Why "they copied my mark" is the wrong starting point

Brand owners often assume that a competitor using a confusingly similar sign must be infringing. Enforcement authorities work through a sequence of tests instead, and a complaint can fail at the first of them. Those tests appear in the Standards for Determining Trademark Infringement, published on 15 June 2020, and in the office's official interpretation of the Standards, issued on 28 July 2022. The Standards run to 38 provisions, illustrated with 40 decided cases.

The threshold: is it use of a mark at all

A finding normally begins with whether the conduct is use of a mark in the trademark sense: use that identifies where goods or services come from. The listed forms are wide — goods, packaging and labels; invoices and customs papers; service premises, staff uniforms and menus; and advertising, exhibitions and other commercial activity, expressly including websites, social networks, applications, QR codes and shopfronts. Whether an act qualifies is weighed on the user's intention, the manner of use, the way the sign is promoted, industry practice and consumer perception.

In the rice case, a registrant held a mark for rice and a neighbour used similar wording on its packaging with a claim about how the rice was grown. The office's reply to the local authority, and later the Foshan Intermediate People's Court, treated that wording as describing the growing method and taste — descriptive text, not a source identifier. Descriptive use is a defence Chinese authorities will accept.

In the electronics repair case, an unauthorised repairer used a phone maker's word and device marks on its shopfront, staff clothing, payment QR codes and card-terminal slips. The office treated that as use of the service mark for repair services rather than of goods marks; the trader also listed itself on a map application as the only official authorised service centre. The fine was RMB 9.0795 million, against illegal turnover of RMB 1.8159 million. Where a rival's mark is bought as a keyword and also shown in the headline of the search result, that is treated as use of a mark.

Comparing the right things

The comparison runs between the goods or services covered by the registration and the goods or services complained of, not between the parties' actual products. In an instant-noodle and instant-vermicelli dispute, the two registrations sat in different similar groups, but the alleged infringer sold instant vermicelli — goods outside its own registration — so the comparison ran between those actual goods and the proprietor's registration. Comparison is always against the mark as registered, not as the proprietor happens to use it.

Identical goods covers the same name, and different names sharing function, use, main raw material, production sector, consumer group and sales channels so that the public treats them as the same thing; similar goods requires commonality across those factors. The office's Classification, following the Nice system, is the reference point. A medicated tonic sold through supermarkets and liquor shops was treated as an alcoholic drink rather than a pharmaceutical preparation. And a supermarket using a registered mark on its shopfront fell outside trademark law, because it merely bought and resold goods; that case went to the anti-unfair competition law.

Identical marks are not only exact copies. Changing the font, the case of letters, the arrangement or the spacing of a registered word mark; changing its colour without affecting distinctive features; or adding only non-distinctive matter such as a generic name or model — each is treated as identical where the result is visually indistinguishable to the public. "GXG FASHION" was held identical to a registration for GXG, because FASHION carries no distinctiveness on clothing. Similarity is judged with the ordinary attention and cognition of the public, using imperfect recollection, overall comparison and comparison of the dominant element. "SANTAKUPS", with SANTAK picked out in a contrasting colour, was held similar to SANTAK.

Confusion, and the traps in your own portfolio

Where the mark is not identical, or the goods are not identical, a further step is added: whether confusion is likely. The public may believe the goods come from the registered proprietor, or may believe the user has an investment, licence, franchise or cooperation relationship with the proprietor. Actual confusion is not required; the possibility is enough. Six factors are weighed together, including the similarity of the marks and of the goods, the distinctiveness and reputation of the registered mark, the level of attention of the public, and any intent to free-ride. Two automotive "H" device marks did not confuse, because car buyers pay closer attention.

The relationship limb catches conduct brand owners often overlook. A distributor sold genuine goods bearing the manufacturer's own mark but used the protected mark on brochures, its website, entrance signage, VIP cards and staff business cards. It infringed, not because buyers thought the goods were the proprietor's, but because they would think the two businesses were connected. In a beverage case, a company reused bottles under trade practice but left the embossed mark on the neck uncovered; it was larger than its own paper label.

The Standards also reach parties who own registrations of their own. Altering a registered mark, or combining several of your own registrations, can infringe where the result matches someone else's registration — a distillery that emphasised one element of its own mark was held to infringe. Attaching colour to a mark registered without a colour claim can infringe where the purpose is to free-ride. And prominently displaying the trade-name element of your own company name can infringe an earlier registration.

Who else can be liable, and what evidence wins

Liability extends beyond the manufacturer and the retailer. A contractor on a turnkey basis that buys and installs infringing materials is treated as selling them, because the contract price includes the materials and ownership passes with the finished works; a waterproofing contractor using counterfeit membrane was fined RMB 200,000. Giving infringing goods away with a purchase is likewise a sale: a company that offered bicycles bearing a counterfeit mark to buyers of scratch cards was fined RMB 100,000.

Landlords and platforms are exposed too. Market operators, exhibition organisers, counter lessors and e-commerce platforms infringe where they knew or should have known of infringing activity and did not stop it, or where they were notified by an authority or by a proprietor holding an effective decision and still failed to take necessary measures. A shopping plaza was fined RMB 40,000 after being told twice to act. In another case, deleting the listing after each of seven complaints about one seller was held not to be a necessary measure.

The exemption for an unknowing seller is narrow. It falls away where the purchase channel and price are inconsistent with normal practice, where records are refused or falsified, where evidence is destroyed after the case is discovered, where the same party has already been found to infringe, or where other circumstances show knowledge.

One point deserves attention from rights holders. An authority may ask the proprietor for a written opinion on whether goods are genuine, but that opinion is a party statement, not expert evidence, and must be corroborated by the source channel, price, books and communications. In a well-known spirits dispute, an opinion saying only that the packaging was counterfeit was too thin, and the court quashed the penalty.

Frequently asked questions

Does using a competitor's mark in a product description infringe?

Sometimes. The analysis starts from whether the use identifies the source of goods rather than describing them. In the rice case, wording describing how a product was grown and how it tasted was treated as descriptive, and no infringement was found. In a cosmetics dispute, a mark used inside a longer product name, in the same font and size as the surrounding text, created no confusion.

Can a distributor infringe without putting the mark on the goods?

Yes. Confusion includes cases where the public believes there is an investment, licence, franchise or cooperation relationship, even if buyers do not think the goods come from the proprietor. A distributor that sold genuine goods but used the protected mark on brochures, its website, signage, VIP cards and business cards was found to infringe.

How much evidence should a brand owner supply?

More than a conclusion. Authorities may ask for a written opinion on genuineness, but it is treated as a party statement and must be corroborated by the source channel, price, accounting records and communications. In the spirits case, an opinion stating only that the packaging was counterfeit was too thin, and the court set the penalty aside.

Can a company use its own registered company name?

A company name may be used, but its prominent use as a source identifier can infringe an earlier registration. In the dumpling-house dispute, the court held that rights in a personal name do not justify commercial use that free-rides on an earlier mark. Registering a company name is not itself wrong; displaying the trade-name element prominently is what triggers liability.

Official sources

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