Law of the People's Republic of China".

A registered trade mark or a well-known unregistered trade mark can be enforced against its unauthorized use in social media if such use has constituted use of the trade mark in respect of identical or similar goods or services or such use has caused confusion or harmed the interests of the owner of the trade mark.

A registered trade mark, or a well-known unregistered trade mark, can be enforced against its unauthorized use in comparative advertising if the comparative advertising does not reflect the facts or it has constituted an unfair competition deed.

No specific provisions clearly indicate that a registered trade mark or a well-known unregistered trade mark can be enforced against its unauthorized use in parody. But if such parody is made by the competitors, the owner of trade mark could stop such use according to Anti Unfair Competition Law of People's Republic of China.

A trade mark owner is entitled to choose between taking action claiming either trade mark infringement or unfair competition for the same set of facts, but not both. 

2. COPYRIGHT

2.1. Sources of law

In the People's Republic of China, the principal sources of copyright related law and regulation include international treaties, laws, regulations, administrative rules, judicial interpretations, administrative interpretations, and others, such as local regulations, judicial replies, administrative replies, and so on. In the event of a conflict, the provision of the international treaty prevails over the national laws except those on which the People's Republic of China has announced reservation; and the law in force supersedes the regulations, rules, judicial interpretations and administrative interpretations. Judicial and administrative interpretations are of parallel legal force, but implemented by the courts and administrations respectively. 

2.2. Substantive law

In the People's Republic of China, an open list of the copyrightable works is provided and the copyrightable works include, among other things, works of literature, art, natural science, social science, engineering technology, which are created in any of the following forms like written works; oral works; musical, dramatic, quyi (ancient Chinese performing art), choreographic and acrobatic art works; works of fine art and architecture; photographic works; cinematographic works and works created in a similar way to cinematography; drawings of engineering designs and product designs, maps, sketches and other graphic works as well as model works; computer software; and other works as provided for in law and administrative regulations.

Objects of industrial design are copyrightable if they meet the requirements of copyrightable works on original, reproducible, and artistic characters, such as works of applied art.

The rights covered by copyright in the People's Republic of China include the rights of publication, authorship, alteration, integrity, reproduction, distribution, lease, exhibition, performance, projection, broadcast, information network dissemination, production, adaptation, translation, compilation and other rights which shall be enjoyed by the copyright owner. The rights of publication, authorship, alteration and integrity are moral rights. However, the rights covered by copyright of computer software include the rights of publication, authorship, alteration, reproduction, distribution, lease, information network dissemination, translation and other rights which shall be enjoyed by the copyright owner.

Except for the works created in the course of employment (such as engineering design plans, product design plans, maps, computer software and so on, which are created primarily with the use of materials and technical resources of the legal entity and for these works the legal entity bears responsibility), the copyright in the works created by employees, consultants, shareholders, directors, and suppliers for the legal entity is enjoyed by the individual who created the works. To acquire the rights in the works, the legal entity should sign an agreement in writing with the author agreeing on who enjoys the rights in the works. This copyright assignment agreement should include the name of the work; the type of rights transferred; geographical scope; transfer price; date and method for payment of transfer price; default liability; and any other contents deemed necessary by both parties to be agreed. It is important to include the transfer price and to pay such amount to the author.

The author cannot transfer or waive his or her moral rights.

No time limit is set on the term of protection for an author's rights of authorship and alteration and his right to protect the integrity of his work.

In respect of a work of a citizen, the term of protection of the right of publication and the rights of reproduction and other rights to be enjoyed by the copyright owner is the lifetime of the author and 50 years after his death, expiring on December 31st of the 50th year after his death. In the case of a work of joint authorship, the term shall expire on December 31st of the 50th year after the death of the last surviving author.

In respect of a work of a legal entity or other organization or a work for hire in which the copyright (excluding the right of authorship) shall vest in a legal person or other organization, the term of protection of the right of publication and the right of reproduction and other rights to be enjoyed by the copyright owner shall be 50 years, expiring on December 31st of the 50th year after the first publication of such work. However, any such work that has not been published within 50 years after the completion of its creation shall no longer be protected in the People's Republic of China.

In respect of a cinematographic work, a work created by a means similar to cinematography or a photographic work, the term of protection of the right of publication and the right of reproduction and other rights to be enjoyed by the copyright owner shall be 50 years, expiring on December 31 of the 50th year after the first publication of such work. However, any such work that has not been published within 50 years after the completion of its creation shall no longer be protected in the People's Republic of China.

