How to initiate a trademark infringement civil proceedings in China

After years of acting upon advices from their long-term trusted IP agency in Beijing, the European client found their company kept paying non-stop bills only for witnessing how the infringer continued exploiting their brand taking up the market. They were searching for an alternative, a better solution.

“We barely could make sense of the complicated legal proceedings in China. When we were advised to take necessary action like file invalidation against the targeted trademark, we entrusted the local Beijing IP agency to do it. We paid a lot of bills sent to us, but the situation didn’t seem to improve. To make it worse, once one invalidation granted, the infringer just registered more trademarks that still similar to our brand to circumvention the legal liabilities… “

By mentioning “invalidation action”, the client was referring relevant ruling made by China National Intellectual Property Administration (“CNIPA”).

We immediately pointed out the following:

  1. When you sought protection via IP-related administrative channel and obtained a ruling from CNIPA, such ruling in nature is an administrative kind of ruling but not a judicial one;
  2. Even if you fail to lodge an appeal against such ruling via administrative channel and/or directly resort to Beijing Intellectual Property court within the statute of limitation listed thereof, it shall has NO directly effect in a civil litigation you could bring up with People’s court;
  3. Such administrative ruling could be used as supportive evidence for a civil “trademark infringement & unfair competition” case that could be filed with the local court of jurisdiction.

Some of IP agencies may call their office as “IP law office” and/or directly “law firm”, but in nature they are not a law firm, for their attorneys are not, and wouldn’t be allowed to practice law as licensed lawyers, not to mention of having the experiences in arguing litigating cases in courtrooms. They have a very unique consulting business mode – and usually running systematically, they are good at handling IP registration and relevant administrative proceedings.

In hearing the client’s story, we also realised that there is an even much bigger reason that hindered their access to adopting a more pragmatic way to solve the issue. It is the complexity of a civil litigation of “trademark infringement and unfair competition“.

How do we achieve your goal?

We incorporated the client’s desired objectives into a civil litigating proposal:

“Shutting down their factory”, and “stopping their sales and distribution.”

As soon as we register the case, we will file for a temporary injunction with the hearing court. Should the defendants disobey such injection, severe judicial punishment shall fall upon them.

We could file a compliant with the local Market Supervision Administration, i.e. the relevant administrative authority that protects the legitimate rights and interests of businesses and consumers by carrying out regulations in the fields of enterprise registration, market competition, consumer protection, trademark protection etc. It is responsible for creating a regulated market environment of fairness and transparency.

“Claim of compensation”

A favourable judicial ruling shall entitle the client economical losses – the amount subject to how evidences is produced, statutory and rest at the judge’s discretionary power.

Litigating costs, e.g. lawyer fee, court fee and notary fee that occurred to the client can be listed as separated claims that are to be ruled by the court and sustained by the defendant when the plaintiff triumphed.

The client also asked if such infringement constitute a crime. Based on find-outs in the litigating, we may report to the local police for investing if the infringement may violated the criminal law and hold the infringer responsible for the crime.

What do you need to prepare?

In this case, the infringer created and own a website to promote products that violate the client’s trademark. To the purpose of successfully initiate the litigation, we advise the following necessary two steps need to be taken:

  • Notarise the infringer’s website and owner information, which shall be used as basic evidence to prove the defendant is proper; and
  • Purchase sample product from the website and having the purchase process notarised, which shall be used as further evidence to prove the infringing liabilities.

You may want to consider establishing a formal client-attorney relationship before making any preparation.

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