Chapter 9: Trademark Infringement and Protection

9.1 Types of Trademark Infringement

Under Article 57 of the Trademark Law, trademark infringement includes: (1) Use of an identical mark on identical goods without authorization; (2) Use of a similar mark on identical or similar goods where confusion is likely; (3) Sale of goods bearing infringing marks; (4) Counterfeiting or unauthorized manufacturing of registered trademark labels; (5) Facilitating infringement by providing storage, transport, or other assistance.

9.2 Administrative Enforcement

Administrative enforcement is handled by local market regulation administrations (formerly Administration for Industry and Commerce). Rights holders may file complaints requesting investigation and penalties. Administrative authorities may: order cessation of infringement, confiscate and destroy infringing goods and tools, and impose fines (up to 5 times the illegal revenue or CNY 250,000 if revenue cannot be determined).

9.3 Civil Litigation

Trademark owners may file civil infringement lawsuits in People's Courts. Remedies include: injunctions (preliminary and permanent), damages (actual losses, infringer's profits, or statutory damages up to CNY 5 million; up to CNY 5 million for willful infringement with aggravating circumstances), and reasonable attorney fees. Since 2019, punitive damages of up to 5 times the base amount are available for willful and serious infringement.

9.4 Criminal Enforcement

Serious trademark counterfeiting may constitute criminal offenses under the Criminal Law. Criminal liability applies to: (1) Counterfeiting registered trademarks with illegal revenue exceeding CNY 50,000 or sales amount exceeding CNY 150,000; (2) Selling counterfeit goods with sales amount exceeding CNY 50,000. Penalties include imprisonment (up to 7 years), fines, and confiscation of property.

9.5 Customs Border Protection

Trademark owners may record their registrations with the General Administration of Customs China (GACC) to enable customs authorities to detain suspected infringing goods at the border. Recordal is valid for 10 years (renewable) and requires a security deposit. Customs may detain goods ex officio or upon application by the rights holder.

9.6 Online Enforcement

E-commerce platforms in China (Alibaba, JD.com, Pinduoduo, Douyin) have notice-and-takedown procedures for removing infringing listings. Rights holders can submit infringement complaints with proof of trademark ownership and evidence of infringement. Platforms typically process complaints within 3-7 working days.

The effectiveness of trademark enforcement in China has been shaped by decades of judicial and administrative practice, culminating in landmark cases that have defined the boundaries of trademark protection. Chapter 10 reviews these landmark cases and the evolving legal framework that governs trademark rights in China.

Chapter 10: Landmark Cases and Legal Framework

10.1 Well-Known Trademark Protection

10.1.1 Nike 'Swoosh' Case (2000)

This landmark case established the principle that well-known foreign trademarks enjoy protection in China even without prior registration. The Supreme People's Court recognized Nike's swoosh logo as a well-known trademark and prevented a Chinese company from registering a confusingly similar mark, laying the foundation for cross-class protection of well-known marks.

10.1.2 Starbucks v. Shanghai Xingbake (2006)

The Shanghai High People's Court ruled in favor of Starbucks, finding that 'Xingbake' (a phonetic imitation of Starbucks in Chinese) constituted trademark infringement and unfair competition. The court awarded damages of CNY 500,000 and issued an injunction, demonstrating strengthened judicial protection for famous foreign brands.

10.2 Bad Faith Registration

10.2.1 Michael Jordan v. Qiaodan Sports (2016)

In this landmark case, the Supreme People's Court ruled that the Chinese character 'Qiaodan' (the Chinese transliteration of 'Jordan') and the associated basketball player silhouette registered by Qiaodan Sports violated Michael Jordan's name rights and constituted bad faith registration. The court ordered cancellation of the disputed marks, establishing an important precedent for protecting personal names against bad faith trademark squatting.

10.2.2 New Balance v. New Barlun (2020)

The Jiangsu High People's Court awarded New Balance record damages of CNY 30 million in a trademark infringement case against New Barlun, a Chinese copycat brand. The court found that New Barlun deliberately adopted a confusingly similar name and 'N' logo to capitalize on New Balance's reputation, constituting willful infringement warranting punitive damages.

10.3 Legal Framework Evolution

China's trademark legal framework has undergone significant evolution: The 2019 Trademark Law amendment introduced: (1) Enhanced bad faith registration provisions (Article 4); (2) Increased statutory damages (from CNY 3 million to CNY 5 million); (3) Introduction of punitive damages (up to 5 times); (4) Strengthened penalties for trademark agents facilitating bad faith registrations. The 2023 Draft Amendment proposes further strengthening of use requirements and opposition procedures.

10.4 International Treaties

China is a member of the Paris Convention, the Madrid Protocol, and the Singapore Treaty on the Law of Trademarks. These treaties provide important protections for foreign applicants, including priority claims, international registration through WIPO, and minimum standards of trademark protection.

Understanding the legal framework and landmark cases provides context for the practical costs of trademark protection in China. The next chapter presents a comprehensive fee schedule covering all major trademark procedures, enabling applicants to budget effectively for their China trademark strategy.