In respect of works of applied art, the term of protection of the right is 25 years. 

2.3. Enforcement

Copyright recordal is possible in the People's Republic of China, but not compulsory. A Copyright Recordal Certificate is considered as preliminary evidence to prove ownership of copyright, while further solid evidence is also required to prove the creation date, publication date, and so on. Neither copyright deposit nor notice is required.

To have industrial designs protected by copyright, it should be proven that the industrial designs are works under the Copyright Law of the People''s Republic of China, which means that the industrial designs should be original and artistic. Evidence such as judgement and a copyright registration certificate proving the industrial designs have already been protected as copyrighted works in other member countries of the Berne Convention is helpful. Acceptance of oral testimony, affidavit, and expert evidence is at the judge's discretion.

Substantial similarity and contacts are sufficient to establish copyright infringement.

In the People's Republic of China, copyright can be enforced against a trade mark, domain name, a trade name, a registered design patent, and other distinctive signs on the grounds of copyright infringement or patent infringement or unfair competition.

Copyright can be enforced against its unauthorized use in social media, comparative advertising, and parody unless the use could be considered as "fair use" according to the law.

The defences available to an alleged infringer are fair use, expiration of term of protection, and statutory licence.

In the People's Republic of China, the following uses are considered as "fair use":

  • use of another person's published work for the purpose of the user's own personal study, research or self-entertainment; 
  • appropriate quotation from another person's published work in one's own work for the purpose of introduction of, or comment on, a work, or demonstration of a point; 
  • inevitable reappearance or citation of a published work in newspapers, periodicals, radio stations, television stations or other media for the purpose of reporting current events; 
  • reprinting by newspapers or periodicals or other media, or rebroadcasting by radio stations or television stations or other media, of the current event articles on the issues of politics, economy and religion, which have been published by other newspapers, periodicals, radio stations or television stations or other media, except where the author has declared that publication or broadcasting is not permitted; 
  • publishing in newspapers or periodicals or other media, or broadcasting by radio stations or television stations or other media, of a speech delivered at a public assembly, except where the author has declared that publication or broadcasting is not permitted; 
  • translation or reproduction, in a small quantity of copies, of a published work for use by teachers or scientific researchers in classroom teaching or scientific research, provided that the translation or reproduction is not published or distributed;
  • use of a published work by a State organ within the reasonable scope for the purpose of fulfilling its official duties; 
  • reproduction of a work in its collections by a library, archive, memorial hall, museum, art gallery or similar institution, for the purpose of the display or preservation of a copy of the work; 
  • performance of a published work free of charge, that is, with respect to the performance, neither fees are charged from the public nor the remuneration is paid to the performers; 
  • copying, drawing, photographing or video-recording of a work of art located or on display in an outdoor public place; 
  • translation of a work published by a Chinese citizen, legal entity or organization, which is created in the Han language (Chinese), into a minority nationality language for publication and distribution within the country; and 
  • transliteration of a published work into Braille for publication. 

In addition, anyone who compiles or publishes textbooks for the purpose of implementing the nine-year compulsory education or State education planning may, without the permission from the copyright holder, except where the author has declared in advance that the exploitation is not permitted, compile published fragments of works, short written works or musical works, a single work of fine art, or photographic works into the textbooks. However, he shall pay the remuneration as provided, mention the name of the author and the title of the work, and shall not infringe upon other rights which the copyright holder shall enjoy in accordance with Copyright Law of the People''s Republic of China.

In respect of the computer software, the prescriptions on fair use include:

  • owners of legal duplicated copies of computer software are entitled to load the software into such devices having information processing capacity as computer according to the operational need; to make back-ups to avoid damaging to the copies, but the back-ups should not be provided to other persons for use in any way and the back-ups should be destroyed once the holder loses the ownership of the legal copies; to make necessary modifications in order to use the software in the practical application environment for computers or to improve the functions of the software, but the software so modified may not be provided to the third party without the license of the software copyright owner, unless otherwise stipulated in the contract;
  • using computer software for learning and studying the design idea and principle of the software in the form of loading, display, transmission or storage. 

  A valid copyright that is unenforceable is mainly due to the following reasons: 

  • a work with weak original creation; or
  • other fair uses of such work as mentioned above.

For the same set of facts, a copyright holder is not allowed to take action claiming both copyright infringement and design infringement and/or unfair competition. The copyright holder is entitled to choose either copyright infringement or design patent infringement or unfair competition claim. 

 

3. DESIGN

3.1. Sources of law

The principal sources of law relating to designs are:

  • Patent Law of the People's Republic of China (last amended in 2008), which sets out the requirements for patent prosecution, rights and legal remedies. 
  • Implementing Rules of the Patent Law of the People's Republic of China (last amended in 2010) and the Guidelines for Patent Examination (last amended in 2010), which provide detailed requirements and procedures on patent litigation proceedings. 
  • Civil Procedure Law of the People's Republic of China (last amended in 2012) (CPL) and the Interpretation of Application of the CPL (effective 4 February 2015), which set out most of the up-to-date court procedures for patent litigations in the People's Republic of China. However, there have been cases where Chinese courts have been reluctant to look to the CPL for authority, when the Patent Law was unclear. 
  • Administrative Procedure Law of the People's Republic of China (last amended in 2014), which is the authority for administrative lawsuits. 

  The People's Republic of China is party to the following international treaties relating to patents and patent litigation:

  • WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention); 
  • Patent Cooperation Treaty 1970; and 
  • WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994. 

In the event of conflict, the international treaties take precedence over domestic statutes unless the People's Republic of China has announced reservation; and the law in force supersedes the regulations, rules, judicial interpretations and administrative interpretations. Judicial and administrative interpretations are of parallel legal force, but implemented by the courts and administrations respectively. 

3.2. Substantive law

All industrial products, as long as its appearance is a new design, are protectable by way of registered design in the People's Republic of China. An unregistered design is not protected under Chinese law.

To be granted for patent design, the design should neither be an existing design which is known to the public, both domestically and abroad before the date of application, nor be identical with the prior design application/ registration. In addition, the design should be distinctly different from the existing designs or the combinations of the features of existing designs and should not be in conflict with the others prior legal rights.

To file an application for design patent registration, the owner should file drawings or pictures with six side views including top, bottom, front, rear, left, and right views. For a flat product, two side views are sufficient.

For designs created by employees, shareholders, or directors in the course of performing the duties of an employee, or mainly by using the material and technical resources of an entity employer, the entity enjoys the right to apply for a design patent registration unless both parties have contrary agreement on ownership of the design patent.

To acquire the rights in the designs created by its consultants or suppliers, the entity should sign an agreement with the consultants or suppliers who enjoy rights in the designs in principle.

The patent assignment agreement will be effective once it is signed by both parties, but the assignment can be effective only after the assignment request is registered before the China Patent Office.

When drafting a design assignment agreement with consultants or suppliers, it should be included that the rights to both the current and modified products should be assigned at the same time. If the designer's name should not be shown on the products, it is advisable to clearly state this in the agreement.

The designer could waive his or her moral rights in the designs. The registered design protection lasts for 10 years from the application date of the design. 

3.3. Enforcement

The scope of protection of a patent is assessed based on patent claims interpreted in light of the patent description and diagrams. If all the technical features of the claims can be established by the alleged infringing technology or product, the alleged infringement will be deemed to fall into the scope of protection of the patent. The alleged infringement and the patented technology do not necessarily have to be in the same technology domain when establishing an infringement. A patent infringement can be further identified as either a literal infringement or an equivalent infringement (Guidelines for Judging the Patent Infringement by the Beijing High People's Court in September 2013):

  • Literal infringement. The alleged infringing product must have been applied with all the technical features from the claims of the patent. Even if the alleged product comprises an additional feature, which is not disclosed in the claims, the alleged infringement must still be considered to be within the scope of protection of the patent. However, if a literal interpretation of the claims shows that the additional technical features have actually been excluded from the patent, the alleged infringement is not deemed to fall into the scope of protection of the claims. 
  • Equivalent infringement. This is often a second option, for when the establishment of a literal infringement has failed. The equivalent features of the alleged infringing product must be able to specifically substitute one or more features of the claims. However, it must fail if the entire technical solution of the claims can be replaced by equivalents. The court will not consider there to be an equivalent infringement if the claims have multiple features equivalent to the alleged infringement and the combination of equivalent features enables the alleged infringer to develop a technical solution that departs from the original concept of the claims OR the alleged infringement achieves an unexpected technical result. 

Extra attention is required where the claim contains a feature in terms of its function. If the alleged infringing product operates an identical function by using structures or methods defined in any embodiment (not in the claim) from the patent, there will be an established infringement. It is also equally important to assess the type of infringement in terms of the infringing activities, for example, direct infringements and indirect infringements, which will then be assessed for particular remedies to be awarded.

Substantial similarity is sufficient to establish infringement and only registered designs are protectable as mentioned above.

A design can be enforced against a trade mark, a registered design patent to oppose a trade mark application, invalidate a trade mark registration, and to invalidate a registered design patent.

The common defences available to an alleged infringer are non-infringement, that the design patent should be invalidated, prior use, and prior art.

There are no grounds on which an otherwise valid registered design can be deemed unenforceable.

Infringement proceedings must be brought within two years of the date on which a patentee knew or should have known of the infringement. After the limitation period has expired, the claimant can still initiate litigation. However, the claim will not be enforced by the court. The only exception is where the infringement is still continuing at the time the case is filed. In these circumstances, the court will order the defendant to cease infringing the patent during the period of its validity, and the amount of damage suffered as a result of the infringement will be calculated over a period of two years, counting backwards from the date that the claim was filed.

For the same set of facts, a design holder is not allowed to take action claiming design infringement and copyright infringement and/or unfair competition. The design holder is entitled to choose design infringement or copyright infringement or unfair competition claim. 

4. RIGHT OF PUBLICITY

The right of publicity, which is the right of an individual to control the commercial use of his or her name, image likeness, or other unequivocal aspects of one's identity, is not recognized by Chinese law.

In practice, "the right of publicity" is recognized and protected as right of personal name, right to portrait, right of reputation, copyright, trade mark right, and so on.

In September 2015, a judgement recognizing the right of publicity of "KUNG FU PANDA" was issued by the Beijing Higher People's Court which makes the final decision to all the trade mark registration, cancellation, and invalidation cases in the People's Republic of China.

In the judgement, the court holds that "when the name of a film or the character and its name in a film is so famous that it is not only connected to the film itself, but also connected to the commercial entity or commercial activity of a specific goods or services, the relevant public of the film projects its awareness and emotion onto the name of film or name of character in film who likes the goods or services connected to the name of film or name of image in film due to the film, the film owner will get commercial values and trading opportunities. Under such circumstances, the name of film or the character and its name in a film could enjoy the prior 'right of publicity' which is protected as 'prior rights' pursuant to Article 31 of 2001 Trade Mark Law of the People's Republic of China". 

5. PRODUCT PLACEMENT

In the People''s Republic of China, there are no laws and regulations prohibiting product placement. In practice, it is common to have product placement in TV drama or movies. Product placement is considered as a kind of advertisement which should be applied to Advertisement Law of the People''s Republic of China.

  Pursuant to the Notification Concerning Strict Control of Smoking Scene in Film and TV Drama issued by the State Administration of Press, Publication, Radio, Film, and Television of the People''s Republic of China in 2011, in film and TV drama, tobacco brand name, its relevant information, and tobacco advertisements is prohibited. Scenes showing smoking at the non-smoking area, plots showing young people purchasing tobacco, other plots connecting young people to tobacco, and scenes showing young people smoking are all prohibited.

  The brand owner could include stop of the communication and damages compensation as remedies in the agreement to be signed. As long as such remedies are included in the agreement, the brand owner could have the communication stopped if the other party fails to perform the agreement. 

6. . PROTECTION OF CORPORATE IMAGE AND REPUTATION

In the People''s Republic of China, the laws regarding right of publicity and/or privacy could not extend to legal entities/corporations.

  In general, for the purposes of protecting the corporate image and reputation, it is allowable to include specific clauses in an agreement aimed at protecting the corporate image or reputation of one of the parties, for example, prohibition to sell the products to re-sellers whose image is below a certain defined standard, prohibition to sell below a certain price or to do so outside of specific time periods, prohibition to buy non original but otherwise legitimate spare parts and components.

  There are no liquidated damages or stipulated fines clauses for breach by a party of any provisions protecting the reputation or corporate image of the other party permissible in the People''s Republic of China.

  However, the parties signing such agreement should avoid violating Article 13 and 14 of the Anti-monopoly Law of the People's Republic of China, namely:

  • competing undertakings are prohibited from concluding the following monopoly agreements which are designed to eliminate or restrict competition: on fixing or changing commodity prices; on splitting the sales market or the purchasing market for raw and semi-finished materials; on restricting the purchase of new technologies or equipment, or the development of new technologies or products; 
  • undertakings are prohibited from concluding the following monopoly agreements which are designed to eliminate or restrict competition with their trading counterparts: on fixing the prices of commodities resold to a third party; on restricting the lowest prices for commodities resold to a third party. 

4.1. Sources of law

4.2. Substantive law

4.3. Enforcement